Federal Circuit: Software is not Patent Eligible unless Claimed as a Process or Physical Object

In an interesting – though non-precedential – opinion, the Federal Circuit has ruled that a “speech-recognition interface” software lacks subject matter eligibility “because [the claims] are not directed to one of the four statutory categories of inventions identified in 35 U.S.C. § 101. The court writes: “[s]oftware may be patent eligible, but when a claim is not directed towards a process, the subject matter must exist in tangible form. Here, the disputed claims merely claim software instructions without any hardware limitations.”

AllVoice Developments v. Microsoft (Fed. Cir. 2015)

Recent action in patent eligibility doctrine has primarily focused on the judicial prohibitions against patenting abstract ideas, laws of nature, and natural phenomena.  However the statute does have some meat of its own.  In particular, Section 101 particularly creates eligibility for four categories of inventions: processes, machines, manufactures, and compositions of matter.  Inventions that cannot fit within the four statutory categories are not patent eligible.

Machine, Manufacture, Composition of Matter: These terms go back to the 1793 patent act and have been interpreted in dozens of cases.  Here, the court summarizes:

Except for process claims, “the eligible subject matter must exist in some physical or tangible form.” Digitech, 758 F.3d 1344 (Fed. Cir. 2014). To be considered a machine under section 101, “the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’” Id. (quoting Burr v. Duryee, 68 U.S. 531 (1863)). Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.” Id.

The question in this case is whether Claim 60 of AllVoice’s U.S. Patent No. 5,799,273 fits within any of the four categories.  The claim reads as follows:

60. A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:

input means for receiving speech-recognition data including recognised words;

output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and

audio playback means for playing audio data associated with the recognised words.

In considering the claim, the court found that no tangible or physical object claimed.  Rather, the patentee admitted that the claim elements are all software elements that do not expressly require hardware elements.  Without any actual “machine” or “composition of matter”, the claim failed for lack of subject matter eligibility.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

243 thoughts on “Federal Circuit: Software is not Patent Eligible unless Claimed as a Process or Physical Object

  1. Not technically but Intellectually correct, may I share with you that:

    As the inventor of USCIIIIII CODE for EchoLogical Machines which is the capability they are dreaming about, of merging The Human Mind with The Electronic Brain in the art of Universal Automatic Comprehension in any natural language — my point that as no one can claim to own A Natural Language, a standard like USCIIIIII CODE is more advanced then ASCII CODE but also as it is the way we write, it should not be a patent I own as its developer, but as its developer, even William Shakespeare would not want to own English but rather know he has made it a better language acceptable to all. A cultural innovation should not be under corporate ownership, and this is why my invention has not been successful as it calls for higher moral thinking no one is supporting so I keep holding on to the technologic solution all high technology companies are searching for.
    China’s STOP to Apple’s “siri” is just the beginning of the shift in realizing my thinking has been the proper way to look at patents and limitations of the patent system as to new arts, as it is in the pre-patent pre-partnering proposal I also own and employ successfully for my other inventions.

    The way a language works, is not made of materials yet a machine can operate by it only if the method/system is complying to the natural miraculous created mind which is not like the brain, so the Federal Circuit is on the proper way of thinking that just software can be made in many ways yet only one way can be applicable if it does as claimed, deliver quality intelligence as in our cases of Highest Quality Concise Intercultural Translations — that no software application developed actually delivers as of yet, after more then half a century of impressive evolution in computing the industry has delivered.

  2. Why is AllVoice Computing PLC v. Nuance Communications, Inc., No. 06-1440 (Fed. Cir. Oct. 12, 2007) not mentioned in this decision? In that earlier case, the Federal Circuit reversed district court rulings that Claims 60 – 68 were indefinite and that the “computer usable medium” claims were invalid for failure to disclose the best mode of practicing them.

    It would be interesting to know just how the infringement cases were laid out in both AllVoice lawsuits. It would be interesting to know just how the district court held most of the asserted apparatus and method claims to be indefinite and why AllVoice did not appeal that decision.

    In AllVoice Computing PLC v. Nuance Communications, Inc. decision, I see that the panel found corresponding “structure” in the specification to support all three “means” expressions of Claim 60. But, in pursuing Microsoft, AllVoice conceded that these “means” limitations were limited to software instructions without any hardware limitations. Why was AllVoice forced to make this concession?

    Would someone address these two cases?

    1. Joe, how does one infringe a claim to software? In post 22 below, the Federal Circuit has already ruled that a claim to software is not infringed by selling or offering to sell the software.

      Consider the know how to build an infringing machine. Does the sale of the know-how infringe a patent on the machine? Obviously, the use of the know-how might arguably induce infringement; but inducement requires proof that the inducer knew the use of the know how to make the patented machine, to perform the patented process, etc., would be patent infringement. But that assumes a patent on a machine or an otherwise eligible process.

      Courts are chipping away a B-claims without actually confronting them.

      1. According to the blurb at 22, what was claimed in that case was a process (not software). A claim to software is best made as a claim to a computer readable medium carrying instructions.. THAT would be infringed by manufacture or sale…

        1. Ned is just being his usual obtuse self attempting to conflate what software is (a machine component and manufacture in itself) with the execution of software (which falls into the category of process).

          This is something that is extremely easy to keep straight and appears to be being purposefully confused just to cloud the discussion.

      2. Thanks for the replys, but they do not address my questions about the arguments made and the findings made in the two cases. Does anyone have any insight on how and why they were pursued b the plaintiff?

  3. The sale or offer of sale of software that when executed performs a patented processes is not direct infringement under 271(a). Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F. 3d 1325, 1334-5 (Fed. Cir. 2008)

    1. Ricoh was an inducement to infringe case. The Federal Circuit remanded the case back to the District Court to determine whether there was substantial non-infringing uses. So, the issue was NOT that selling software that performed a software patent DOES NOT infringe, but if there was substantial non-infringing uses, THEN there is no inducement to infringe.

      1. From Ricoh at 1334-5:

        “We first turn to Ricoh’s claims that Quanta directly infringed the ‘552 and ‘755 patents through the sale or offer for sale of software that causes the accused drives to perform the claimed methods.

        “As did the court in NTP, we conclude that we need not definitively answer this question to conclude as a matter of law that Quanta did not sell or offer to sell the invention covered by Ricoh’s method claims.

        In this case, Ricoh has mistakenly confused software with a process as that term has been interpreted by this court. As the court in NTP recognized, “a process is nothing more than the sequence of actions of which it is comprised.” 418 F.3d at 1318. This court has also stated that a process “consists of doing something, and therefore has to be carried out or performed.” In re Kollar, 286 F.3d 1326, 1332 (Fed.Cir.2002). In contrast, software is not itself a sequence of actions, but rather it is a set of instructions that directs hardware to perform a sequence of actions.

        “The cases noted here make clear that the actual carrying out of the instructions is that which constitutes a process within the meaning of § 271(a). With this understanding of “process” in mind, we agree with the reasoning of NTP that the application of the concept of a sale or offer of sale to the actual carrying out of a sequence of actions is ambiguous.

        “However, because the allegedly infringing sale in this case was the sale of software (i.e., instructions to perform a process rather than the performance of the process itself), we need not determine whether a process may ever be sold so as to give rise to liability under § 271(a). Accordingly, we hold that a party that sells or offers to sell software containing instructions to perform a patented method does not infringe the patent under § 271(a).”

  4. Algorithm = fails 101?

    “Next up, your heartbeat: “There’s a new kind of device called the embedded defibrillator: it’s a pacemaker implanted in the chest that monitors heartbeat irregularities and releases energy pulses to correct anomalies. The problem is that sometimes the software fails to detect the heartbeat, and we’re hoping to fix that.”

    The technology, in the form of an algorithm, will soon be embedded into these pacemakers.”

    link to cnn.com

  5. US claims employ a pseudo-grammar that has its own rules. If you don’t know those rules, you’re going to get yourself and your clients in trouble. That’s the lesson from this case, not whether or not SW is patentable.

    All of the claims begin with an uppercase letter, and yet they all are read to include the introductory “I claim . . .” etc. The direct object of the “I claim” clause is the preamble of each independent claim as modified by the rest of the independent claim and its dependents. Everything else in a claim set acts as a limitation on the preamble of the independent claim – including structural elements (if there are any) and steps (if there are any).

    No matter how complex the preamble, somewhere in there there is a noun, which is the subject of the preamble clause, if it is a clause. Otherwise the noun is the direct object of “I claim.” That noun is the key to the 101 analysis. That’s what this case is really about.

    It stands to reason that all one has to do to avoid a 101 punch-up is to be sure that the subject of the preamble of each independent claim clearly and unambiguously falls within the four statutory categories OR improvements thereon. Pick that noun out, look at it, and be sure it is something that would clearly be considered a process, composition, machine, or manufacture (whateverthehell those last two terms mean).

    AV botched it when they claimed in Claim 60 an “interface” instead of an “interface device.” In the broad view of the courts, there is no doubt that “interface device” would avoid any 101 challenge, whether as a machine or manufacture I’m not sure. But when Claim 60 was written as “I claim an interface . . . “ it makes no difference what else the claim says, it’s 101 road kill. And it should be. Maybe Phillips could save “interface” from a 112 rejection, but forcing the public to dig through the spec to determine what statutory class the noun “interface” was meant to convey is nuts.

    Claiming an “interface” was a daft mistake made by someone who probably should have been better supervised by someone who knew what they were doing. Allowing the claim was equally daft, again, probably by someone who should have been better supervised by someone who knew what they were doing.

    It’s a simple rule: The subject matter of what you claim is what the preamble of your independent claim says you claim, therefore make sure the preamble says you claim something that is clearly and unambiguously within the statutory classes. Avoiding 101 conflicts is so simple it amazes me that these issues ever reach the courts.

    Sometimes I wonder whether there isn’t a class of patent lawyers who set up their claims to fail on examination and/or to attract litigation – it’s gotta’ be good for the bottom line.

    1. >Claiming an “interface” was a daft mistake made by someone who probably should have been better supervised by someone who knew what they were doing. Allowing the claim was equally daft, again, probably by someone who should have been better supervised by someone who knew what they were doing.

      Except in reality the claims are supposed to be interpreted as one skilled in the art in light of the spec would interpret them. There is no problem with the claim but with the fed. cir. and the SCOTUS.

      But, I agree with you that the lesson is you better be explicit and put everything in there because some science illiterate judge that Obama hired off the street is likely to drink the cool aid of Lemley and invalidate the claim because it could be performed by an angel on a pinhead.

      1. Sadly, while the advice on the surface is fine and the attempt of the advice giver is clearly one of being helpful, the state of 101 “jurisprudence” (i.e. how mashed is the nose of wax) belies the fact that the advice will not in fact be helpful.

        One only has to look at Alice and the fact that both parties had stipulated that the statutory category aspect had been met and that issue not before the Court to see that even if a simple and explicit grammar is chosen, the Court will still make the accusation of “scrivener tricks,” will still “Gist” to whatever they want to and will still deign to write the law they want (implicitly, explicitly, or otherwise).

        1. ” both parties had stipulated that the statutory category aspect had been met”

          Surely you’re pulling my leg. (I know, quit calling you “Shirley.”)

          The parties’ stipulation is irrelevant as to whether claimed subject matter conforms to a statutory class. The patent statutes serve a public protection role, and that’s why “activist” judges play the sua sponte card from time to time — to uphold the law, which is why they get paid. Just because it may be in both party’s interest to ignore a statute during litigation, doesn’t give them license to do so.

          1. The parties stipulation is very much relevant to the issue before the Court (remember that the Court still needs a case or controversy and we have this little thing against advisory opinions to contend with)

  6. “In considering the claim, the court found that no tangible or physical object claimed.”

    A miraculous result that a non-tangible, non-physical thing, (read mystical or supernatural?) can “operate”, can “couple”, can “receive” data, can “output” data, can “play audio”:

    60. A MIRACULOUS SOMETHING that enables operative coupling of SOMETHING, the MIRACULOUS SOMETHING comprising:

    another MYSTICAL THING for receiving DATA;

    a further MYSTICAL THING for outputting DATA to allow processing of DATA; and

    another further MYSTICAL THING for playing audio data associated with some of the DATA.

