Intellectual Ventures Software Patents Too Generic (i.e., Abstract)

by Dennis Crouch

On appeal, the Federal Circuit has affirmed that Intellectual Ventures’ asserted patent claims are invalid for lacking eligible subject matter. Intellectual Ventures v. Capital One (Fed. Cir. 2015) (Patent Nos. 8,083,137, 7,603,382, and 7,260,587).

The basic idea behind the patent ‘137 patent is to help users budget and then stick to their budget. Incredibly important task that many of us find quite challenging.  The court identified Claim 5 as representative.  That claim includes two steps: (1) storing a user profile with a set of categories – each with a pre-set budget limit; an (2) transmitting a summary of transactions for a category along with the pre-set budget limit.  Claim text:

5. A method comprising:

storing, in a database, a [user] profile … containing one or more user-selected categories to track transactions associated with said user identity, wherein individual user-selected categories include a user pre-set limit; and

causing communication, over a communication medium and to a receiving device, of transaction summary data in the database for at least one of the one or more user-selected categories, said transaction summary data containing said at least one user-selected category’s user pre-set limit.

In reading this claim in the context of Alice Corp., the Federal Circuit first found it directed to the abstract idea of “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting).”  In Alice Corp. step two, the court found no inventive concept: “it is clear that the claims contain no inventive concept. . . . Instructing one to ‘apply’ an abstract idea and reciting no more than generic computer elements performing generic computer tasks does not make an abstract idea patent eligible.”

The court similarly agreed that the claims of the ‘382 patent are also ineligible. Claim 1 provides:

A system for providing web pages accessed from a web site in a manner which presents the web pages tailored to an individual user, comprising:

an interactive interface configured to provide dynamic web site navigation data to the user, the interactive interface comprising:

a display depicting portions of the web site visited by the user as a function of the web site navigation data; and

a display depicting portions of the web site visited by the user as a function of the user’s personal characteristics.

Thus, the claim relates generally to a system for customizing information based upon information known about a user and also web-site navigation data (such a the time-of-day a site is being visited). With Alice Corp. step 1, the court agreed that the aforementioned gist is in fact an abstract idea because such information tailoring is “a fundamental . . . practice long prevalent in our system . . . .” Quoting Alice Corp. Regarding Alice Corp step 2, the court found no inventive concept.  Intellectual ventures had argued that its approach provided a dynamic and real-time application of the concepts — however, the court rejected that argument on its facts — finding that “the claims are not so limited.”

Of special concern for the patentees here is the claimed “interactive interface” configured to implement the method.  Intellectual Ventures argued that device provided an inventive application of the broader idea.  The Federal Circuit disagreed – finding that “nowhere does Intellectual Ventures assert that it invented an interactive interface …. Rather, the interactive interface limitation is a generic computer element.”

Intellectual Ventures third patent included claims with more substance, including a process of sorting, scanning, and organizing images obtained from hard copy prints.  However, those asserted claims were found not-infringed.

190 thoughts on “Intellectual Ventures Software Patents Too Generic (i.e., Abstract)

  1. 17

    Objective actual history is match for the “editorial controls.”

    Well, that may not be exactly true, but calling that playing card emblem of a dark inverted heart cleaved with a dagger something other than a spade does not in fact change that item into a heart, a diamond or a c1ub.

  2. 16

    We should all keep in mind that the holding is: software patent held unconstitutional.

    1. 16.1

      Anyone with a sense of care for the rule of law would (and should – even if just an academic), readily grasp that the Court itself would be acting unconstitutionally by violating the constitutional separation of powers to write that software patents are against the law.

  3. 15

    Ben Deere: Are you, MM suggesting that almost all database patents (Oracle, SAP), Credit card processing patents (Visa, Mastercard), Social Network patents (Facebook) etc. are now invalid?

    I haven’t looked at all the claims but most of them are probably deeply flawed. Credit card processing? Seriously? The rush of banksters into the patent game — immediately followed by hordes of bottom feeding patent attorneys looking to grift off the banks — was a sure sign that our patent system had been corrupted.

    With respect to Facebook, in particular, I think it’s safe to assume their portfolio is 99% pure junk. Nobody “invented” networking with other people and the use of the pre-existing Internet for that purpose (i.e., sharing information) has to be one of the most obvious developments in the history of human civilization.

    1. 15.1

      Because G-g-g-grifters.

      Or something.

      (Damm those people wanting to make money)

      /off sardonic bemusement

      1. 15.1.1

        people wanting to make money)

        Everybody wants some money. The grifters I’m referring to are people who already have money — tons of it — and want more. They just dont’ want to work for it. And why should they? They are the most important people who ever existed. How do we know that? They told us so! People who find their behavior disagreeable, well, they’re just jealous.

        LOL

        1. 15.1.1.1

          Is this the dubious dissembling dichotomy (again) about your obsession with “ultra rich” by attacking the form of innovation most widely accessible by everyone…?

          Funny how you never account for that disparity.

    2. 15.2

      has to be one of the most obvious developments

      Great – there is a section of law called 103 to deal with obviousness.

      Integrity-whhaaaat?

    3. 15.3

      ” I think it’s safe to assume their portfolio is 99% pure junk”.

      There you go folks. Any time during the day when you are troubled by something, just repeat this for a good laugh.

      1. 15.3.1

        Any time during the day when you are troubled by something, just repeat this for a good laugh.

        You want laughs? I got a million of ’em:

        8650497

        1. A computer-implemented method comprising:

        accessing object information associated with one or more social networking system objects;

        accessing information related to a question and a plurality of answers to the question;

        associating an answer with a social networking system object;

        receiving a request from a viewing user to view object information associated with the object associated with the answer, the question and the answer displayed in a first social networking system interface;

        in response to receiving the request, generating a second social networking system interface that comprises a display of the object information associated with the object associated with the answer, the second interface configured to be displayed within the first interface; and

        providing the second interface for display to the viewing user within the first interface.

        Complete unadulterated cr*pola. Here it is in plain English by the way, without the scrivening gobbgleydook: [T]he question and answer system allows users to pose a question or answer a question by linking a portion of the question or answer to an object in the social networking system or otherwise providing structured data. Then, in the display of the question and its answers, the user interface provides additional information about the objects. a question that asks people to state their favorite restaurant may be answered by users who tag the answers with pages or other objects associated with each restaurant in the answers. The user interface may display the answers along with additional information about the tagged objects, such as maps to each restaurant and a listing of other friends who have checked-in to that location. In this way, the user interface provides personalized social context about the question and its answers to each viewing user.

        Because nobody ever presented questions about objects to a group of people before the Internet. What a joke of a patent system.

    4. 15.4

      What about something more technical like operating systems (ios, Windows), or database processing (Oracle, SAP). Surley the technical aspects make these patent worthy? (Noted that some courts have said “technical” patents to printer output adjustments are not patentable, and color profile software are not patentable)

  4. 13

    In all seriousness, is Malcolm Mooney (MM) a full-time blogger? He posts on Patently-O with such frequency I find it hard to believe he has any occupation or job … a retiree? In fact, he’s so busy posting on Patently-O, I don’t see how he can have any knowledge on any of the things he writes about, since he doesn’t have time for anything else. Myself and others – I’m sure – are full time attorneys who deal with these legal issues day in and day out, and though our levels of expertise may vary, we do at least bring to this blog some real world experience. I don’t see how this MM person can say the same.

    1. 13.1

      Yes. He’ll vehemently deny it of course, but he is. And it is not just patently-o. He trolls around other patent-related websites as well.

    2. 13.2

      He also posts on other patent sites as well and uses sock puppets. He has been posting with this frequency for 11 years.

      1. 13.2.1

        His sockpuppet exploits were especially thrilling at PatentDocs, where Dr. Noonan through down a challenge to come into the light.

        But it is not really the amount of time or even the Beleib system that is most unsettling. It is instead the debauchery of how he goes about his propaganda: the relentless spin and manipulation of not just what the law is as written, but of what others post. He absolutely refuses to engage in a meaningful dialogue. It is not even that he uses as hominem, as that device can be effectively used while still being inte11ectually honest and not twisting things beyond recognition.

        It really isn’t all that much to ask for – to recognize when a valid point is made and to integrate that point in discussions going forward.

        Sadly, it is quite apparent that he had a different mission.

        1. 13.2.1.1

          I would be shocked if MM wasn’t being paid by the anti-patent lobbying groups. I think too that MM dominating this blog and being a paid anti-patent blog brings up all sorts of issues regarding this blog.

          1. 13.2.1.1.1

            ^^^ at the very least, perceptions abound.

            But hey, my advice – asked and delivered personally some three or four years ago was dutifully ignored. Then on the “ecosystem” thread we find out that Malcolm has been plying these very same short script C R P for nine years and running, and well, a rose by any other name and all.

          2. 13.2.1.1.2

            Absolutely. Unfortunately, the moderators, if they exist at all, don’t appreciate the detraction. I’m for all opinions to be heard, but he spoils the quality of discussion with excessive posting of low-information opinions.

            1. 13.2.1.1.2.1

              he spoils the quality of discussion with excessive posting of low-information opinions.

              I’m certain I’ve posted more high quality information here in the past six weeks then you have in the past six years.

              But, hey, enjoy your fantasy world! It’s really a pity there aren’t any other patent blogs out there where you can whine in your echo chamber all day long. How frightening that must be for you.

              1. 13.2.1.1.2.1.1

                The Red Queen has so decreed – in the usual AccuseOthersOfThatWhichMalcolmDoes meme at that.

                Go figure “folks” with optional [shrug] inserted here

              2. 13.2.1.1.2.1.2

                You again show how broken your logic unit is. If we assume that you post many information-rich posts (I don’t agree with that), that would not negate all of your diatribe, rant, and insult, that is constantly and repetitively posted. Because you might have some constructive things to say doesn’t justify filling this space with a bunch of other stuff that is noise.

                Another broken bit of logic: however much information I post is irrelevant. If I don’t post much here, or even if I don’t post much useful information, it has nothing to do with it. Whatever I do is irrelevant to the question of whether you post on this blog with such frequency and content that you in effect have turned this forum into your own personal platform for repeating the same message over and over and over (which you do). Fella, people who read Patently-O get it — you have certain opinions, and now everyone knows them. Why do you need to keep restating them multiple times per day? It’s a selfish use of a shared resource intended for exchange of information between many people.

                1. True dialogue just is NOT what is wanted from the propagandist.

                  What I have always asked for is the inte11ectual honesty to accept counterpoints made and integrate those counterpoints into the discussion.

                  This appears to be simply too much to ask.

        2. 13.2.1.2

          Ad hominems are always a fallacy. The thought that they are a “device [that] can be effectively used while still being inte11ectually honest and not twisting things beyond recognition” is beyond absurd.

          1. 13.2.1.2.1

            The “always a fallacy” is simply not correct.

            Methinks you should study the subject instead of just relying on your feelings.

            The “art field” of persuasion and rhetoric is thousands of years old. You should not depend on your level of ignorance (“ordinary”) and elevate that as some pinnacle of veracity. That would be absurd.

            1. 13.2.1.2.1.1

              How is it not correct? Again, your response is riddled with your favorite fallacy without any support. You should not be proud of your brand of “persuasion and rhetoric” based on the twin logical fallacies of ad hominem and strawmen.

              A person may make an argument. That person may have disfavored characteristics. However, it is false to say that their argument is wrong because of their disfavored characteristics.

              You might be successful of persuading laymen and moderately interested with that level of “persuasion and rhetoric.” However, such success is illusory because when someone make an ad hominem attack against you, those you could so easily persuade will easily be turned against you.

              A person is not ignorant because they will not be fooled by your fallacies. Quite the opposite, actually.

              1. 13.2.1.2.1.1.1

                It’s not context because that is how it is.

                I am not going to even attempt to teach you thousands of years of rhetorical theory when you have already convinced yourself of the supremacy of your “feelings.”

                You need to understand what ad hominem actually is and not rely on your feelings that it is only bad.

                As for ignorance, your own unwillingness to learn and far-to-easy labeling of me is a great example of what is truly ignorant.

                Own it with pride.

                1. It appears that you are upset that I am willing to correctly point out that the emperor has no clothes. And in your upset state, you are labeling my unwillingness to accept your threadbare pontificating as ignorance.

                  I understand what an ad homenim is and that is has no place in a rational discussion.

                  As for ignorance, your own unwillingness to learn and far-to-easy labeling of me is a great example of what is truly ignorant.

                2. The AccuseOthersOfWhatMalcolmDoes meme does not work for him.

                  Why do you think it will work any better for you?

                  (Hint: it won’t – you are still the one ignoring thousands of years of rhetorical knowledge)

                3. No, I am just parroting your silly statement to you so you know how ridiculous it sounds.

                  I do not accept your unsupported claim of “thousands of years of rhetorical knowledge.” Regardless, bloodletting also is part of thousands of years of medical knowledge, yet I do not accept it as an acceptable practice. (“Just because it is old doesn’t make it a classic.”)

                  BTW, we can add another fallacy to your mix.

                4. You can “parrot” all you want but all that you are doing is confirming the very thing that I am pointing out: you want to have your own rather limited feelings take the place of thousands of years of rhetorical learning.

                  Like I said: own your ignorance proudly. You wear it so well.

                5. I have provided multiple links providing in great detail why you are wrong. You have not provided any rebuttal except a weak appeal to tradition and a bald assertion that you are correct. I have provided you an opportunity to show that you you have a weak grasp on the principles of “persuasion and rhetoric.” You have more than adequately taken the opportunity and shown, for all to see, that you have a weak grasp on the principles of “persuasion and rhetoric.”

                6. Frankly OSitA, I haven’t bothered with your links because the words you have used have shown not an inkling of understanding of the topic.

                  Maybe try to fashion some small cognitive statement (and not just your Belieb-driven conclusion), and I might bother checking out your links.

                7. Further, your view of “weak” and my persuading you are NOT in any way an indicator of the veracity of the points I provide. The history of rhetoric is what I say, not because it is I that says it – I say it because that is what the history is. And this is not a mere “tradition,” logic (not sure where you got that thinking – clearly you have had NO formal training in this art.

        3. 13.2.1.3

          “anon” He absolutely refuses to engage in a meaningful dialogue.