    1. Well said. You have to remember that now we have a federal circuit that didn’t take science classes. They as a group have no foundation in which to understand any of this. Thanks Obama.

      1. In fact, the laws of nature require that you remain outside the black hole as seen from Anne’s perspective. That’s because quantum physics demands that information can never be lost. Every bit of information that accounts for your existence has to stay on the outside of the horizon, lest Anne’s laws of physics be broken.

        link to bbc.com

        I guess all these scientist with Nobel Prizes and stuff need to learn from J. Stevens that there is a spirit world where information is magically transformed.

    2. Thanks for the wonderful parody of your tribe, Anon2.

      We know it wasn’t intentional but still — darn funny!

      1. Although I do not subscribe to your collectivist conception of “tribe”, nor to your apparently odd definition of “parody” and “funny”, I will accept that my post does reveal that I “subscribe” to the view that:

        Only tangible physical things in reality can “operate”, “couple” things, “receive” data, “output” data, or “play audio”.

        If you are of a mentality which claims that intangible non-physical things also can actually perform these operations in reality, I will concede that I cannot be but overwhelmingly astounded by your fantastical imagination, flexibility, and casual indifference with which you can regard reality, all of which far exceed my own capacities thereof.

        1. My dear namesake, we both know that Malcolm is a legend in his own mind, and that such phantasies as he deigns must be “real.”

          (insert “serious” [shrug] here)

      2. Sadly MM you are the parody. A parody of a paid blogger jeerer reality and doing everything possible to use the judicial system to do what the legislative system is supposed to do. Very sad. Each of your posts is an affront to civilization.

    3. The court recognized that software is a collection of data and instructions.

      Data and instructions are intangible. Consider, how much does data weigh? What color is an instruction?

      In the cited claims, the patentee didn’t attempt the Beauregard end-run or the “new machine” deception, leaving the court with nothing tangible on which to pin the alleged “innovation”.

      1. How do make a computer respond to non-physical intangible software?

        Assuming a computer is within the physical realm it operates upon physical principles according to its physical make-up, configuration, and mechanistic (rather than “spiritual” or “mystical”) functioning. How does any nonphysical intangible have any causative effect on a physical machine and physical reality?

        How do you suppose your non-physical “software” makes a physical machine operate?

        1. Anon2, “Assuming a computer is within the physical realm…” Your question assumes that the claim was to a machine.

          Software itself no more that a set of instructions that can be embodied in many different forms, including executable. I assume you did know this. Software can be source code written in a book. It can be compilable instructions written on punched cards, tape, disks or the like. Only in a very final form is the software executable. But unless one is specific about the form, any form is covered, right?

          Now if you want to claim a programmed computer, there are ways of doing that. But the programmed computer is not a new machine unless the programming is part of the machine in a physical sense. Such programming is known as “firmware.”

          Software BY definition is not part of computer. Did you know THAT?

          There are a lot of assumptions in you post, many of them simply wrong from a technical point of view.

          1. As a nominalist you may have difficulty conceptualising the following but I invite you to indulge me:

            Suppose you were a detective and you had to apply reason to “uncover” a mysterious thing, an “ish de triddle”.

            Suppose now your only evidence regarding what it was a definition:

            An “ish de triddle” comprises:
            something for receiving data;
            a further thing for outputting data to allow processing of data; and
            another further thing for playing audio data associated with some of the data.

            Now ask yourself, is “ish de triddle” on the basis of this definition a mere idea, mental content, abstraction, non-functional descriptive material… ? Can any of these things actually meet the definition of “ish de triddle”?

            What about an un-programmed computer? No instructions, no OS, no electricity, no connections, no configuration? Can it qualify?

            Lastly what in actuality could meet the definition? What needs to be included in the totality of “ish de triddle” so that it actually works in reality?

            If you believe your “source code written in a book” actually qualifies as “ish de triddle”, i.e. that the definition literally reads on a specific portion of the book, and consequently that the writing in the book actually “comprises” components that somehow magically interacts with the physical world, we cannot speak anymore of this, as we live in completely different universes.

            1. Those eager to misconstrue and eager to not understand (because misconstruing and not understanding fits with their agenda to limit patent rights at the front gate) will continue to do so even (especially) when asked to open their eyes, look at the point put upon the table of discussion, understand that point, and integrate that point into the dialogue moving forward.

              I have been on this path many times with Ned Heller. The moment he sees where the logic must lead to is the moment that obfuscations, treks into the weed, outright derailment of the conversation or even simply stopping the discussion (with the silence screaming out the obvious) occurs.

              Again and again and again and again…

              1. Ha! Nice example of a non-intangible, physical thing!

                If we take the modulation of an AM or FM signal broadly as embodying the “data” (encoding the audio information recorded and eventually to be reproduced) you have a fine example of an “ish de triddle”: including an antenna operatively coupled to demodulator circuitry operatively coupled to an amplifier and speaker.

      2. Software is not the same as the thought of software.

        Your canard about “how much does it weigh” is meaningless dissembling, and has been thoroughly dispatched many times previously.

        Try to keep up.

        1. Anon,

          And a math book is not the same as the thought of math. So what? Math is still intangible, and software (per se) is intangible.

          Your canard that software isn’t software until it’s in executable form is meaningless dissembling, and doesn’t reflect the reality of how software is authored.

          1. You are confusing yourself between the thought of software and software.

            Try getting a copyright on your “version” of authoring software strictly in your head. Let me know when you succeed.

  7. One big blanket C R P fest from Malcolm who adds absolutely nothing new from his short script.

    @ta boy chump.

  8. David Stein: Collectively, the members of this forum have scant power to change patent law, so the [conversation about what the law should be] is not very productive.

    Last time I checked, patent law begins to change when some person somewhere articulates one or more persuasive reasons for effecting the change.

    The sharp lines that are being drawn around software are an exercise in futility, given the fluidity of software and hardware

    Let me know when I will be able to send a hard drive or a chip or a circuit board over a telephone wire and we can talk about the “futility” of “sharp lines.”

    1. when some person somewhere articulates one or more persuasive reasons for effecting the change.

      Talk about legends in your own mind… your screed simply does not reach anywhere near the level of persuasion.

      1. Talk about legends in your own mind…

        I wasn’t referring to myself. And patent law, of course, is not unique in being subject to change in this manner.

      1. Sounds just like the anti-software patent folks Mr. Snyder. We both know that the inte11ectual dishonesty comes after their laughter when they realize that fighting the points I put on the table of discussion will result in their losing.

  9. “Now we have In re Bernhart that says software physically modifies a computer. But that case cited no expert opinion to support that notion, and it is contrary to scientific fact.”

    Premise: (a) Memory is a physical article.

    Premise: (b) Memory undergoes a state of physical change when software is installed causing this physical article to have a different magnetic polarity or electrical charge (e.g., physical changes due to data storage). Further physical changes occur as data is stored, modified, and deleted.

    How is it again a modification to the computer isn’t occurring when software is installed? What scientific proof do you have to dispute either (a) or (b)? I believe the conclusion of these two premises is irrefutable.

    1. If one were to take this very literal interpretation of the phrase “physically modifies”, then the computer is physically changed by installing software much in the same way that a digital clock is changed when you set the time.

      1. Of course, my good Count, one would recognize the functionally related aspect…

        (quite reminds me of a certain simple set theory lesson I schooled Ned Heller with… 😉 )

    2. “physical change when software is installed causing this physical article to have a different magnetic polarity or electrical charge”

      Sounds like a magnetic or electrical change, not physical. Just sayin.

      1. To be sure, a computerized device, if installed with software, will behave differently than the exact same device without the software installed. This must be due to the presence of a physical change in the device, however you define it. I don’t believe that anyone here would want to attribute a soul or mind to the computing device that is immaterial…

        1. “To be sure, a computerized device, if installed with software, will behave differently than the exact same device without the software installed. ”

          K, so? If I wind up a wind up toy it will behave differently than the exact same device without being wound up. Use of a machine for its intended purpose is what it is brosef.

          “This must be due to the presence of a physical change in the device,”

          Nah bro, as you just explained, magnetic or electrical changes will suffice in lieu of a physical change. There are very few memories that change physically in order to store data but there are some.

            1. The windup toy is not analogous. The unwound toy is configured to perform a wind up behavior by its physical arrangement of parts.

              The device without programming is 100% unable to perform the claimed process without the software.

              1. The windup toy is not analogous. The unwound toy is configured to perform a wind up behavior by its physical arrangement of parts.

                Last time I checked, programmable information-processing machines computers are “configured to be programmed to process information.”

                The device without programming is 100% unable to perform the claimed process without the software.

                I’m pretty sure that would depend on the claimed process and what software the programmable device is already running.

                But your argument does illustrate one of the weirdest assumptions of many software-patenting proponents, i.e., they almost always behave as if computing devices and the use of computing devices to carry out information proessing logic — any kind of information processing logic — was conceived of just two moments before their favorite patent application was filed. In the intervening moment, of course, the world was filled with skilled programmers who only need glance at the claim to understand how to program any and every computing device to perfectly execute the recited functionality. And then the PTO and the judiciary just bury their heads in the sand and go along for the ride because — what was the argument? — oh right, software programmers are “second class citizens.” Or something like that.

                1. and what software the programmable device is already running.

                  You almost rise to a cogent argument here (the doctrine of inherency).

                  As it is, and on a typical discussion, you FAIL at the explanation of how “old box” somehow comes to have a new capability that was not already in there.

            2. “Those are both physical phenomena causing changes to a physical device.”

              Um, physical phenomena? Bro, do you even Physics 101? I’m sorry, maybe it’s 202 where you cover Electro-magnetism?

              “The unwound toy is configured to perform a wind up behavior by its physical arrangement of parts.”

              The compooter is configured to perform a computation behavior by its physical arrangement of parts. Direct from the factory.

              “The device without programming is 100% unable to perform the claimed process without the software.”

              The toy without the winding is 100% unable to perform the claimed wound up behavior without the winding.

              1. The compooter is configured to perform a computation behavior by its physical arrangement of parts. Direct from the factory.

                LOL – you still FAIL the Grand Hall experiment.

                Priceless.

          1. You cannot “use the machine for its intended purpose” unless you first change the machine by configuring it with the software.

            This is but the Grand Hall experiment 6 – you have not yet learned from your failure there I see.

            1. “You cannot “use the machine for its intended purpose” unless you first change the machine by configuring it with the software.”

              You cannot use the windup toy for its intended purpose unless you first change the wind up toy by configuring it with winding.

              1. Your analogy is flawed 6.

                I have addressed this previously in several different incarnations. The proper analogy is a toy without a spring at all versus one with a spring.

                You have to remember the equivalency of software with hardware and with firmware.

                Try to keep up, son.

        2. Bluto: I don’t believe that anyone here would want to attribute a … mind to the computing device

          Right. Because minds use reason, logic and information to determine stuff and computers don’t.

          Got it. Deep stuff.

          1. Nice job deliberately misrepresenting what I was saying. Again, if you’d like to explain how your powers of Jeebus can command a physical device to perform a method we’re all ears.

            1. Nice job deliberately misrepresenting what I was saying.

              I’m not misrepresenting what you were saying.

              We’re talking about patents, aren’t we? Specifically, we’re talking about claims to “new” machines and media that have no purpose except to be configured to process information.

              So you say you have some plastic, metal and silicon composition that “determines” some factual aspect about some information. You allege that there is some new physical attribute to your composition responsible for that functionality but you refuse to describe that new physical attribute in your claim in a manner that distinguishes it from the physical attributes of the most similar compositions in the prior art. Instead, you just toss out terms like “determine” in your claim — almost as if your device had a mind.

              This is how the game is played. The best part is when someone points this obvious fact out and then your bff shows up and accuses whoever points it out of engaging in (trying to to laugh) “anthropomorphication”. Cripes, even when the specification doesn’t, the judges all the way up the ladder will go and on about the “brain” of some claimed device. There’s a reason for that. A good one.

              1. but you refuse to describe that new physical attribute in your claim in a manner

                See Malcolm, you are dissembling again, trying to pass off your “idea” that one optional form of writing a claim is somehow the only way to legally write a claim.