          Oh, Lookie! Billy and Company are up to their old tricks again.

          Yes, let’s create a fantasy world where I never respond to his (or anyone else’s) super awesome arguments and where all my comments are simply falsehoods and propaganda. After all, no court — certainly not the Supreme Court or the Federal Circuit — has ever validated my plainly articulated views on subject matter eligibility, product-by-process claiming, inducing infringement, or a myriad other subjects. Nope! It never happened. At least not in Billy’s fantasy world.

          So go right ahead, Billy. Keep clicking the heels of your ruby slippers together. Congress is gearing up to re-institute State Street Bank because nothing is more important than your happiness. Golly, that sounds nice — it must be true, right?

          LOL

          1. 13.2.1.3.1

            Who is “Billy” and what are his tricks?

            Maybe you want to try those short declarative sentences you are always on about.

          2. 13.2.1.3.2

            Anyone who takes the time to read your posts should realize that you are a slippery eel that avoids any facts inconsistent with your agenda. Your m.o.: take someone’s comment with perhaps five assertions in it, find the least significant assertion and mock it (as well as the commentor), and ignore the most relevant point(s).

            1. 13.2.1.3.2.1

              Anyone who takes the time to read your posts should realize that you are a slippery eel that avoids any facts inconsistent with your agenda.

              Anyone who takes the time to read your posts should realize that you have nothing to say.

    3. 13.3

      If you are a fast typist or use Windows Speech to dictate (as I am at this moment) even long comments may take a matter of a minute or three.

      I don’t agree with MM on every last point, but he (or she) is doing valuable work for the lurking audience here, and I appreciate it.

      HierarchyOfPontificationBuckets, you are also being disingenuous (if you are not a sockpuppet anyway) to single out MM. You have been posting here at least as long as I have so you know both anon and NWPA post more words on more threads than MM does, and both are as rude and condescending (or worse) than MM is.

      In fact, we all are….the community on this site is generally not going to be a fun place for people who don’t like to argue or who can’t take or dish an insult…the stakes in the real-world are high and there is plenty of sporting interest in the game.

      PS, to consider MM as ‘anti-patent’ is a ridiculous strawman and the MOST basic tactic of bad-faith patent maximalists.

      1. 13.3.1

        LOL – except for the fact that he is anti-patent (as his “arguments” as they are, are not in fact “moored” to real law and real facts are instead merely Belieb driven).

        One big “Oops” for you there Mr. Snyder.

        1. 13.3.1.1

          the fact that he is anti-patent

          The funniest part about this inane and false statement is that even if I was “anti-patent” (and I’m not) … so what?

          “Anti-patent” people have a right to express and defend their opinions, just as patent worshippers like you have that right.

          1. 13.3.1.1.1

            Clearly you have not been paying attention Malcolm.

            Or perhaps you have and you are just doing your usual twist of what others say.

            I have no problem with the opinions – and every problem with the inte11ectually dishonest manner that you go about expressing that opinion.

            Nine years and running.

      2. 13.3.2

        To be honest, I suppose you are right about Mooney not being the only one. I guess those other folks (a) haven’t personally insulted me, and (b) don’t seem to be aggressively pushing a monothematic personal agenda under the pretense of commenting on Patently-O’s topical entries.

        Also, my personal experience with Mooney has been that he never directly addresses counterpoints that don’t fit with his agenda. He ignores them completely. For someone who apparently has no problem typing voluminously and frequently, he could at least have the decency to acknowledge when a valid counterpoint has been raised. He advocates his views to the point of intellectual dishonesty. In that regard, I think he is unique on this blog.

        1. 13.3.2.2

          Who has made reasonable counterpoints to MM’s central two arguments?

          1- no novel physical structure or mechanical/chemical change in matter=no patent.

          2- patenting information and logic has enabled a generation of rent-seeking grifters to delegitimize the patent system.

          Nobody that I have seen….

          1. 13.3.2.2.1

            Martin, point 2 is extremely important. The people who advocate extending patentable subject matter far beyond its constitutional and statutory roots have brought the patent system as a whole into disrepute and have substantially caused, if not exclusively caused, the current troll phenomena that Congress is so eager to address in ways that substantially harm the patent system as a whole.

            Yet these people, who advocate the patenting of junk, who bring the patent system as a whole into question, attack Malcolm and others like Malcolm, and as being anti-patent. It is quite clear to anybody with any sense of reality that the people who are tacking Malcolm for being anti-patent are themselves the reason for the problems in the patent system. They are the ones that are damaging the patent system, not Malcolm, who was only trying to bring common sense and rationality back into the system.

          2. 13.3.2.2.2

            Nobody that I have seen…

            You need to open your eyes.

            Your 1 is just the error and fallacy of taking one optional claim format and pretending that it is the only legal claim format.

            Your 2 is nothing but an unground Belieb statement – simply not tethered to law or facts.

            Quite in fact, driving by such Beliebs and usurping the proper statutory basis of patent law was the very topic of the article written by Judge O’Malley that Ned Heller himself provided.

            The ends do not justify the means.

            And Malcolm IS anti-patent – don’t be f001ed by the huckster Ned and his “6-must-be-an-Einstein-because-he-aligns-with-me.

            1. 13.3.2.2.2.1

              So MM won’t answer to your “optional claim format” doctrine ?

              Pray tell, exactly how does it relate to the words of Section 101 or meaningful cases ? What is it, and who else is discussing it? Or is it a private little thing between you and the voices?

              As to #2? You want to persuade out of my lived experience? Please proceed.

              1. 13.3.2.2.2.1.1

                Pray tell, exactly…

                Take a course in patent law. I am not here to teach you patent law basics and how the form of a claim intersects with each section of law.

                persuade out of [your] lived experience?

                Sorry, but I will have to decline that as well – if you are adamant about not learning, no one can persuade you otherwise. If you are not adamant, you already would have listened not only to me, but to your counsel as well (as you will recall that I have several times advised you to provide your counsel with your lack of understanding so that he (or she) may truly have informed consent. The adage I have used for others, fits you here and now: you can lead a horse to waters, but you cannot make him drink. I have led you to the waters of wisdom, the rest is up to you. To see, you have to unclench your eyes. You may not like what you see, but that is the way of reality.

  5. 12

    Since the courts’ use of “distilling the invention”, and looking for the “inventive kernel” is a backtrack to previously reversed legal rules, why not go a step further? Why not bring back the “synergism” rule? Ironically, it might actually help patentees, although not in this IV, I think.

    1. 12.1

      Since the courts’ use of “distilling the invention”, and looking for the “inventive kernel” is a backtrack to previously reversed legal rules

      Sorry, but 101 jurisprudence is not a “backtrack to previously reversed legal rules.”

      You either do not understand 101 jurisprudence or you don’t understand what those previously reversed rules were.

      And yes people have been whining like you are right now for years. Please stop. You’re not accomplishing anything.

      1. 12.1.1

        you don’t understand

        LOL – another classic AccuseOthersOfThatWhichMalcolmDoes.

        You just can’t help yourself, can you Malcolm?

      2. 12.1.2

        Why don’t you back that up with some proof, or know-it-alls don’t bother with that kind of thing?

        1. 12.1.2.1

          Why don’t you back that up with some proof, or know-it-alls don’t bother with that kind of thing?

          1) Alice specifically has a consideration of the limitations individually and as a group. The fact that the analysis places more weight on the disclosure that advances the art does not mean the other limitations aren’t considered.

          2) The “claim as a whole” language is generally used with a 102/103 analysis anyway. It wouldn’t be improper, for example, to say that a limitation which allows an embodiment to software per se inherently creates a 101 problem without considering how many statutory embodiments come from the other limitations and rest of the scope. 103 is a relative rejection (relative to the state of the art), some facets of 101 are an absolute rejection – there are different considerations.

      3. 12.1.3

        When I look at the writings and speeches of Judge Rich, he emphasises how the patent reform act of 1952 got rid of each judge defining what was or was not an invention and replaced it with 103. Under Alice will each judge have a different idea of what is ‘something more’?

        1. 12.1.3.1

          Slash, Judge Rich was a piece of work, lying through his teeth on a constant basis.

          Trying reading Hotchkiss. Then read Rich’s version of Hotchkiss. Then read Hotchkiss again. He gets the case backasswords. I think he knew better. But he was an all out propaganda machine.

          1. 12.1.3.1.1

            Some “propaganda machine there Ned – contributor to the Act of 1952 and most knowledgable patent judge ever…

            But wait, he does not align with Ned-IMHO law, so he must be “bad.”

            A corollary no doubt to the illness that is “6-is-an-Einstein-because-he-agrees-with-me” and the topical “just-enjoy-Malcolm’s-swagger.”

            Amazing Ned how you lose all sense of objectivity when it comes to your hallowed Beliebs.

      4. 12.1.4

        We are facing a paradox here. The statute requires a “whole contents” assessment, but there is a persistent tendency to ignore alleged “insignificant post-solution activity” in order to prevent intuitively undesirable decisions. This approach is actually inherited by Flook (June 22, 1978) from the German Federal Supreme Court Dispositionsprogramm decision (June 22, 1976) .

        Paradoxes have no answers. The solution is to identify the entire approach as incorrect. While patent claims enumerate features of inventions, every patent must relate to a single inventive thought (“unity of invention”), a single “trick” so to say.

        And then patents should not simply be considered a reward for brainwork. Patent law limitations are much better understood if patents are considered a means to obtain an exclusive right, as an exception to the fundamental freedom of competition if a capitalist society.

        In these cases there is no reason whatsoever to grant an exclusive right. Incidentally, the problems of to many privileges (exclusive rights) was already acknowledged in 1623 when the british government issued the “Statute of monopolies”.

        For further details please refer to my book “The Technology Criterion in Patent Law A controversial but indispensable requirement”, ISBN 978-90-5850-862-1, which contains a detailed comparson of patent law in the US and several European jurisdictions. Often problems are seen as political, but there are actually persistent systematic problems.

        1. 12.1.4.1

          Reinier,

          You are playing with kernels of truths again.

          Benson and Flook are bad law to the extent that they inject Judicial law writing into the statutory law base. Further, and for some reason that escapes reason, both of those cases were curbed by the Diehr decision – explicitly.

          Pundits, including academics who should know better, somehow continuously miss that.

          1. 12.1.4.1.1

            Still the “Flook” approach is applied, in particular the notion of “insignificant post-solution activity”, which was introduced by Flook AFAIK. Diehr contains a complicated argument why it is in step with Flook – but not everybody may be convinced!

            1. 12.1.4.1.1.1

              Flook has been constrained by Diehr.

              You kind of missed that point – it is just not something up for debate.

              1. 12.1.4.1.1.1.1

                Then “Diehr” is effectively ignored, since the idea of “insignificant post-solution activity (437 U.S. 584, 590, 98 S.Ct. 2522, 2525) is alive and kicking. In CLS v . Alice it was the computer implementation of the business method.

                Note that at the moment of the subject-matter test (101) novelty of (part of) the invention is immaterial.

                This paradox shows IMNHSO that something fundamental is wrong if an invention is seen as the sum of the parts. As so often, “the whole is greater than the sum of its parts”. This is actually explained in Diehr: “a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” (450 U.S. 175, 188, 101 S.Ct. 1048, 1058).

                1. Lots of things wrong Reinier – you haven’t been paying attention (including that in Alice both sides stipulated that the statutory category aspect of 101 was in fact met)

                2. (This is an answer to “Lots of things wrong”, sorry, the weblog software does not allow another level of indent).

                  Alices patent was rejected because the computer implementation was considered insufficient to make the “abstract idea” (of a trusted third party) sufficiently concrete to allow it to be patented. This is a “101” thing.

                  It is an extension of Bilski. The Blski business method (hedging) was considered too abstract, so Alice tried to make its business method more concrete by adding a (trivial) computer implemenation, but that trick did not work at the SCOTUS.

                  The computer implementation was effectively considered insignificant post-solution activity.

                3. The “Gist/Abstract” sword is a wonderful weapon – but perhaps you can tell me (in your academic wonders) the difference between statutory law and common law and where this wonderful weapon comes from…

                4. Is this an exam? In case law (common law) it was established that “abstract ideas, natural phenomena and laws of nature” are excluded from patentability (447 US 303, 206 USPQ 193).
                  I admit that excluding subject-matter due to abstractness is semantically not always entirely satisfactory, but in (present) US patent law subject-matter must be qualified under one of the three above categores in order to be excluded. So busin3ess methods like the Bilski method however concrete had to be qualified as abstract in order to be excluded.

                  The exclusions in Art. 52(2) EPC do have peers in US law, like the printed matter doctrine and the mental steps doctrine, which might occasionally have led to a more satisfactory explanation, but AFAIK these doctrines are hardly applied nowadays.

                  Business methods consist essentially of mental steps, with the addition that mental steps are only excluded if they can be excluded only by human beings (In re Prated II (56 CCPA 1381, 415 F.2d 1393, 162 USPQ 541).

                  Anything else you want to ask?

                5. It is not “anything else” as you have not answered my first question.

                  I know what common law is.
                  I know what statutory law is.

                  The point I am asking you about is the substitution of one for the other – especially in the U.S. Context that US patent law writing authority has been explicitly – and singularly – granted only to one branch of our government.

                  Watch the movie “The Paper Chase” (the original), and note the comment at the hour and six minute mark.

                  Once you actually address what I ask about, then we can see if I have further questions of you.

                6. I don’t quite onderstand the problem, and I definitely do not have the answer. My comments were based on the observation that consistently in US patent law “abstract ideas, laws of nature and natural phenomena” are excluded, not because the statute requires so, but for the reason that the courts have decided so, the U.S. Supreme Court in particular.

                  Whether courts are entitled to make law is a tought question for philosophers. I guess that in a common law tradition it is considered pretty normal. Germans get very nervous of courts make law. Because they lack democratic legitimation, they may only judge whether something is lawful = in conformance with the statutes including the constitution. In my country, The Netherlands, courts take an intermediate position.
                  This issue is so sensitive in Germany because the turbulent history of this country. And Germany is dominating in European patent law. The EPO Boards of Appeal are based in Germany, and there are tons of case law from the German Patent Court and the German Federal Supreme Court.