                It just is not – per the words of Congress.

                As to the word anthropomorphication – it’s a perfect word for your error. Machines just do not think (as the patent law doctrine of mental steps would have ever been applied). You are trying to bas tardize that legal doctrine and misapply it – and have been called out for such dissembling. If you “think” that is how the game is played, you are sadly mistaken.

      2. Quick question for you 6:

        Three resistors.

        Three resistors in series.

        Changed to:

        Three resistors in parallel.

        Physical change?

        1. In an ordinary wiring setup sure. If they were already in a wiring setup where you could change them around at will, and the setup was specifically set up to allow for that then nah.

    3. As Bluto knows (but will always pretend to forget) the issue is not the microscopic “physical differences” between two differently-programmed programmable computers but the complete lack of any description of those physical differences in the claims.

      That’s the problem.

      What’s being patented by “software”, invariably, is logic or information itself. Logic and information is ineligible subject matter. You can’t use patents to protect logic or information. Occasionally the CAFC manages to put down its compooter bong and gets it right. But they’re still happy to ignore the fundamentals when they see one of their favorite magical words du jour (apparently “interface” isn’t one of them).

      1. “What’s being patented by “software”, invariably, is logic or information itself.”

        That’s absolutely not correct. I am not claiming logic or information when I claim a method executed in a computer through software. If the software causes the device to behave differently and that behavior is new and novel, it should most certainly be patentable. The device behaves differently due to the software. This isn’t due to the power of Jeebus. The only way to control a physical object is the use of physical objects or physical interactions with the physical object.

        1. “If the software causes the device to behave differently and that behavior is new and novel, it should most certainly be patentable.”

          Maybe patentable, just not eligible. Behaviors ain’t statutory brosef.

          1. Certainly not but methods that describe the behavior or devices that perform the behavior are.

            No one is talking about claiming the behavior per se. That’s a straw man you are creating.

            1. No one is talking about claiming the behavior per se.

              Well, you aren’t talking about it because talking about “claiming behavior” (i.e., functionality) would give away the game. And we are all perfectly aware of that. The difference is that only some of us have the guts to admit it.

              Regardless, when the only new elements in the claim are descriptions of the new “behaviors” (i.e., new functionality) of the old apparatus or the new “behaviors” (i.e., new functionality) of the old media, any ten year old can see right through the game.

              Again: some of us have the guts to admit this straight up. The rest enjoy kicking up dust and pretending that we were all born yesterday.

              Software patenting was driving on bald tires before Prometheus and Alice. It goes without saying that the rubber has now left the wheels.

              What’s the fallback position? Have the lovers of software patents grown up enough to figure that one out yet or are you waiting for someone else to do it for you so you can continue with your finger-pointing and whining?

              1. Can you point us all to any case law that tells inventors they can’t claim functionality? Until then the rest of your screed is meaningless.

                1. Can you point us all to any case law that tells inventors they can’t claim functionality?

                  I don’t have to. 35 USC 101 doesn’t list “functionality” as eligible subject matter.

                  It also doesn’t list “paradigms”, just in case you were confused about that (some patent attorneys were — or did you forget that already, Bluto?).

                  How many lovers of software patents were born after 1990, I wonder? There appears to be a younger generation of software patent lovers that is even more confused about the problems with software patents than the patent-addicted dinosaurs who used to come here and argue that the Supreme Court forbade judges from comparing claims to the prior art when evaluating claims for subject matter eligility.

                  Take a deep breath, Bluto, and try to imagine what the system would look like if everyone could claim new functionalities. As bad as it is now, even you would have to admit it could be a lot worse.

                  It took all nine Supreme Court Justices to explain this fundamental fact to some folks — twice — and they still don’t get it! It’d be funny if it weren’t so sad. Well, it’s is still pretty funny sometimes but you really have to be in the right mood.

            2. “Certainly not but methods that describe the behavior or devices that perform the behavior are.”

              Then case closed, if you’re trying to patent the behavior (ineligible) through the draftsman’s art (making the ineligible magically eligible through drafting) then you’re sunk. Period. There goes yo battleship, you just gave up the game.

              This should be straightforward for you. Esp after Prom/Mayo.

  10. Worth repeating on top:

    This exchange reminds me of the usual banal rhetorical t001 of Malcolm’s – moving the goal posts of discussions to claims TOTALLY in the mind.

    The obfuscation here is a simple one: to conflate the difference between software and the thought of software.

    The deeper harm here is in allowing fundamental aspects of what software really is to be gamed by a propaganda crowd intent on removing the single largest forum of innovation today from the protection of law.

    Software is a machine component (that is how it is defined), and it is a manufacture (by the hand of man).

    Software is created for utilitarian purposes (and yes, it can have aspects of expression and creativity for which aspects other IP laws can come into play), but it is – and should be – without a doubt something for which the patent laws apply.

    Lots of noise and smoke and mirrors here in attempts to distract, to conflate, to dissemble and to, in the final analysis, steal protection of that which the patent system is meant to protect: innovation of a utilitarian nature that BROADLY (think wide open gates) fits into one or more (think Chakrabarty) of the statutory categories.

    The attempts to wield the “ato mic bo mb” of per se denial at the front gate is exactly the type of 101 wax nose mashing that Stevens warned of (that he himself attempted to do is not an irony lost)

    There is nothing remotely approaching “marginally reasonable” in denying the basics of what software really is. In denying the equivalence of software with hardware (and with firmware), and in realizing that protection is afforded machine components in and of themselves as manufactures.

    1. It is a lesson on judicial activism anon. I supposed next blog post MM will go back to claiming that module is a nonce word despite the evidence of elance. It is not hard to image being burned at the stake by people like this. Brings one right back to medieval times.

      1. Yes Night Writer, there is a clear lesson to be had regarding judicial activism.

        You will note the extreme reluctance of certain “otherwise willing to engage in history” individuals to look at and understand discussion points concerning the supremacy of statutory law and the proper roles of the branches of the U.S. Government.

        I “get” that there is a certain expediency and even value that can flow from the use of common law evolution, but clearly, any attorney worth their salt (and most definitely any teacher of law) should be aware of the differences (and not engage in or even let continue the perception of supporting) the abrogation of statutory law to common law re-writing. Judicial activism does have a legitimate place in U.S. Jurisprudence – but NOT at the price of separation of powers and NOT at the price of statutory law in such areas as patent law in which our F.ounding F.athers were explicit concerning which branch of the government was to be in control of the law.

        (a reminder for those who have chosen to not yet open their eyes: The Paper Chase at the hour and six minute mark)

    1. I don’t know how people keep making it into the news with this sort of rubbish. It should be apparent by now that it is a “hypothesis” that every computer nerd and their buddies has dreamed up, and that it is wholly unsubstantiated by this thing called evidence.

      1. Could you be more specific about what you problem is? Both you and MM merely gainsay every remark that doesn’t fit into your spirit world of witches. Please try to be specific about what your problem is.

        1. “Could you be more specific about what you problem is? ”

          Lack o evidence. How much more specific can I be?

          I could also say that the hypothesis appears to be nigh untestable at the current time. But if you guys can start doing some actual experiments then I’ll be happy to check them out when you get published in Nature.

        2. spirit world of witches

          The only reason we don’t know more about the awesome “spirit world of witches” obviously, is because spirits and witches aren’t eligible subject matter.

          Contrast that with the tremendous advances flowing from patents on homeopathic treatments.

          LOL

      2. 6, “people” – i.e., physicists – keep making it into the news with this stuff because it’s an increasingly persuasive field of modern physics.

        Seems bizarre now – but so did relativity. Strangeness is not a rational reason to dismiss a theory.

          1. 6, at this level of physics, the theories always lead the evidence by years – even decades, in some cases. The experiments to test them require (1) another work of genius just to determine how such evidence could even be collected, and (2) a monumental allocation of cash and effort.

            Exhibit A: The Higgs boson was first theorized in 1964.

            1. “6, at this level of physics, the theories always lead the evidence by years”

              And what “level” is that? Theories that everything around us is made of something other than matter? I remember how one of those worked out, it’s called string theory, and much ink was spilled at much cost. Then the LHC came along and blew a big ol hole in the “theory” (should just call it a hypothesis) that it will likely never recover from.

              Exhibit B at “this level” of physics: string theory (RIP).

              It’s not that I won’t be excited when (if) I see someone propose how to gather this data to falsify the notion (other than, you know, look at anything around you). And some government willing to foot what you think is going to necessarily be a monumental undertaking. Gl chasing that dream.

              1. I remember how one of those worked out, it’s called string theory, and much ink was spilled at much cost.

                As well it should, because:

                Many theoretical physicists, including Stephen Hawking, Edward Witten and Juan Maldacena, believe that string theory is a step towards the correct fundamental description of nature: it accommodates a consistent combination of quantum field theory and general relativity, agrees with insights in quantum gravity (such as the holographic principle and black hole thermodynamics) and has passed many non-trivial checks of its internal consistency. According to Hawking, “M-theory is the only candidate for a complete theory of the universe.”

                As for “spilling ink”: That’s how theoretical science happens, 6 – by scientists developing and comparing alternative models. Some will be right and some will be wrong, and we don’t know which is which up front, and rejecting anything as “rubbish” on the basis of “look at anything around you” is not how science happens.

                “Look at anything around you” does not account for the fact that 99.999999999999% of visible mass is empty space; that virtually every bit of matter that we’ve ever encountered is a combination of protons, neutrons, and electrons; etc.

                1. That was in 2010. And how loudly and often is Hawking gushing about that theory now? Not as much, because it is nearly certainly wrong. Completely and utterly wrong. Then everyone, including Hawking and the other three and nearly everyone else is back to square 1. Doesn’t look like anyone bothered to update the wiki for you.

                2. It’s amazing that you can be so absolutely certain, when the most brilliant minds in physics who’ve studied this stuff for decades are undecided and equivocal. For example, in a January 2015 interview:

                  Hawking: I’m beginning to have doubts about M-theory, but there seems no viable alternative.

                  But since your hormones appear to be cresting once again, back onto my time-out/don’t-read list you go. Don’t anticipate any replies for a while.

                3. Bro there’s plenty of detractors among “the most brilliant minds”. They just don’t grab headlines and get as many articles. And yes , there is no viable alternative at present, and there may never be. Or at least in our lifetime. One thing you can be sure of though is that the standard stoner theory of everything “far out man the universe is like a cheeto man” is just as likely to be true as the computer nerd’s daydream “its all just data man”.

  11. Notwithstanding the ridiculously obvious claim 60 in the AllVoice case (which was for some reason rejected under 101 instead of 103 – but that is another discussion), a lot of “innovation” occurs in software. If you think very little innovation occurs in software or that claim 60 is not obvious, then we have nothing more to discuss.

    If a lot of innovation occurs in software, then my question is this: does patent law treat software inventors just like inventors in other fields or as second class citizens? If software inventors are treated like second class citizens, then I have a problem.

    In another thread I provided a detailed fact pattern and asked Ned how would a software inventor protect his/her software invention that made a self-driving car’s ride smoother. After a few posts it turned out that the only way Ned thought that the software invention could be protected was through a claim to a car. This led me to ask the following question: “My understanding is that it is much faster, cheaper, and better (i.e., higher probability of success) to assert direct infringement than assert contributory/induced infringement. Am I right?”

    And Ned replied: “Genghis, same,” i.e., in practical terms, direct and indirect infringement are the same. I took his word. But now I think he lied to me because I did a Google search and found this: link to patentlyo.com

    I’m no legal scholar, but it seems to me that direct infringement is clearly the preferable option. So, it seems software inventors are being treated as second class citizens in Ned’s world. I don’t think that’s good policy.

    Instead of wasting all this time arguing about 101, what we should be doing is to bolster 103 so that ridiculously obvious claims like claim 60 are not allowed. How about the following: (1) make software a specific category under 101 so that we show that we understand where a lot of innovation is taking place today, but also (2) use a higher obviousness standard specifically for software inventions so that no applicant in their right mind would ever think of wasting a single dollar trying to get claim 60 allowed.

    1. Personally, Genghis, the problem lies in Aro II, a Supreme Court case that added knowledge of the patent to proof of contributory and inducement infringement. Knowledge of the patent might be relevant to whether the infringement was willful, but it never was a requirement to prove infringement prior to Aro II. That case was 5-4, and the court did not that congress did not intend to change the law of infringement. But the majority felt compelled to do so because of the inartful wording of the statute.

      So, I say, let is fix 271(b) and (c) to restore the law back to what congress intended, back to the law the way it was before ’52.

      1. I see, the difference in treatment is not in the statute itself. I guess I won’t have any problems if fix the law so that it is a level playing field. Thanks again for posting useful information that we can learn from.

        1. Genghis: does patent law treat software inventors just like inventors in other fields or as second class citizens?

          LOL.

          On the contrary, Genghis, patent law — at least the version of it created out of thin air by a couple drunk-on-patents Federal jurists — treats so-called “software inventors” like super priveleged first class citizens and grants them extraordinary benefits completely out of the reach of applicants in other fields.

          That’s why virtually anybody who can write an English sentence and has a rudimentary understanding of (1) information-processing logic and (2) the existence of programmable computers (e.g., your typical twelve year old) can become a “software inventor”. All you need to be able to do is possess that limited knowledge and a modicum of legal skill. Of course, it helps if you have a deep-pocketed target in mind before you put pen to paper, and it also helps immensely if you are an arrogant swine who enjoys getting up in people’s faces and demanding money from them.

    2. If cookbook authors are treated like second class citizens, then I have a problem.

      Because the patent system was all about protecting logic and instructions.

      wasting all this time arguing about 101

      Where was “Genghis”, I wonder, when Prometheus tried to create an infringer out of a doctor who looked at some old test results and thought about the results in light of a non-obvious correlation?

      Probably “Genghis” was thinking really deeply about “the children”. Or the Amish.

      How about the following: (1) make software a specific category under 101

      It already is a “special category”, “Genghis.”

      1. I don’t know when Prometheus was decided, but most likely I was hard at work trying to understanding concepts in math and science. I also don’t know what Prometheus was about, but it looks like I would have agreed with you that it was ridiculous to allow such claims. Again maybe a 103 rejection would have been appropriate.

        How were you using your time when Prometheus was decided? I hope you were doing something useful. If not, there is still time to do something about it.

        You are using a browser on a computer, and connecting to a webserver over the Internet. You may not like the cooks, but you sure do like their cooking.

        If you don’t think a lot of innovation occurs in software, then like I said, we have nothing more to discuss.

        1. Genghis,

          As I mentioned, the person who is insulting you is on the record here as believing that ALL software should be barred from patent protection. period.

          The “watching the children” slam can allude to a number of sick references, and the “Amish” but has to do with Malcolm’s (MM’s) penchant for a rhetorical trick that is his hallmark:

          Accuse Others Of That Which Malcolm Does

          Welcome aboard.

          1. “anon”: the person who is insulting you is on the record here as believing that ALL software should be barred from patent protection. period.

            LOL. And the person who is cuddling up next to you, Genghis, spent years here insulting everyone who, like you, found Promtheus’ abuse of the patent system “ridiculous”. Moroever, Genghis, that same person did that insulting while hiding behind dozens of sockpuppets each day and denied doing so in real time. Until he was outed by the owner of the blog.

            Enjoy your new friend, Genghis. And please do stick around. I want to hear you talk more about 103.

          2. “anon” The “watching the children” slam can allude to a number of sick references, and the “Amish” but has to do with Malcolm’s (MM’s) penchant for a rhetorical trick that is his hallmark:

            In fact, both references “allude to” the incessant rhetoric of patent maximalists who love to pretend that their favorite patents are the necessary driving force behind all the “important” progress that has ever taken place and ever will. Hence, we see inane hysterical arguments about how children that will die because medical correlations can’t be patented, and arguments about how we’ll return to the “iron age” when software isn’t protectable with a patent. It’s pure undalterated b.s. but, hey, when you ain’t got a good argument might as well just reach for the hail mary.

        2. Genghis: You are using a browser on a computer, and connecting to a webserver over the Internet.

          And you’re suggesting that we wouldn’t have the Internet without the patent on the Internet.

          If you don’t think a lot of innovation occurs in software

          I never suggested otherwise.

          Here’s a fact for you: Most innovation occurs outside of “software”. And hardy any of it is patented. Do you know why?

          I don’t know when Prometheus was decided

          No kidding. Nobody could have guessed that.

          most likely I was hard at work trying to understanding concepts in math and science.

          That’s nice. I guess I was programming computers before you were born and getting my Ph.D. before you went to high school.

          Regardless, the subject of the discussion is the patenting of information and information-processing logic. It’s a recent development and it’s had a profound — and profoundly negative effect — on the patent system.

          A tiny, tiny, tiny number of people and their attorneys made a lot of money by exploiting the gaping flaws in the ad hoc, completely made-up on the spot, shortsighted “framework” (and I put the term in quotes because there’s little more than dust there).

          Then people started waking up and noticing the nonsense and the bottom-feeding. And from that point onwards we’ve had little more than whining from the bottom-feeders about how they are soooo important and how everyone will be soooo sorry when we take their information-processing patents away. They sound a lot like you, Genghis. And their understanding of the issues is kist about as shallow as yours.

          1. Genghis said “If you don’t think a lot of innovation occurs in software” and MM said “I never suggested otherwise.

            OK, so we agree on that.

        3. Genghis: I also don’t know what Prometheus was about, but it looks like I would have agreed with you that it was ridiculous to allow such claims. Again maybe a 103 rejection would have been appropriate.

          103 isn’t going to get you anywhere when the correlation is non-obvious, Genghis. But thanks for bringing that “argument” up. That’s pretty much exactly what I’d expect to hear from someone who (1) doesn’t know when a hugely important case like Prometheus was decided and (2) who nevertheless is quite certain that patents on information and information-processing logic are necessary — or even helpful — to promote “better software”.

          1. MM, you win. You have much more time and energy to devote to this issue I have. I simply cannot compete.

            MM said: who nevertheless is quite certain that patents on information and information-processing logic are necessary — or even helpful — to promote “better software”.

            I never said that. But, based on first hand experience, I know that software patents make it easier for small software companies to talk more freely about their technology with potential business partners. Also, if software was not patentable, one would have considerably less business risk in setting up shop outside the US, stealing “information-processing logic” from Silicon Valley, and selling products back into the US.

            BTW, do you agree with Ned’s position on 101? I’m fine with his position, and I’m sure he can give you all the legal basis you need to understand why software should be patentable in some shape or form.

            1. I’m sure [Ned] can give you all the legal basis you need to understand why software should be patentable in some shape or form.

              Ned can give me a policy reason but there is no “legal basis” that requires instructions for a configurable information-processing device to be patentable in any form.

              Now, if the non-obvious distinguishing physical features of this configured device are described in the claim, then there likely is “legal basis” and a pretty good one at that.

              Otherwise, it’s just smoke and mirrors and a “policy” with zilcho evidentiary support other than “the people making money off the status quo are going to have a sad when their lolly is taken away.”

              Put that investor money towards better hardware — properly claimed, of course, and very patent eligible — and “better software” follows like night follows day. All these whiners trying to “monetize” their software can rely on copyright. Will their odds of becoming megabillionaires as the result of some junky patent decrease magnificently? You bet they will. Who cares? Pretty much nobody except for a tiny, tiny handful of rich whining fanboys.

              1. Why did you put legal basis in quotes?

                Oh wait – it’s because you have previously volunteered an admission against your interests in that you know and recognize the legal basis (without quotes), and this is just your usual dissembling way of trying to pretend that the law is something other than what it is.

                Nine years and running of the same lame game.

              2. MM said: “Ned can give me a policy reason but there is no “legal basis” that requires instructions for a configurable information-processing device to be patentable in any form.

                I’ve asked specific questions to Ned and he has given me direct answers that are backed up by statute and case law. I have not seen that from you.

                According to Ned (at least how I’ve understood his position) there is a way for me to protect software, and the cases I’ve reviewed so far – Prometheus, Alice, and the case that is the subject of this blog post – are consistent with that view.

                I understand your opinion regarding patentability of software, and of course you are entitled to have your opinion. But it seems your position is currently just a wish because it seems quite far away from Ned’s position, which I think is much closer to legal reality.

                1. Careful Genghis – Ned only appears to give you citations and case law. What he actually gives you are his selected versions of such.

                  On the whole, he is every bit chasing windmills of pre-ordained agendas as is Malcolm.

                  Just ask him how he feels about software and business methods directly. He refuses to recognize that software is defined to be a machine component. He refuses to recognize that software is a manufacture – created by the hand of man – in its own right. He refuses to recognize that software is equivalent to hardware and equivalent to firmware (note for the dissemblers, equivalence is just not supposed to be the same as “exactly the same as”). He creates out of thin air some apparition of a requirement for “permanence” and perpetually gets in wrong in thinking that software is “a method” (as opposed the execution of software invoking a method).

                  It is true that he does try to at least discuss the law (as opposed to Malcolm), but he will still subvert that law in order to advocate for his desired ends (which more often than not match Malcolm’s desired ends).

  12. This is a but-for-a-nail-the-shoe-was-lost case. Aka bfantswl case.

    The drafting disaster with claims 60 et seq comes down to deletion of a 5-letter word: “device.” OK . . . mark it a 6, dude.

    AllVoice claims “an interface” but an “interface device” is shown in Fig 1 and “interface device” (or “interface apparatus”) is discussed throughout the spec. Had “interface device” been used in the preamble in independent claims 60 and 64, this 101 yada would have no legs, particularly given the MPF language and Prost’s holding in Eon that an algorithm is MPF structure. (A position I whined about at length in Comment 8 of the May08.15 post on that case.) And, unlike Eon, there are multiple figures in this spec directed to the algorithms.

    But it’s really a typical issue of sloppy claim drafting compounded by an examiner with his cranium efficaciously positioned for examining his own rectum from the inside and nothing more.

    But where the courts really stuck it to AllVoice IMO is the way they flushed the bulk of the suit on the basis that AllVoice did not timely amend its pleadings following the DC’s construction of the claims. The Markman hearing was May.2011; the court’s construction order and order granting partial SJ came 7 months later, Dec.2011; and AllVoice’s motion to amend infringement contentions was filed Apr.2012, with agreement of Microsoft’s counsel.

    The question came down to whether AllVoice’s 4 month delay (w/ agreement of its adversary) was reasonable or excusable. Here’s what’s scary: the DC and O’Malley figured that the reasonableness clock began to tick not when the court entered it’s claim construction, but when MS filed it’s construction of the claims. IOW, as I read it, a patent owner is expected to amend his pleadings based on how the adversary construes the claims it is accused of infringing and not based on how the court ultimately construes them. Maybe that rule only holds if the adversary is MS, or IBM, & etc. . .

    I’m sure if I agreed on behalf of one of my micro/small clients to let MS file a request to amend in April and then moved the court to dismiss the case on the grounds of delay when MS did file in April, I’d get sanctioned. Procedural fairness is an entirely relative — i.e. amorphous — concept. I guess your foot is over the line if Walter (and his piece) says so.

    1. Thanks Babel.

      I may not always (if ever 😉 ), agree with your viewpoints, but here you inject some semblance of an actual discussion of legal significance – as opposed to the typical wit ch hunt.

    2. “While a different claim construction may
      justify an amendment, the district court did not abuse its
      discretion when it concluded that the local rules do not
      allow a party to amend its infringement contentions as a
      matter of right whenever the district court adopts a claim
      construction position at odds with that urged by the
      moving party. Diligence still must be shown.”

      The problem was that AV did not provide any reason for even the 3 month delay. I simply assumed it had a right to amend with the consent of MS.

      This seemed to PO the court, even if MS was not put out.

      1. Re: Ned @12.2

        Yes, let’s look at that angle. The only issue I can see is the meaning of “timely.” Here’s the rule:

        Local Patent Rule 125, USDC, WDWA

        Amendment of the Infringement Contentions or the Invalidity Contentions may be made only by order of the Court upon a timely showing of good cause. Non-exhaustive examples of circumstances that may, absent undue prejudice to the non-moving party, support a finding of good cause include: (a) a claim construction by the Court different from that proposed by the party seeking amendment; (b) recent discovery of material prior art despite earlier diligent search; and (c) recent discovery of nonpublic information about the Accused Device which was not discovered, despite diligent efforts, before the service of the Infringement Contentions. The duty to supplement discovery responses does not excuse the need to obtain leave of court to amend contentions.