                7. It is clear that you don’t know the answer.

                  It is equally as clear that you need to know the answer – least wise if you want to comment on US Patent law since in our sovereign, the writing of that law has been expressly – and singularly – authorized only to one branch of the government.

                  As an academic, and one who has spent such considerable time with patent law, your “not quite understanding the problem” is unglaublich.

                  I suggest that you do not start with your desired end in mind in figuring this critical dimension of law out.

                8. It seems that you do know the answer, and only test my knowledge. That is not the purpose of these fora.

                  I disagree that I need to know the answer. Again, I start from the statute and case law (i.e. the opinions of the CAFC and the SCOTUS), like everybody does.

                  If you suggest that some branch of government acts beyond its authorization, I would be pleased to know. I am aware that there is an intricrate system but indeed I don’t know details – that are irrelevant to my observations. The approach in CLS v. Alice is clear, also in statements by othe people on this forum. If you regret that Alices patent is rejected (and do not work for Alice!), I am astonished. It is a very fine example of using business method patents for “legal extortion”. Alices website says that the purpose of this firm is patent litigation!

                  Incidentally, I am not German so you should not use German words to me. The Dutch word for “unglaublich” is “ongelooflijk” (for other readers: it means “unbelievable”).

                9. Reineir,

                  Your hubris is unending. You deign to tell me what language not to use, what the purpose of this fora is not to be?

                  That is not the purpose of these fora.

                  The purpose of these fora? So now, a conversation that serves to educate is not a purpose?

                  What IS the purpose of these fora?

                  What is the purpose of education?

                  What you start with is not the point, what others (who agree with your ends) may conclude is not the point – the point being that whatever you start with is already “irrelevant” because you already have a predetermined teleological end when you start. You are not pursing wisdom – you are pursuing your pre-determined goal and Belieb system.

                  I am astonished if you believe the discussion of law is limited to the single case of Alice and not the rule of law that will be used for all future fact patterns after the facts of Alice (and you can use any language you want – as long as you grasp the meaning).

                  What is this ”legal extortion” that you so easily fall back to? Yes, Reinier, your history comes into play here and your long standing Belieb system that ALL patents are “bad” shows through. Is that what this fora is for? For propaganda such as yours? “Extortion” is a hot-button word, but that same word in that same sense applies to ALL patents in ALL art fields.

                  In a very real sense, you make my case. The right answer is “irrelevant” – the details of the separation of powers and the fact that US patent law is strictly statutory law (not common law) is “irrelevant.” Leastwise, if the “teacher” wants to arrive at his lesson plan unburdened by any sense of “right answer.”

                  Pay no attention to that man behind the curtain.

                10. DEFINITION: “troll” = “One who posts a deliberately provocative message to a newsgroup or message board with the intention of causing maximum disruption and argument”.

                  Yawn.

                11. You spout a definition – as if it fits.

                  It does not.

                  Do you know who else argues? Lawyers.

                  Do you know what type of blog this is? One for lawyers.

                  Instead of addressing the points I provide, you want to merely retreat to name-calling. How nice of you to jump up on a soapbox, give your twisted point of view, and then claim “Tr011” if anyone points out your errors or challenges your views with what you deign to label as “irrelevant.”

                  I do not seek argument for argument’s sake. I seek for you to come to grips with the law that applies in the U.S. sovereign for this topic. I do not seek maximum discord – unless you view the possibility of your world view crashing down from its illusionary state “maximum discord.”

                  Somehow, you think that such as what I provide – an enlightening and robust dialogue – is not a goal of this fora, that such a dialogue is merely worthy of being labeled in a denigrating manner and dismissed. You show your true interests then in only wanting to speak and not to listen, You want a monologue, not a true dialogue. You want to be heard, but not to hear, let alone listen. No wonder you “yawn” you’ve said your piece and want nothing further.

                12. You are an effective troll – I still feel tempted to reacte!

                  You know the phrase “play the ball, not the man”. Yes, I make statements. you may explain to me that they are wrong AND WHY. That sould not be too difficult, since you aparently believe that I am insane.

                  Bu please do not attack me personnally, e.g. for my alleged lack of knowledge of US patent law or constitutional rules. No, I am not easily offended, in particuar by you, but it is sooooooooooooo boaring.

                  Killing the messenger is bad.

                13. There is nothing “alleged” about your lack of knowledge.

                  You show that you lack that knowledge.

                  Your option at that point is to learn or not.

                  Clearly, you are choosing not to learn and in addition to call names and try to disrupt the point placed in front of you.

                  Given your long history of anti-patent beliefs (and your admission of being an academic), you are clearly too invested in your belief structure to actually learn – especially something that would threaten your long-held beliefs.

                  All I did was point out that for the U.S. sovereign, our constitution has been explicit about which branch has authority to write patent law; and along with the separation of powers doctrine, it simply is NOT OK to take an attitude that the Supreme Court can use common law in the patent arena to change what the plain words of Congress say.

                  That you then hide what you are doing (merely monologuing your propaganda) behind some thinly veiled accusations is rather sad. Dialogue involves pushback – an yet you whine when the pushback shows the weakness of your views.

                  Not sure if you recognize how your last quip works against you…

                14. Frankly I am astonished that you use a forum normally used to excchange views to act so agrissively against me.

                  But at last you expplained your point. If I am correct, you argue that the judiciary may not diverge from the statute which was adopted by Congress. Frankly, this is a vasic problem every first year law student should understand. Centuries ago, French law philosophers believed that courts ought to be “la bouche de la loi”, i.e. “the mouth of law”, in a strict separation of powers. An then they found out that such a thing simply is not doable. Even Germans nowadays accept that. They are very nervous about courts “making law”, but at the same time they are aware that it is unavoidable to some extent. I don’t know about US procedural law, but in my country courts MUST decide. They cannot say: “this is too complicated for us”. In the German law doctrine, courts are only allowed “Rechtsforthbildung” = further development of the law.

                  I you believe that the Supreme Court made a mistake in establishing the rule that “abstract ideas, natural phenomena and law of nature” are no patentable subject-matter, I am ready to accept that as an outsider. Still my approach was to accept the more common view that such subject-matter is not patentable.

                  Incidentaly, as I said before, if you are so critical, you ought to reveal your real name, like I do. It is pretty coward to accuse me of everything under a pseudonym.
                  Are you Rochelle?

                15. Frankly my Reinier, I don’t give a damm.

                  French, German, first year – for all your preaching, you don’t know or worse don’t care about the basic and fundamental difference between statutory law and common law. You want to make it an excuse that you “just started with the common view” when you should know better than that. There is a difference between interpretation (what you may wish to call “MUST decide”) and writing the law using common law evolution. Frankly, I have to wonder what exactly is the discipline for which you are an academic, given your rather slipshod approach to law, I would say this is not your forte. Perhaps economics or maybe philosophy then…

                  As to “act aggressively” – check yourself my friend. Who exactly is the one using baseless words like “Tr011,” just because your propaganda is exposed for what it is?

                  As to “use your real name,,” with all due respect Foff. One lame tactic after another from you. Pseudonymous and anonymous posting has a long and valued history – you as an academic should be aware of that. It is entirely your choice to use your name – or not. By that choice, it is you that opens the “authority:” attempt at using your own published history. Here, of course, that works against you , because of your long history of being anti-patent. But make no mistake, MY choice not to use my real name is no sign of cowardice and definitely not the juvenile and quite frankly asinine “use” that you make it out to be.

                  As to your view of my “being critical” – what you may think as “aggressive” — grow a pair. I provided both rough language AND critical thinking, showing that once again (you have done this year over year) all that you are doing – and evidently all that you are interested in doing – is monolouging your propaganda. How dare anyone tell you that you have no clothes to your position (aghast) – this fora exhibiting critical evaluation and dialogue – how dare someone. To that end, my posting and my sharing my critical thinking need no moniker, leastwise my real identity. The labeling of a coward is a false one in this fora – the shame belongs to you.

                16. From your words, I gather that the difference between {interpreting) statutory law and common law is a very subtle thing. And it is particular to Anglo-American law, presumably different again in England and the U.S. If you believe that the courts exceeded their competence in excluding certain subject-matter, that is an interesting observation I was not aware of. Anyway, for simplicity I followed all the writings I read so far about this topic. And admittedly I did not read everything! But I have read enough to know that the exclusion of “abstract ideas, natural phenomena and laws of nature” is commonly taken as a given.

                  Let me add some more ignorance: in Gernaly there is a separate court for invalidity claims and infringement claims. The former decisions are made by the Federal Patent Court, the latter by the regular disctrict an appellate courts. So if someone is accused of infringement and believes that the patent he is accused to infringe is not valid at all, he must go to two courts. But there are exceptions, and that makes it complicated.

                  Yet another level of complication is EPO “case law”. The people on the EPO courts of appeal are not called judges, they are insufficiently independent to be considered. The proof is that the EPO is working on improving their independence. National courts still may invalidate EPO-granted patents. Still there is an interest that patent law is interpreted uniformly. Is there an obligation that national court follow the EPO, or at least each other? Yet another interesting topic. And it will be different again with the new Unified Patent Court.

                  But for reasons of clearity, I leave out arguments unneeded to arrive at certain conclusions. And I am happy to leave them to other people.

                  Re propganda, I basicallt argue that not everything under the sun (either made or not made by man) is patentable, which is really not a radical position.

                  For the rest, please calm down. Does it relieve to write such nasty texts? Othrerwise it may be bad for your heart. And although you are not my friend, I don’t like to kill you.

                17. Reiner,

                  It is more than a bit disingenuous to (continue) to ask me to calm down when you were the one that dipped into the baseless name-calling when your position’s weaknesses were exposed.

                  There is nothing “nasty” about forcibly shoving your own words back into your face. I notice that you haven’t bothered to retract any of your own nastiness.

                  As to your new tact here of German/EPO complications, I will remind you that I am discussing US law – and I will remind you please to respect the fact that our sovereign has chosen to set up out patent system in a particular way.

                  There is NO such thing (right now) of a global patent law. Patent law remains a sovereign law – even in the face of global treaties.

                  You have chosen to post with your name (as is entirely your right). I have no problem with that at all. By doing so, you wish to “bank” on some semblance of “authority” – and again, I do not have a problem with that. But it is you that needs to realize that such a move carries baggage with it. Your “sense of authority” carries with it your long history of writing and your “zeitgeist” of anti-patentism remains imbued in your posts here.

                  Please do not seek a “false modesty” of over-politeness to mask what is at its heart an attack on patents. Wearing a mask of “Smiling” while holding a knife behind your back IS being treated appropriately by me in this fora. You are fully allowed whatever equal or unequal level of enthusiasm in your replies. Let’s not try to shift the focus from the content of my replies (as you are doing – I note that you have not addressed any of the actual content I have provided, merely seeking to continue to post what you want to post, without recognizing the fallacies therein, and wanting to escape any critical review of those fallacies).

                18. I seems that you have identified me as an anti-patent person, which gives to a reason to be unpleasant to me.

                  But one doesn’t have to be “anti-patent” to recognize that there is an optimum level of patent protection, in order to achieve the constitutional purpose “[T]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to
                  their respective writings and discoveries”. The big question is what interpretation of the statute in practice leads to a best fit. This is so-called teleological interpretation. U.S. Courts established that excluding certain subject-matter is appropriate. Whether the judicially-created exlcusions serve the purpose of achieving an economic optimum is a question economists still struggle with. Patents DO NOT have the purpose to make their owners as rich as possible – there is US case law about that (and that purpose is contrary to the constitutional end).

                  Comparing law in other jurisdictions may not be as common in the US as it is in Europe, but it has a useful purpose for illustration.

                  Both in the US and Europe, patent applications (allegedly) consisting partially of non-patentable subject-matter cause interpretation problems, since they apparently require to abandon the general rule that patent applictions must be assessed “as a whole” in order not to het counter-intuitive results. It is this paradox that I focussed on in my PhD research. And I guess I found a solution that allows WW harmonization, which was the original topic of this forum, you remember?

                  If your argue that it is beyong the competence of US courts not to grant patents for certain subject-matter, that is interesting. But I am afraid that they will not stop doing so because you believe it is inappropriate.

                  Of course, you may address any other aspect you like, but is confusing to do so as a reply to my contributions. If I believe that ‘A’ is true and you believe that ‘B’ is true, we don’t have a debate. A debate requires that you disagree with what I said, but if that is true, it is unclear, to say the least.

                19. The optimum level is as much as possible while still meeting the rules as laid out by Congress.

                  This is NOT q scarcity mentality or a zero sum game – this is more I always better because more (meeting the Quid Pro Quo) ALWAYS has room for more.

                  This then is most definitely NOT an “interpretation” issue and the court has NO say as to what is an appropriate level. That is exactly why here in our sovereign the authority was expressly not given to the judiciary.

                  There is no room for word spin on this.

                  (And thank you for putting the strawman away of “as rich as possible” as that is something that no one but you is arguing. The patent is a negative right. Not a right to make money. If I wanted to sit on my patent and prevent everyone from using it for the term of the patent, that is my right.

                  Also, I am aware of comparative Justice and the t001 of comparing laws across different sovereigns. That works ONLY as long as you keep your eye on those differences that sovereigns have selected for themselves and that you respect those differences (sort of like I have already posted, but you deemed “irrelevant).

                  Your PhD research has become your hammer with you seeing everything as a nail. You are simply TOO invested in your animus behind your research, and you cannot get out of your own way in that you cannot see your own lack of objectivity. Plainly put – the “Wide World” harmonization is NOT a goal of current law, and is actually championed most by those who would usurp the patent system to their own ends: Big Intetnational Corporations.

                  Further, spare me the rhetorical trick of trying to paint my points as something merely “that I want.” That is merely more poor spin.

                20. And by the way, your “one does not have to be “anti-patent” spiel is a nice deflection because – by the body of your work – you are anti-patent. Unless you are repudiating, withdrawing, or correcting the large part of your life’s work, it is entirely fair to characterize your “zeitgeist” as anti-patent. I noticed that your carefully selected phrasing avoids having you own your work – the necessary baggage you get by choosing to post with your real name.

                21. I guess the porpuse of this blog is to discuss patent law matters, not the people who participate in this discussion!
                  So it is actually immaterial whether I am pro- or anti-patent.