        It says amendment may be made upon timely showing of good cause. There is no question AV showed good cause b/c the Rule itself lists their cause — clause (a).

        I didn’t get into the filings, but the motion seeking leave to amend surely set forth the reason for seeking leave under clause (a). What was “missing,” according to O’Malley, was an explanation of why they were late. But they weren’t late — unless the Markman order specified a date or period for seeking amendments, and there’s no indication of that in O’Malley’s opinion.

        Here, the district court found that Allvoice had failed to explain why it waited more than three months after the Markman order and over nineteen months after the joint claim chart of disputed terms

        I find this troubling. Unless the judge sets a deadline in an order, or unless a rule or statute lays out a deadline, there is no obligation that I can see for a litigant to explain the timing of a filing, least of all when the opponent has already agreed. I don’t see anything in the rule that gives notice that less than four months is not timely.

        To me, if your opponent agrees to a date certain and you come in under that date certain, that’s timely, particularly after the judge sat on the Markman opinion for 7 months. This outcome seems inherently unfair. If the motion had no hope of succeeding on the merits, maybe that would be the most efficient way to handle it. But not here.

        I think a some of these tyrant USDC judges are trying to turn their courts into rocket-dockets, but with the litigants the only ones on the rocket.

        The other problem here is O’Malley’s total brainfk in which she conflates “amendment as a matter of right” with “diligence.” That’s a red herring and indicates to me that something is not right here.

        Whether or not one has a right to amend — as AV did here according to the rule — and whether one is diligent in amending are two entirely different legal/factual issues. Sounds to me like AV was diligent in seeking MS’s agreement that the motion be filed in April and then filing it in April. If they had filed in Mar, would that be any more timely or diligent? How about Feb? WhThFu are litigants supposed to do when the rule or order doesn’t set out a deadline for taking some action — read the judge’s mind? There’s a serious Due Process issue lurking in here.

        This is appallingly sloppy thinking on the part of a federal appeals judge. Who appointed O’Malley, anyway?

        Obama? OK, never mind. . .

        1. Newsflash: AllVoice is a bottom-feeder and nobody should waste time weeping over their miserable and much-deserved loss here.

          How much money did Microsoft have to spend to tank the claims of these ignoble t w i ts?

          1. Newsflash: no matter what you feel about any particular entity, the ends never justify the means.

            It really does matter on the means. As you profess to be an attorney, the underlying legal issue should give you pause, instead of the usual “but they are G-g-grifters” line.

    3. link to elance.com

      More reality that the claim without question to one skilled in the art includes hardware with the interface.

      This is just nxts. Each and every foundation principle of patent law is under attack.

        1. So, let see what is going on in this exchange:

          1) MM claims module is a nonce word.

          2) I provide evidence that it is not a nonce word.

          3) MM does not respond, but rather picks out something else in the post.

          OK. Sure. Dennis. The. Problems. Aren’t. From. MM.

          1. I forgot to add:

            4) Repeat #1 in next blog post.

            5) MM denies that elance was ever cited or has forgotten.

            6) Repeat steps 2 and 3.

  13. Here, claims 60–68 of the ’273 Patent do not recite a process or tangible or physical object and, thus, do not fall within any of the categories of eligible subject matter.

    Can someone please provide an example of a non-tangible or non-physical loudspeaker?

    Future drafting note – even though you describe something as a physical object, the object so described is not a physical object. So much for viewing the claim as a whole.

    Claim 60
    A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different
    computer-related applications, the universal speech-recognition interface comprising:
    input means for receiving speech-recognition data including recognised words;
    output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing
    of the recognised words as input text; and
    audio playback means for playing audio data associated with the recognised words.

    From the Spec
    When the speech recognition interface application 12 interacts with the text processor application 13 following the selection of text for audio playback by the user using the pointing device 3, audio data which is stored in the temporary directory in the disc storage 15 is accessed and output over the bus 9 via the input/output device 19 to a digital to analog converter 27 to generate an analog audio signal to drive an audio output device 28 for playback of the audio signal selected by the user. Col. 6, lns. 20-29

    Instead the audio output device 28 (loudspeaker or loudspeakers) receives its output from a conventional multimedia sound card 19a. col. 12, ln 58-60

    1. Perhaps we have a case in which the (declining) use of “means for” will save the day for the patentee.

      At least on the “issue” of this nonsensical attempt to treat software as something other than what it is.

    2. This case illustrates how the fed. cir. should not be doing their own private claim construction as if they are experts.

      The fact is that claiming an “interface” includes the computer to execute. Real people in the field write specs like this all the time. It is because it is not important or not within their engineering part whether what hardware is used. It may be made into a special chip as may be done for consumer products. Not the invention. Shameful that 1) the Fed. Cir. is so science and patent law illiterate. 2) that so many people on this blog bought their nonsense hook, line and sinker.

      Let’s see, after 30 seconds here is a real specification for some programming and they are using the word module. So apparently module has some meaning despite the unending screeches of the favorite jeerer.

      link to elance.com

      1. Night Writer – that incessant screeching is merely the broadcasting of one who loves to engage in self- FAIL on the perpetual basis of not understanding what “In The Art” entails.

        Sadly, his “ends-justify-whatever-means” runs amuck and beyond any reason – driving America’s leading other-than-patent-law source.

    3. So much for viewing the claim as a whole.

      Where have you been sleeping? “Viewing the claim as a whole” means only that you can’t identify a piece of a claim and based on that piece alone declare the claim invalid or ineligible. That’s all it means. It doesn’t mean that any eligible subject matter in the claim renders the claim ineligible because such a rule would lead to absurd results.

      Consider: books are manufactures. Do I need to go on or can you figure out the issue for yourself?

      1. What everyone can readily figure out is that you need to dissemble with the canard of trying to insert non-Useful Arts into your “examples.”

        Such just does not prove the point that you think that it does (other than your willingness to dissemble, given that you have volunteered the admission that you know and understand the exceptions to the judicial doctrine of printed matter).

    4. Can someone please provide an example of a non-tangible or non-physical loudspeaker? …. Instead the audio output device 28 (loudspeaker or loudspeakers) receives its output from a conventional multimedia sound card 19a. col. 12, ln 58-60

      You’re relying on the “applicant as lexicographer” argument. Unfortunately, the USPTO believes that “broadest reasonable interpretation” completely trumps that argument.

      Let’s say you use a complete nonsense word “X” in the claims, and then in the specification define “X” as an ultra-precise term “Y”. I guarantee that the examiner will:

      a) Reject the claim under 35 USC 112p2 because the examiner doesn’t know what “X” means;

      b) Arbitrary assert that “X” can mean “Z” (no citation needed), and will then reject the claim based on a reference showing “Z”; or

      c) Both of the above.

      You will argue lexicographer. The examiner will copy-and-paste the stock argument of broadest reasonable interpretation citing In re Gurley, and issue a final rejection. Your options are:

      a) Argue with the SPE, who will let you vent, and then side with the examiner anyway;

      b) File an appeal, and wait five years for a ruling that might be in your favor; or

      c) Amend the claims to replace “X” with “Y”.

      Examiners have 100% of the leverage here. They all know it, and they all follow the above flowchart to a T – taking full advantage of the deference / apathy of their SPE and the functional unavailability of the PTAB.

      For all practical purposes, the lexicographer doctrine is dead as a doorknob. It definitely shouldn’t be that way, but it definitely is.

  14. This case contains zero cites to Mayo and one minor cite to Alice?

    How is that possible? These cases provide ample support to dispose of the claims here.

    1. Mayo and Alice are about whether the invention is “useful” as required by 101 – as the opposite of “abstract.”

      This case isn’t about that at all. It is about whether an “interface” falls into the statutory classes set forth in 101. It doesn’t. The End.

      1. David,

        I get it, internet condescension aside. But did they have to resolve the case that way? Seems, like I pointed out, there is ready anple 101 case law to dispose of the case.

        Unless, of course the fed cir doesnt want to apply those cases, which wouldnt surprise me.

        Fine by me i guess, just add another doctrine to invalidate ju nky claims like this.

        1. (For the record, I didn’t intend any condescension toward you – only toward the case: a simple answer for a simple question.)

          Seems, like I pointed out, there is ready anple 101 case law to dispose of the case.

          I agree; I don’t even find this case interesting. I’m a little surprised to see it posted – but I suppose it’s been a slow news week here…

            1. arthur:

              No worries. The community here, on the whole, is so combative these days that presuming an attack is a pretty safe bet. I do try to stay above all of that – just focus on the arguments and the issues, and try to respect differing opinions that are even marginally reasonable.

              1. Please define “marginally reasonable.”

                Is it marginally reasonable to engage in drive-by monologue, Internet style shoutdowns by repeating mantra ad infinitum ad nauseum in total disregard of valid counterpoints put on the table of discussion?

                I am not knocking you David. Truth be told, your posts here are some of the best, as your engagement with Malcolm resulted in several of his critical volunteering of admissions against his interests and your case law decimation of Ned’s re-telling of history was succinct yet brutally thorough.

                But to not recognize the propaganda machine that this forum has been co-opted to be is to turn a blind eye to the historical success that this type of propaganda enjoys. We don’t need a Chamberlain like response. These Internet bullies are in a very real sense counting on that.

                Some blogs like Dr. Noonan’s have more direct control. Others choose not to have that. In and of itself, that’s no big deal. But to ig nore the consequences and simply pretend that silence will suffice against a relentless campaign of propaganda is just f001ish. It takes but a few good men doing nothing to turn this into America’s leading source of something-other-than patent law.

                1. Please define “marginally reasonable.”

                  Sure. I guess I’ll identify three categories of comments here:

                  1) Comments that are legally and technically accurate, nuanced, and responsive to counterpoints. These comments merit discussion, and I enjoy engaging them.

                  2) Comments that are legally or technically inaccurate, extreme, and don’t account for counterarguments. These comments require correction, but my patience with them is limited.

                  3) Comments that have no connection to reality, offered primarily to provoke reaction, and for which the author has no interest in even evaluating alternatives. I don’t waste my time here – and in rare cases, I permanently disengage the author; I don’t even see their posts any more.

                  To not recognize the propaganda machine that this forum has been co-opted to be is to turn a blind eye to the historical success that this type of propaganda enjoys.

                  Oh, I completely get that it’s being misused, and agree that it’s a major disruption of good conversation here. I find it baffling that this condition has been allowed to persist for years. I’ve just found a way to make it a worthwhile experience for myself. Does that make sense?

                2. David,

                  Respectfully, your posts tend to be a bright light as to how to conduct actual conversations. Your posts consistently exhibit a very high signal to noise ratio.

                  Sadly, I cannot think of a single person that advocates against software patents that meets your category 1) as nearly all of them fall into categories 2) and 3).

                  Your level of patience and engagement is totally up to you – but even as you choose to disengage (for whatever reason), the propaganda machine marches on, relentlessly engaging in their Internet style shoutdown by refusing to acknowledge, learn and integrate counterpoints properly made.

                  Yes, this behavior is the single largest blight on this blog, and is the single largest detriment to actual dialogue. I was personally asked how to make the dialogue better a number of years ago, and imagine my surprise when not only were my suggestions ig nored, but I come to find out that for nine years and running others have made the exact same suggestions. When consistent suggestions are ig nored consistently, well, the blog deserves every ounce of pain that comes with the behaviors allowed (and behaviors that at times – as noted (again) by multiple people – even appear to be condoned and promoted.

                  I am glad that you have found a path that works for you. For me, my path includes a well-earned mocking of those that insist on dissembling. As I have said like forever, these people do have a level of control – all they need to do is post with inte11ectual honesty.

                  C’est la Vie.

      2. Also, what makes you think abstract and useful are alternatives? I dont think anyone has argued that mayo’s corrations werent useful.

        1. Well, the law of thermodynamics is certainly “useful” in the English sense – but not in the “inventions that have directly applicable utility” sense required by patent law.

          The CAFC and PTAB have long crammed their pontifications into the word “useful.” Consider the State Street test: “useful, concrete, and tangible”… where all three terms, totally undefined, ended up being circularly defined and meaning precisely the same thing.

          1. Without diving into the decision itself, David, I would beg to differ as to the terms of art for “useful, concrete, and tangible.”

            They were most definitely not defined or used to have a meaning precisely being the same thing.

            Quite in fact, the meaning of the terms are still reflected and their differences still exist.

            For example, “tangible” – while Nuitjen is indeed controlling law, the objective incorrectness of the decision flows directly from the desire to maintain a sense of tangibility, while the rest of the world has come to accept the duality of wave/particle nature, and the reality of fields (even strings). One of my phrase – Eppur Si Mouve

            For another example, the term “useful” simply invokes the 2nd half of hte 101 requirement of utility – surely you are not suggesting that that term is either circularly defined, are you?

            I will grant that at first blush “concrete” does appear to be used interchangably with “tangible,” but read again the sense the word is used and you can pick up a nuanced difference.

            1. I would beg to differ as to the terms of art for “useful, concrete, and tangible.” They were most definitely not defined or used to have a meaning precisely being the same thing.

              Okay, I’ll grant that “precisely the same thing” is an overstatement. But the three terms lost a lot of distinction in use – which, I think, promoted their eventual abandonment.

              During the 00’s, I remember reading several dozen PATNEWS articles by Greg Aharonian illustrating just how fluidly and interchangeably all three terms were used in practice. For example:

              The PTO views “tangible” as “non-abstract”, even though the standard dictionary definition (which the PTO encourages applicants to use for most claim terms to make searching easier), the standard dictionary defintion of “concrete” is “non-abstract”.

              The definition of “useful” – “specific and substantial and credible” is semantically inadequate. First, “specific” is more akin to “concrete”, and if “specific” has to be used, include it under “concrete”. “credible” is more along the lines of “repeatable”, etc. seen under “concrete”. “Substantial” – in what sense?

      3. It is about whether an “interface” falls into the statutory classes set forth in 101. It doesn’t. The End

        Circular arguments don’t have “ends.”

        The “interface” comprises a means for audio playback. That requires a manufacture. And manufactures are eligible subject matter. If a claimed invention includes a manufacture — as this invention does — then the device must itself be manufactured. Therefore it is a manufacture and therefore it is statutory. “The End”.

        By the way, you really have to love the use of the term “engine” to describe something that has as much resemblance to an “engine” as it does to a dictionary. But there’s nothing deceptive or misleading about that practice. After all, everybody does it.

  15. Two points:

    1. In the quiz that Dennis post a few days ago, the 1st question posed a claim where the claim was to “configured software.” I will presume that under the holding of this case, that such a claim would be directed to nonstatutory subject matter because it is directed to the software itself.

    When I 1st saw this case this morning, I thought of Dennis’s claim in quiz question number 1 and immediately thought that Dennis had posed the quiz question precisely to evoke this response.

    2. Since this case seems to be a case of 1st impression on the issue of software being nonstatutory if claimed as such, one wonders why the case is not precedential?

    1. Ned –

      You said:
      “In the quiz that Dennis post a few days ago, the 1st question posed a claim where the claim was to “configured software.” ”

      But Claim 1 was:

      A mobile device having a memory and a processor and operating as part of a social network, wherein the memory includes a stored program configured to:
      cause the mobile device to emit a first sound based upon the proximity of a mobile device associated with a member of the social network;
      cause the mobile device to emit a second sound based upon the proximity of a mobile device associated with a member of the social network who has been identified as a match; and
      cause the mobile device to emit a third sound based upon the proximity of a mobile device associated with a member of the social network who has been identified as a bad match.

      The claim is clearly to a device, not “configured software.”

        1. No Ned, as you have pointed out many times in this tread, THAT interpretation makes no sense.

          That is why one of ordinary skill in the art would understand that what is configured is the device/processor.

          1. Les, I have said that the claim is indefinite because I cannot figure out who infringes the claim. The claim nominally is to a machine, but then it diverts to talking about configured software as opposed to a configured machine. The claim is internally inconsistent.

            But, it does seem that the claim is to the software itself as that is what is configured. As such, the claim is to nonstatutory subject matter.

            1. Ned:

              Assume a claim is directed to a mobile device that is “configured to” transmit and receive data on a network to authenticate the device on the network (a simple security feature). Assume that this type of security is novel/non-obvious.

              The configuration occurs via software installed in memory and executed by a processor.

              An identical mobile device sits next to the claimed mobile device. It has the same identical hardware a the claimed mobile device. It does not possess ANY configuration software.

              Are these the same device or different devices? If they are the same, how is it that one device can authenticate for network access and the other cannot?

              If they are not the same, why is the functionality of the claimed mobile device not worthy of patent protection?

              I do acknowledge the statutory class definition is lacking in the case at hand, but this is a more general set of questions on 101.

              1. why is the functionality of the claimed mobile device not worthy of patent protection?

                “Functionalities” aren’t eligible subject matter.

                And they never were.

                1. Claiming that functional limitations aren’t patentable is as errant as asserting that methods themselves are not patentable.

                  Passing off opinions as if they were law isn’t beneficial for this website.

                2. Bluto,

                  You are repeating the fabled Grand Hall experiment.

                  All of the regular anti-patent folk have either failed that experiment or have refused to engage that experiment in an inte11ectually honest manner.

                  Even with this case, the lack of inte11ectual honesty is absolutely appalling – and even more so that such is also completely unsurprising.

              2. Are the two mobile devices are the same, the one with the built-in functionality and the other without it? No, they are not the same.

                The key to the answer is “software,” which, by definition,is not part of the machine. Software is loaded and executed by the machine in response to a user doing something.

                I patent a new bow and arrow combination where the only thing new is the arrow. Is the bow new? Why even ask such silly questions?

                The new use of an old device is patentable as a process. However, modify the old device with new structure, one has a new or improved device. It is just that software is not structurally part of the machine.

                Now we have In re Bernhart that says software physically modifies a computer. But that case cited no expert opinion to support that notion, and it is contrary to scientific fact. The CCPA and the Federal Circuit cannot simply make things up call fantasy real. But they do.

                1. Your analogy isn’t even remotely similar. software is installed in memory on the claimed device. Is the arrow incorporated into the bow? Does merely using the bow invoke the arrow?

                  With a mobile device, one need only turn on the phone. The claimed device works differently than the non-configured device. The bow works the same regardless of the presence of the arrow.

                2. Bluto, “software is installed…” Well, sir, so is the arrow when the bow acts on it.

                  Claim the programmed computer in a larger machine or process, I will no dispute that the larger machine or process may be improved by the presence of the programmed computer. But when the patentability of the claim depends on the computer being a new or improved machine, then that program well must be PART of the machine on a substantially permanent basis — as in firmware such that the machine automatically executes the program as part of its normal operation. Such is microcode, a bios, or an automatically loaded and executed OS.

                  If we do not require the presence in the claim of the larger machine or process, or require that the programming become an integral part of machine in some fashion, then we have the case of the bow and arrow where the bow is old and the arrow is new. If the novelty cannot be in the arrow, but only in the bow, then the combination cannot state a patentable invention.

                  Thus, because of the bootstrapping of the CCPA in Bernhart, we have claims issuing from the PTO with old and generic computers simply executing new programs, numbers in, numbers out, with no larger machine or process being claimed and with no enhancement to computer utility. Effectively, these claims claim unpatentable subject matter.

                3. Ned,

                  You are still completely wrong on this.

                  Objectively
                  In this reality
                  Legally
                  In any and every way.

                  “Substantially permanent…” I have asked you a thousand times where is your citation to the words of Congress to support that.

                  Sorry Charlie – the plain fact of the matter is that software is equivalent to firmware and is equivalent to hardware.

    1. These are the types of questions that should be asked and answered around here. Unfortunately, these comment threads have turned into a bunch of (allegedly) paid shills who argue past each other all day.

      Do any one of you really think that you are going to magically convince one another to co-opt your beliefs? Every comment section is two steps away from devolving into ad-hominem-opolis

        1. Personally, when drafting claims to software, I favor focusing on an innovative process. I think processes are clearly something that is intended to be patent eligible subject matter, and I have a hard time understanding why processes implemented with a computer processor would somehow be any less deserving of patent protection than processes implemented some other way.

          In contrast to this, I have never been particularly enamored with “computer readable medium” claims. Although I am not commenting myself on the validity of the argument, I can see arguments regarding such strategies as either inappropriate patenting of information akin to patenting of printed matter, and/or inappropriate functional claiming.

          To be honest, I haven’t read the spec, and am disinclined to invest any amount of time into going to figure out exactly what is being claimed as innovative, so I will decline to draft any actual claims. Although I think there is an interesting philosophical discussion over whether software per se should be patentable, I don’t find the decision surprising or alarming in the slightest.

          1. JCD, I have tried to enforce CRM claims. The problem, of course, is that they read on software, when one really wants to the claims to read on the method itself.

            1. Hmm. I always thought that the CRM claims were written for the software vendor and the method claims were written for the end user. Why do you prefer asserting method claims? Why can’t you sue the software vendor under direct infringement based on the CRM claims?

          2. I have a hard time understanding why processes implemented with a computer processor would somehow be any less deserving of patent protection than processes implemented some other way.

            You might have an easier time if you recognize that logic and information are not eligible subject matter, nor were they ever eligible subject matter. Somehow the phrase “on a computer” was supposed to make everything kosher but we all know now (and some of us have known for a long time) that it wasn’t that simple.

    2. how should the claims (and application) been drafted?

      Well, if you subscribe to the theory that the CAFC and the PTO have created a viable regime for protecting software that isn’t built on a foundation of sand and smoke, then

      1) claim a computer-readable media comprising instructions for imparting the desired “new” functionality and/or

      2) claim a computer that has been so instructed or that includes a controller “configured” to perform the process.

      Be sure to include a flowchart or an algorithm in the specification. You know: something with sufficiently fake “structure” that’s it’s no longer legally fake, even though it isn’t real structure and everybody knows that.

      Most importantly: don’t assert the claim against someone who isn’t willing to play the game according to the CAFC’s ridiculous rules and who has the money to hire a competent attorney. You will lose.

    3. You could also claim

      1. A process comprising

      1) a means for “receiving recognized words”

      2) a means for “ouputting recognized words” in a form that some computer somewhere on earth will be able to convert into text

      3) means for making wordy sounds,

      wherein the means doesn’t include a human brain or a body part like an ear or a mouth but this claim is totally sooper dooper techno stuff trust me because I put this limitation in.

      I mean: why not? Just be honest. I know it’s hard for lawyers sometimes but it can be done.

    4. This is claim number 60, so I assume that other claims recite the method. If that’s true, it is clear that what they want to protect is what they actually sell. So, IMHO claim 60 should have been drafted as a computer readable medium claim (non transitory of course).

      1. Claim 60…what does that tell you?

        It tells me there was a lot of hand waving and dust kicking in the application and claims.

      2. The earlier claims were to the device and the process. This particular set of claims was directed specifically to the interface application, and the attorneys for the patent holder specifically admitted that these claims were directed toward the software. Seems like a misuse of means plus function to me, but that’s my background speaking. As a computer engineer, software is nebulous until installed in a machine, and then it configures the machine through a series of physical changes.

  16. However the statute does have some meat of its own. In particular, Section 101 particularly creates eligibility for four categories of inventions: processes, machines, manufactures, and compositions of matter. Inventions that cannot fit within the four statutory categories are not patent eligible.”

    Thanks for noticing.

    1. Inventions that cannot fit within the four statutory categories are not patent eligible.”

      Any lawyer with half a brain can make anything “fit” into one of those four statutory categories.

      So what was your point, Les?

        1. LOL – I totally see in my mind’s eye a picture of Les struggling to put on a black pair of gloves three sizes too small (with the best OJ shagrined look on his face)…

  17. In the discussion of another article, Ned said “Note, I am careful to distinguish the use of a programmed computer in larger machines, applications or systems, or where the algorithms are actually used to improve a computer or computer system as opposed using a generic computer to simply calculate.