                  You may be misguided by the fact that some of my writing were commissioned by people expecting a critical position towards patents. But then it is more helpful to write why I am wrong than to blame me for my “mentality”.

                  In law, some professionals have a unitaleral task: patent agents help their clients to get as many patents as possible, and attorneys help criminals to stay out of prison if possible.

                  From my perception, ultimately the objective of a lawyer is to find the right balance, so that the constitutional purpose is fulfilled. Incidentally, AFAIK the US Constitution is the only constitution that gives a reason for patents.

                  Economic literature clarifies that the assumption that the more patents the better is not tenable.

                22. I guess… porpuse… not the people…”!”… So it is actually immaterial…

                  You guesses wrong – and immensely so.
                  Funny too – YOU were the one the invoked the C R P whine of “post in your own name.” Funny, how the item you invoked is all of a sudden not “material” when the baggage that rightfully accompanies what you indicated is presented. I believe that you also used the name-calling of “coward” yet that is what fits you here.
                  Even in the same post, you retreat to the “imported authority” attempt with your reference to “economic literature.”

                  The problem my dear Reinier is that your anti-patent leanings VERY MUCH have pertinence to the discussion through your tactics, your words, and your incessant spin of what you present. I am not “misguided” in the least. In fact, this guidance brings clarity and context which HELPS the discussion. It is only a type of help that you don’t like that has you scrambling.
                  Of course, you then repeat your faults with a “from my perception” – which is naturally informed by the very thing that you want to hide. You attempt to spin with “right balance” all the while refusing to understand US patent law and the US constitution as it relates to US patent law.
                  The only balance you need to be concerned with is Quid Pro Quo.
                  The balance is decidedly NOT the spin of “Quid Pro Quo plus something additionally more to satisfy some weenie-liberal-anti-property-viewpoint”
                  When the critical balance is met, BOTH sides have achieved that which is desired and BOTH sides are enriched. That is the sum total of the game here. It then logically follows – as it must – that more of this reached balance can only be a good thing. There is NO “but the residual effect is a negative” in the actual balance. That is the liberal-weenie spin. That spin is rightfully identified and rejected.
                  Your perspective is tainted. My pointing that out is entirely on point and pertinent to the discussion. I note that you seem to want to “take cover” of claiming that your work was “commissioned” – but that you in fact do NOT disclaim the animus behind that work – and the FACT that that animus is STILL very much a contextual factor in the present discussion.
                  Do you know what inte11ectual honesty means? It is quite apparent that you do not. That too is important to ANY discussion. If you want to build castles without foundations, don’t get mad when I point out that you don’t have a foundation.

                23. What a lot of noise!
                  Yes, if you start a personal attack, it is appropriate that you do so in the open.

                  For the rest, I still do not here true on topic arguments . Do you believe that Intellectual Ventures Software Patents are not “too generic (i.e., abstract)”? Do you believe that this abstractness is irrelevant and that the Intellectual Ventures patents are valid beyond doubt? I only argued in the present debate that some patent applications really are too abstract. Which is not an extremist view. It is really the view of O Reilly v. Morse in 1853.

                  Incidentally I may not have been entirely clear on the wordk I wrote that was commissioned. It is inherent to the professions of lawyers (attorneys in particular) that they occasionally defend positions that are not necessarily theirs. An attorney defending a murderer is not approving murder, he/she only gives arguments – that must be strong enough to withstand scrutiny of professional critics.
                  Attackin the man instead of the ball (is that a saying in English too) is unsportsmanlike.

                  Anyway, it is a nice passtime to spoil you time with our eternal debate ;)

                24. Noise indeed – just not the type (or person) that you would wish to imply (the noise is yours – the signal, mine – you just don’t like what the clarity that the signal provides).

                  You have deflected once again – the point is not “attacking the man” – per se, but is understanding the man and where that man comes from (his animus) so as to place the rest of this discussion in context. Once again you attempt to ploy the “use your name” C R P at the same time you don’t want to accept the baggage that comes with it. Calling it “noise” does not make it so. My points remain very much concerned with the ball – US patent law and our sovereign’s Quid Pro Quo deal that is the measure of “balance.” You whine about “sportsmanship” while it is you that has descended into name-calling, and spin and NOT respecting the sovereign differences nor what constitutes the balance that the patent deal was written to bring forth, wanting a somehow-more than just the Quid Pro Quo.

                  You have been meticulous about not owning the animus which drives your “discussion points.” It is very clear as to why you do not want that context understood. I have asked multiple times whether or not you are willing to disclaim the animus present in your (plainly) anti-patent past. The fact remains that all you do each time I ask is kick up dust and avoid the direct question, refusing to take the opportunity to disclaim that animus. You want to whine about “unsportsmanlike” while you engage in dissembling half-truths, and then whine even louder when I point this out. You have no credibility trying to pass off such sentiments of “sportsmanship” in your attempt to not accept the baggage that you have created for yourself.

                  As to “abstract” – the definition you appear to want to use (generic) is NOT the definition as set forth by our Court – you miss the point here in some of the criticism of the Court in that they expressly do NOT define “abstract.” And let’s not hear the feeble excuse of “using popular opinion,” or “economists” (who have also shown no appreciation of US patent law or the US constitution in relation to patent law), or even Prof. Crouch’s short hand here (as it has been abundantly pointed out that that shorthand needs to be understood in context – context that you only too quickly dismiss as “immaterial.”

                  You also appear to tread into patent law terrain for which you do not understand the terrain and that “generic” is to a very real sense applied in over 95% of claims of any value – it’s called the ladders of abstraction and is present in all claims that rise above a very strict picture claim. Even the recent scuffle over chemical claims written in language of ranges uses (generic) in a sense that you appear to want to cloud.

                25. The essence is whether Intellectual Ventures’ patent applications are too abstract to be accepted. U.S. Patent Law excludes “abstract ideas”. Now one might say that every idea is abstract. It seems to me that there is not really a clear definition of an “abstract idea” in the legal sense. That is the decisive criterion.

                  How to proceed in interpreting this decision? A traditional legal approach is to consider lots of precedents. Another approach is to propose some criterion based on a personal political view (I guess that’s what you mean by “animus”). Yet another approach is what criterion best fulfills the constititional objective “”[t]o promote the progress of science and useful arts”.

                  I foster the approach last mentioned – not any political prejudice.

                  You refer to “quid pro quo”. This is not a statutory objective, nor an objective from case law. Furthermore, it is confusing. Some abstract ideas eventually are very useful. Like the idea to organize a shop as a supermarket. Still no patent was granted for this business method.

                  Now about my alleged anti-patent “animus”. Firstly, I urge you to focus on the content my arguments, wherever the come from. Secondly, my professors taught me that it is by no means appropriate to grant patents for any idea. Attorneys defending patent owners may say so, attorneys defending alleged patent infringers will say the opposite. It depends on the role of the attorney. Of course, attorneys must use relevant arguments, not their personal politicial preferences. The arguments should be sufficiently substantiated.

                  At the political (legislative) level, the problem is similar. Yes, I wrote some very critical writings on software patentability. That was my role at the time. I carefully chose my arguments – and disagreed with many anti-software-patent activists, some of whom advocated – IMHO – phony arguments. It is an intellectual challenge to find the proper arguments. At the political level, case law is irrelevant. It strikes me that many anti-patent activists use (IMHO) strange arguments like the “freedom of speech” argument.