    OK Ned, just off the top of my head, here’s a fact pattern. Let’s assume self driving cars are in existence. All of the “intelligence” of the car is in a program that is stored on a non-volatile memory chip. The existing program results in a jerky ride. My new program that includes a new”data manipulation idea” results in a smoother ride. The only new thing about this program is the new “data manipulation idea.” GM and Ford license the new software from me. I don’t make the car. I don’t make the computer. I don’t make the memory.

    I suspect that one of my disgruntled employees told the new “data manipulation idea” to a competitor over a pint of beer. I can’t prove that. But now my competitor has incorporated the same “data manipulation idea” in their software product.

    Could I have drafted a claim that I could have asserted against my competitor under your interpretation of 101? Before you start drafting a claim, let me give you some more information. I really really don’t want to drag my customers, i.e., Ford and GM, into the litigation. Also, one of my friends makes mechanical toys. He told me that direct infringement was the cheapest way to assert your claim. I consistently did better than him in school and college, and I think my invention is more valuable to society than his mechanical toy. So, if he can use direct infringement, then I’d really like to use it too. OK, now you can start drafting the claim.

    1. Genghis, a claim to an improved car can have as its novelty a programmed computer with the new algorithm. See, e.g., Diamond v. Diehr (improved process) and In re Alappat (improved graphics display).

      Secondly, a claim to the improved car will be infringed by the sale by the pirate of software to the car manufacturers. Secondly, the making, using or selling of the improved car will also be infringed by the provider of the software under inducement theories.

      Example claim:

      1. An apparatus comprising:

      a car having a microprocessor programmed to execute algorithm A.

      Algorithm A is defined in the spec.

      1. I don’t get it. What infringement theory am I using here? No direct infringement, correct? My competitor does not make a car, so he’ll say he doesn’t infringe. Contributory infringement requires that I drag my customers into the litigation, correct? So, I’m left with inducement. What if my competitor sells the software to GM and the license says “it is for golf carts, but you know you can also use it for other purposes like cars.” Do I have inducement here? Doesn’t inducement require that my software be only useful for a specific purpose?

        1. The direct infringer is the car maker who makes, uses or sells the claimed invention.

          The contributory infringer or the inducer is your competitor who provides the software.

          Regarding a post-sale use restraint, I am pretty sure it will not protect the competitor who knows what his software is being used for when it is sold to the likes of GM.

          1. I don’t want to sue the car maker. So it boils down to the difference (cost/time/probability of success) between direct infringement and contributory/inducement infringement theories. My understanding is that it is much faster, cheaper, and better (i.e., higher probability of success) to assert direct infringement than assert contributory/induced infringement. Am I right? Any data on the “average” cost to assert direct infringement vs. contributory/induced infringement?

            1. Genghis, same.

              Suing the party responsible for the infringement is something people normally do in the first place. There is legislation pending that is directed to forcing litigation in that direction.

  18. Dennis: the patentee admitted that the claim elements are all software elements that do not expressly require hardware elements.

    I’m not sure if that’s accurate, unless the definition of “hardware elements” you are using is so narrow as to exclude a hard drive or some other tangible means of storing computer instructions (aka “software”). The opinion states:

    Allvoice attempts to overcome this hurdle now by arguing that the claimed software must necessarily be in a machine readable, physical state in order to exist

    This is not an unreasonable argument. It may be beside the point as to the ultimate conclusion (assuming some amount of rationality in the CAFC’s jurisprudence) but in the context of these claims it seems reasonable to conclude that the instructions are stored on some machine readable media connected to “the interface.”

    On the other hand, if Allvoice is going to make that argument to overcome 101, why not make the argument that “the interface” itself (regardless of the underlying software) is necessarily tangible?

    The next line in the opinion, by the way, is interesting:

    [A]s this Court has recognized, instructions, data, or information alone, absent a tangible medium, is not a manufacture.

    In other words, instructions, data and information are ineligible subject matter, period. If the PTO and the CAFC would learn to start from that fundamental premise and take it to its logical conclusion rather than working backward from the premise that “this math/logic is so valuable it must be worthy of a patent!”, we wouldn’t be seeing hundreds of thousands of junk claims being granted.

  19. What’s interesting here is that there is no discussion of the means-plus-function claim format, which in my view should have necessitated a finding that the claim recites a machine (perhaps the claim should be invalid under 112, 2nd paragraph instead, but I haven’t done the research on that question). Did the patent holder disclaim a means-plus-function interpretation somewhere? If so, you’d think this opinion would have mentioned that fact…

    1. there is no discussion of the means-plus-function claim format,

      There is a discussion at footnote 5 on page 16:

      Although Allvoice did not ground its opposition to Microsoft’s motion for summary judgment on any benefits received from employing functional claiming under § 112(6), it is also significant that the means-plusfunction limitations, as construed by Allvoice, do not correspond to tangible structure, as opposed to software instructions.

      It’s instructions all the way down, at least according to the CAFC.

      In any event, it boggles the mind how the recitation in the specification of still more “new functionality” could ever provide concrete, tangible support for a “means plus function” claim. But such is the topsy-turvy world that the CAFC created.

      1. Good catch; I hadn’t seen that footnote.

        My reading of this is that, while the CAFC did not say that the means are software, Allvoice had alleged that the means are only software. Assuming that the opinion characterizes Allvoice’s argument correctly, I can’t understand why Allvoice would have said this and then separately tried to allege that the software nevertheless implies that the claim includes the corresponding computing structure that executes the software. Why not just argue that the computing structure is part of the “means” itself?

        1. “Why not just argue that the computing structure is part of the “means” itself?”

          Probably because his client sells software, not hardware and they want to go after infringers that sell software, not their potential customers who install it in hardware.

          1. Probably because his client sells software

            aka instructions for computers.

            Not eligible for patent protection.

            I seem to recall Congress going to great lengths to protect people who sell software. Somehow greed manages to blind certain types of people, even when they are given special gifts. Go figure.

            Anybody want to try to defend these junk claims as non-obvious? Just kidding.

                1. Copyright? DMCA? I’ve also read the “abstraction test” or whatever it is called where you can sue someone for copyright infringement even if it is not an “exact copy.”

                  It is very easy to rewrite software so that it bears no resemblance to the original. Copyright doesn’t help. If you don’t get this concept, then you lack an understanding of an important EE/CS concept that is essential for contributing usefully to the discussion of software patent protection. Trade secrets also don’t work if you have to distribute copies of the software.

                  The only way to protect a novel and non-obvious “data manipulation idea” is via a patent. According to Ned the current state of patent law provides sufficient protection for “legitimate” software inventions. If his comment regarding no difference (i.e., in terms of cost, effort, etc.) between direct and indirect infringement is true (I don’t have any reason to doubt Ned), then I’m fine with the current state of affairs.

                2. Genghis,

                  MM (aka Malcolm, aka Malcolm Mooney aka dozens of sockpuppets at Dr. Noonan’s site) has professed a per se objection to all software inventions and has repeatedly butchered copyright law as to the aspects of protection that set of IP laws is meant to protect.

            1. But as this case shows PROCESSES are eligible for patent protection and even processes that can be carried out by software are eligible.

          2. Les: his client … [does not want to go] after … customers who install it in hardware.

            Why not?

            All those people are trespassing on your party. They probably don’t have enough money to defend themselves in court and would be more likely to settle. Why wouldn’t you “go after them”? Their money isn’t green enough for you?

            1. “Why not?

              All those people are trespassing on your party. They probably don’t have enough money to defend themselves in court and would be more likely to settle. Why wouldn’t you “go after them”? Their money isn’t green enough for you?”

              Because they are not the true evil doers. The evil doer is the one who stole the invention and is selling it to them.

      2. It’s instructions all the way down, at least according to the CAFC.

        LOL. Well there’s your problem. Everyone knows that you need a turtle at the bottom.

    2. E, the patent owner conceded that the claims read on the software itself. The point is not a throwaway, as it is important to proving infringement.

    3. Except the argument from the patentee was that it didn’t, and I’m sure the defendant was only too happy to comply

  20. Looks like I was reading the case and working on a summary at the same time Dennis was. Here’s my take (previously posted under an earlier thread and modified here to avoid too much repetition with what Dennis has written):

    ————-

    Try to believe this representative claim:

    A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different
    computer-related applications, the universal speech-recognition interface comprising:

    input means for receiving speech-recognition data including recognised words;

    output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and

    audio playback means for playing audio data associated with the recognised words.

    Got that? Truly deep, sooper dooper technical stuff. Heckuva job, PTO.

    The CAFC’s take:

    If a claim is drawn to subject matter that falls outside the four statutory categories of § 101, it is not patent eligible. In re Nuitjen, 500 F.3d 1346, 1354 (Fed. Cir. 2007). This is true without regard to whether it might otherwise be
    ineligible because it encompasses a law of nature, natural phenomenon, or abstract idea. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 124 S. Ct. 2347, 2354 (2014).

    News flash for the CAFC: “new functionalities” aren’t eligible subject matter. Learn to make it easy on yourselves! But wait — there’s more:

    Except for process claims, “the eligible subject matter must exist in some physical or tangible form.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1348 (Fed. Cir. 2014). To be considered a machine under section 101, “the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’” Id. at 1349 (quoting Burr v. Duryee, 68 U.S. 531, 571 (1863)).

    If the eligible subject matter “must exist in some physical or tangible form” then it necessarily must be described as such in the claim, i.e., described as a physical object distinct from similar objects in the prior art. Otherwise what is being claimed is necessarily something other than the eligible subject matter. This is the same fundamental, underlying concern that required product-by-process claims to be construed to cover only the process steps, whether or not a description of the allegedly new resultant product was “impossible”. You can’t scriven your way out of describing your allegedly new and tangible product in physical detail if you want to protect the product itself.

    Now let’s watch the CAFC spin up a cloud of sparkly dust:

    Software may be patent eligible, but when a claim is not directed towards a process, the subject matter must exist in tangible form. Here, the disputed claims merely claim software instructions without any hardware limitations. …. We decline to import or, as Allvoice argues, “imply” a tangible medium into claims that fail to recite or reference any such medium

    LOL. Got that, everybody? Instructions are ineligible subject matter because (at least) they do not fall into a statutory category (arguably, instructions also fall under the larger category of information and are therefore ineligible as abstractions). BUT — regardless of Mayo, regardless of Alice — if you recite “any such tangible medium” — even an old tangible medium with no utility other than to store software instructions — the CAFC will gleefully take a giant bong hit and pretend that the protected “innovation” is eligible subject matter. On the other hand, if you don’t play this transparent scrivener’s game according to the CAFC’s cute rules, they won’t even fire up the bowl.

    The farce continues.

    1. MM, you’re just trying to stir up trouble where none exists. Nothing wrong with this opinion. All they’re saying is that tangibility is a necessary, but NOT sufficient, condition for eligibility. They’re NOT saying that once you throw in hardware, all’s good.

      They chose the more straightforward ground for affirmance. Nothing wrong with that.

      1. Nothing wrong with this opinion.

        There’s plenty wrong with all these CAFC opinions to the extent that they promote the claiming of “new functionalities” without the disclosure of any distinct, new tangible structure corresponding to those “new” functionalities.

        There is no reasonable, practical way to square that practice with, e.g., Burr v. Dyree, not to mention Mayo and Alice.

        1. Patents aren’t exclusively for new, tangible structure. Patents also protect new processes. Why would a new process be desirable? Probably because it serves an advantageous function.

          If you encode instructions for such a new process in a tangible medium, that may be okay too. You could certainly disagree with this conclusion, but your portrayal of it as ludicrous is disingenuous in that it is based on an erroneous implication that patents should only be given for “new, tangible structure”.

    2. then it necessarily must be described as such

      The farce continues indeed with Malcom wrongly making an issue of one optional claim format as somehow being the ONLY one allowed under the law…

      Another day, another misrepresentation of what the law actually is…

      Nine years and running.

      1. Three other words applicable here:

        Vast Middle Ground.

        Shall we remind all that the thought of software is not software… (this is non-precedential for a reason)

    3. “LOL. Got that, everybody? Instructions are ineligible subject matter because (at least) they do not fall into a statutory category (arguably, instructions also fall under the larger category of information and are therefore ineligible as abstractions). BUT — regardless of Mayo, regardless of Alice — if you recite “any such tangible medium” — even an old tangible medium with no utility other than to store software instructions — the CAFC will gleefully take a giant bong hit and pretend that the protected “innovation” is eligible subject matter. On the other hand, if you don’t play this transparent scrivener’s game according to the CAFC’s cute rules, they won’t even fire up the bowl.”

      Truth.

  21. Not surprising. Examiners have been enforcing the statutory classes quite rigorously for years now.

    Even where the claims recite a “system,” examiners often require more language in the body of the claim stating which elements comprise hardware. A few examiners have even insisted on inserting the term “hardware” – e.g., “a memory hardware device.”

    1. Not surprising considering that two of the judges on the panel have no science background, but disappointing. The claims should be read in view of the disclosure and in accordance with one skilled in the art. One skilled in the art knows that this is software/hardware/firmware, and would not interpret as anything else.

      We have gone so fare down the mountain of rationality that I fear we are near the end of patents. My guess is that in 10 years we won’t have patents for anything but large corporations and they will be in a strange form only for international corporations. Thanks Obama.

      1. Thanks Obama? Is that like a standard comment sign-off?

        …and so I stubbed my toe and got a sunburn. Thanks Obama.

          1. And you will note that here I explained the comment and I will get no response as I am right–again. Just incredible how far down the hill of rational debate we have slide. As in there is none.

            1. Here is your response: Humanity inches forward with each patent, yet jumps back when enourmous resources are poured into patent litigation. I wonder if alien worlds use IP rights to spur innovation.

              I can hear you vehemently pounding the keys of your keyboard with every word typed!

        1. Obama has appointed a number of Fed. Cir. judges that are hostile towards patents. And, Obama has appointed more judges that have no science background than judges that have a science background.

          Gee, I guess you can pretend that big international corporations aren’t the ones behind Lee, and the Google judges at the Fed. Cir., but that is not reality.

          1. Obama has appointed a number of Fed. Cir. judges that are hostile towards patents. And, Obama has appointed more judges that have no science background than judges that have a science background.

            Terrible terrible judges that don’t import limitations from the spec to save a bad claim and demand you put them in yourself.

            Not surprising considering one of the lawyers in this conversation has no intelligence or rationality background, but disappointing. Thanks Obama.

      2. Just want to point out that Judge Prost was appointed by George W. Bush and Judge Dyk was appointed by Bill Clinton (Judge O’Malley was appointed by President Obama).

        But let us all press on in our hyperbole and tin foil hattery.

        1. Except the majority of Fed. Cir. judges that Obama has appointed don’t have a science background. I think two had real patent law experience.

          And Google Lee had almost no prosecution experience but was appointed to manage 8,000 patent examiners.

          Ordinary, please be real. Obama is bowing to Google and the like.

          But, gee, you and MM are just so cute and clever at the gainsaying remarks. Keep up the good work. Your remarks are like Alice in that your remarks have no context and can be applied to any remark on any subject. Such a clever little squirrel.

      3. One skilled in the art knows that this is software/hardware/firmware, and would not interpret as anything else.

        Well… I completely agree that the fluidity of functionally equivalent technology should be respected for any particular element of the invention. But should that same fluidity apply to the statutory class?

        I think it’s entirely feasible to claim: “A (specific statutory class) comprising: (some element A), (some element B), and a data encryption module that encrypts the data,” and expect that any type of computational element that performs that function should suffice. But for the statutory class? Should an applicant be able to claim: “Any type of technology that performs the following function?” Most assertions of the “this could cover the human brain” argument are very poor straw-men, but it’s actually true here.

        1. Except the one skilled in the art in light of the spec would never include anything but a computer to implement the interface.

        2. The fact is David that the claim is written about the way people in software describe these things. That is reality.

          1. Night, I completely agree with you that it’s written as software people would write it. If I were describing this invention to a software developer, I’d use much the same language.

            But for better or worse, the courts have come down unanimously on the side of: software per se is not eligible – because it is neither a process, machine, manufacture, or composition.

            Should software per se be considered a patent-eligible process? Yes, absolutely – and maybe in 30 years, when the CAFC and SCOTUS are populated with people who’ve used software all their lives and don’t regard it as just a squidgy bit of information, the law will adapt. Law is always 30 years behind culture for exactly that reason, so this isn’t new.

            But today, we must acknowledge that there is uniform agreement among the courts that software is not eligible. Under that framework, a patent claim for “an interface” comprising a set of modules, all of which are discussed as probably software, is a claim to software per se. That’s the end of the story.

            1. Not really David. The invention is supposed to be described with what is new. I forget the cite for that but there are many and it used to be well settled law.

              Moreover, one skilled in the art of software would not see this as a claim to software per se, but to a machine that performs these functions whether or not they are written in software or a special purpose chip is used or ROM is used. That is the point. That the person doesn’t know how it is implemented and that portion of it in this case is not the invention.

              Frankly, David, I think they have you drinking the cool aid. This type of claim is what was encouraged as best practice 15 years ago because it left out what wasn’t the invention. Now we have ignorant fed. cir. judges that have no background in patent law or science that are using these types of arguments to limit patents in what is fairly characterized as judicial activism.

              That I am afraid is the end of the story for now. Google continues to purchase more judicial activism from Obama so I am sure it will continue to warp the patent system to whatever Google and the like want. A nightmare that is now the application of patent law.

              1. Night, claims to software per se weren’t even allowed 15 years ago.

                Consider the claims in patent no. 5,193,056 – those at issue in State Street Bank & Trust:

                1. A data processing system…

                4. A method as claimed in claim 3…

                Of course, State Street was the high-water mark of patent eligibility, and the entire court system has skewed terrifically more patentee-hostile – e.g., the concept of defining 112p6 claims strictly according to what’s in the specification is sheer whole-cloth with no statutory basis at all. But even in State Street, the CAFC felt compelled to state explicitly that:

                For purpose of our analysis, as noted above, claim 1 is directed to a machine programmed with the Hub and Spoke software.

                That is: even a “system” that could have been implemented entirely in software was presumed to include the hardware to execute it.

                1. >That is: even a “system” that could have been >implemented entirely in software was presumed to >include the hardware to execute it.

                  Right. And in this case one skilled in the art would include the hardware in a claim construction. Moreover, the accused product included the hardware.

                  The big picture is that what the court is doing is imposing the court’s way of thinking about information processing rather than one skilled in the art. (And, note this is from science illiterate and patent law illiterate people.)

                  And, in the big picture, an information processing machine is being claimed as in the interface–like a component of a machine. The court is turning claiming in a game rather than construing the claims properly.

                  This is against the fundamental principles of patent law that the inventor is best to describe the invention. Besides, what would it mean to claim pure software as an apparatus claim anyway? Any accused product is going to be tangible. You see why I am saying you are drinking their cool aid? In reality–that thing the court does not understand or even have a working knowledge of science or technology—the claim poses no problem at all and the claim is perfectly understandable by those that build information processing machines. And, there is no case where this claim causes any problems.

                  That is reality.

                2. And, David, let’s really try to get into reality. Tell me one case where this claim would cause problems in the actual practice of patent law—in reality.

                3. Because I noticed a lot of witch talk from the court and the commentators, but not one example of where this claim would cause any problems —- in reality.

                  (Just as in reality the word module conveys meaning to those skilled in the art, and just as in reality the ladders of abstraction are used to understand whether something is enabled or not, and I mean in the real engineering world where I was taught the ladders of abstraction and how to work up and down the ladders and know whether something was enabled or not.)

                4. This exchange reminds me of the usual banal rhetorical t001 of Malcolm’s – moving the goal posts of discussions to claims TOTALLY in the mind.

                  The obfuscation here is a simple one: to conflate the difference between software and the thought of software.

                  The deeper harm here is in allowing fundamental aspects of what software really is to be gamed by a propaganda crowd intent on removing the single largest forum of innovation today from the protection of law.

                  Software is a machine component (that is how it is defined), and it is a manufacture (by the hand of man).

                  Software is created for utilitarian purposes (and yes, it can have aspects of expression and creativity for which aspects other IP laws can come into play), but it is – and should be – without a doubt something for which the patent laws apply.

                  Lots of noise and smoke and mirrors here in attempts to distract, to conflate, to dissemble and to, in the final analysis, steal protection of that which the patent system is meant to protect: innovation of a utilitarian nature that BROADLY (think wide open gates) fits into one or more (think Chakrabarty) of the statutory categories.

                  The attempts to wield the “ato mic bo mb” of per se denial at the front gate is exactly the type of 101 wax nose mashing that Stevens warned of (that he himself attempted to do is not an irony lost)

                  There is nothing remotely approaching “marginally reasonable” in denying the basics of what software really is. In denying the equivalence of software with hardware (and with firmware), and in realizing that protection is afforded machine components in and of themselves as manufactures.

                5. Tell me one case where this claim would cause problems in the actual practice of patent law—in reality. I noticed a lot of witch talk from the court and the commentators, but not one example of where this claim would cause any problems — in reality.

                  Night and anon – I agree with both of you, 100%, that:

                  1) Software per se should be protectible as a “process” under 35 USC 101.

                  2) The capability of patenting software per se, without having to jump through the hoops that are being imposed, would promote the software industry much more than the copy-innovation-at-will wild-west territory that it is steadily becoming.

                  3) The sharp lines that are being drawn around software are an exercise in futility, given the fluidity of software and hardware – which everyone in this field should know, as it is a bedrock principle of computer science.

                  But there are two kinds of conversation that we can have here: those about what the law should be, and those about what the law is. Collectively, the members of this forum have scant power to change patent law, so the former conversation is not very productive.

                6. David Stein: The capability of patenting software per se, without having to jump through the hoops that are being imposed, would promote my legal business and would make it easier for me to make a downpayment on my vacation home

                  Fixed for accuracy.

                7. So MM constantly claims that we are on this blog to promote business and somehow he is a valiant knight. Sure. How about MM is paid by Google or another multinational to blog anti-patent propaganda.

                  Fixed MM’s statement for accuracy.

                  David, I think it is important to understand reality. My take on this case is that the judges are witch burners and now we must make sure to recite hardware or be in danger of being burned as a witch.

                8. David, I think it is important to understand reality. My take on this case is that the judges are witch burners and now we must make sure to recite hardware or be in danger of being burned as a witch.

                  Night – OK, let’s compare that with what you wrote earlier:

                  In this case (State Street Bank), one skilled in the art would include the hardware in a claim construction.

                  The difference between that high-water mark in State Street, and this case, is that we are now required to put into the claim… that which the courts already inferred in the claim.

                  Is it really that big a difference for new cases? Alice is a huge change… this case barely registers.

                  Of course, for previously filed cases, the challenge is more serious – but still manageable. Cases still in prosecution can be amended to put hardware into the claims (presuming the specification has even a nominal discussion of hardware… and every specification filed since Diehr should). Recently allowed cases need an RCE. Issued cases (if the family is closed) need a reissue, but since there’s no chance that taking a claim and inserting hardware can be construed as “broadening,” there’s no time limit.

                  So the only irreparable consequence of this case is AllVoice’s patent.

                  Now, you’re going to ask why the court thinks that all of this hoopla (nominally-narrowing-but-not-really claim amendments, RCEs, and reissues) is necessary. My answer is: it’s an empty gesture toward improving “patent quality” – full of sound and fury… signifying nothing. (But I’ll take empty gestures over inestimable damage from Alice any day.)

        3. Should an applicant be able to claim: “Any type of technology that performs the following function?”

          That’s the textbook abstract idea exception regardless of whether it is construed to only meet statutory classes.

      4. The claims should be read in view of the disclosure and in accordance with one skilled in the art. One skilled in the art knows that this is software/hardware/firmware, and would not interpret as anything else.

        Yes, but without importing limitations from the spec into the claims. If there was no limitation in the claim about having the program fixed in some nontransitory medium, then the claim includes just a pure intangible program within its scope. A single nonstatutory embodiment within a claim’s scope is sufficient to tank the claim.

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