                  It is no secret that in software patents there is a strong pro-patent lobby. I think that is appropriate to foster some anti-patent activism as well. That is a condition for finding a proper balance.

                  Anyway, qualifying a person (myself!) as anti-patent is simply a sign of prejudice. Let’s revert to the substantial arguments.

                26. Alas, Reiner, my reply was stricken.

                  Perhaps it is too much to maintain that you own the baggage that you have created and remain unrepentant of – baggage that informs your attempts at what you deign as “appropriate” and “condition for… proper balance,” when such is CLEARLY pertinent to the twists that must be made for your view to find any sense of “foundation.”

                  In truth, your views simply have no foundation in U.S. patent law.

                  The comment about ladders of abstraction was just too much truth to be left uncensored.

                  C’est la vie.

                27. You have run out of arguments, so you simply tell me that my views “have no foundation in U.S. patent law”. Ley me remind you that it Diamond v. Chakrabarty explicitly states that “The laws of nature, physical phenomena, and ab-stract ideas have been held not patentable.” (447 U.S. 303, 309, 100 S.Ct. 2204, 2208). It is still valid law: Intellectual Ventures patents were rejected due to abstractness. Given the fact that all inventions to some extent relate to ideas, and the fact that all ideas are somehow abstract, the level of abstractness matters very much. I guess (you haven’t said that!) that you are opposed against the rejection of these applications, so you must have a different opinion about those applications being overly absract.

                  Re “bagage”. Firstly, a professional lawyer is able to distinguish its own political opinion from an interpretation of the current law. I won’t compare myself with Supreme Court judges – but they often disappointed the presidents that noninated them by applying the present law instead of the political judgement that the presidents expected.

                  Yes, I supported anti-software-patent activists. As a citizen, I am allowed to participate in the policial process with my own opinion. But in the present legal debate I am not using political arguments! I guess you will disagree, but give me any solid argument! Incidentalley, I always rejected the view of some anti-software-patent activists that they did not need arguments but only a majority of votes to forbid software patents.

                  Well, let’s carry on this conversation forever. I learned many new English words from you, which is very useful. Many thanks for that!

        2. 12.1.4.2

          “The statute requires a “whole contents” assessment”

          What the frack are you talking about? Are you smoking something? Nothing in 101 says anything of the sort.

          1. 12.1.4.2.1

            Poor poor Ned still cannot grasp that the Act of 1952 made the Point of Novelty the claim as a whole – leastwise as that term is used in the 101 sense.

    2. 12.2

      H,

      If the alleged invention is abstract, why does one have summarize it in anything but a high level summary?

      I give you a very long an detailed mathematical algorithm and a computer. Why cannot I just say the alleged invention is a mathematical algorithm? The amount of detail in the algorithm does not make any difference whatsoever.

    3. 12.3

      HOPB Why not bring back the “synergism” rule?

      Demonstrating unexpected synergy remains a valid manner of proving non-obviousness. Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989)

  6. 11

    The anti-patent “voice” here needs a better spokesperson.

    Malcolm is simply far too much a hypocrite to be leading your cause.

    1. 11.1

      anti-patent

      I’m not anti-patent. A sane, functioning patent system is a useful tool for promoting progress in the useful arts. I’m all for that.

      I’m totally opposed to patenting information and logic and other abstractions, however.

      People tried their darndest to patent information very recently, as everyone knows. They were shut down in an extremely important and well-reasoned Supreme Court decision called Prometheus v. Mayo. Have you heard of it? In spite of that case, people continue to try to use the patent system to protect information.

      It’s 2015. Time to get over it, bottom feeders. We’ve been watching you, we’re watching you now, and we’re not going to stop watching you.

      1. 11.1.1

        Mere aggregation – and not the spin you want to give it.

        Maybe you want to be the very first to post a link to the USPTO take-away from that case?

        Oh wait, you already were.

        Too bad then that you did not bother to read what that link provided.

  7. 10

    sockie: The harder question (at least to all except MM and his Examiner followers) is what happens when we’re outside of that realm [“fundamental economic practices” building blocks of human ingenuity”]. The Fed. Cir., district courts, and PTAB don’t know.

    First: congratulations! You’ve correctly identified a gigantic realm of subject matter that is “abstract” correctly! Bravo! Truly some significant intellectual progress is being made here. For those keeping track:

    All information (factual or non-factual) is abstract. All claims that protect information — any kind of information in any context, no matter how specific or small — are ineligible.

    “New functionality” recited without the recitation of the novel objective physical structure for achieving that “new functionality” is abstract (of course, “new functionality” is also ineligible subject matter under a plain reading of the statute, just as “abstractions” are).

    Assigning “new” identifications/labels/properties to things (whether those things are abstract or not), without changing those things physically is abstract. This includes the use of old things to “symbolize” something new, and it also includes legal/quasi-legal properties of things (“copyrighted”, “public”, contractual obligations).

    Math is an abstraction, as are mathematical relationships between things.

    Methods of using old apparati and compositions like paper, a ball point pen, or a calculator to perform information processing tasks are abstract.

    Note: none of this is remotely “hard”.

    What appears “hard” to some people but isn’t really “hard” at all is how these fundamental and necessary restrictions on what is eligible for patenting affects the ability of a certain class of applicants to obtain enforceable claims to computerized methods of processing information. If you can add 2+2, you should be able to figure out the answer. That assumes, of course, that you want to know the correct answer. And that’s a big assumption these days.

    1. 10.2

      MM,

      What about transformations of bytes? Is software which transforms bytes as bytes, without regard for its information content, also an abstract idea?

      By ‘byte’ I mean an abstraction of the physical byte stored in the silicon on a computer. (Similarly to the way that ‘screw’ is an abstraction of a physical screw.)

      If you have a string of bytes in memory, then software which compresses the bytes to use less memory is surely a useful feature and very much tied to the physical world of the silicon which holds the bytes.

      1. 10.2.1

        software which compresses the bytes to use less memory is surely a useful feature

        Compression of information is older than the hills. Like many other “useful features” it was never eligible for patenting.

        1. 10.2.1.1

          That wasn’t the question that was posed. Is compression eligible? Assume for the sake of argument that compression is not known in the art.

          1. 10.2.1.1.1

            Please explain why compression isn’t eligible. Even under Alice it would improve the functioning of the computer and would be eligible.

          2. 10.2.1.1.2

            He won’t engage in that kind of on-point dialogue. He’s here to use the free and uncurrated forum as his personal soapbox.

            1. 10.2.1.1.2.1

              That is because (among other reasons) in the past when he has attempted to hold some level of dialogue, for example, with David Stein, Malcolm ends up volunteering admissions against his interests – like knowing and understanding the controlling law of the exceptions to the judicial doctrine of printed matter. Or that “configured to” is in fact – for the relevant art – structural language.

              These little things just get in the way of his screed.

          3. 10.2.1.1.3

            Is compression eligible? Assume for the sake of argument that compression is not known in the art.

            ROTFLMAO

            Should I assume we live on another planet, too?

            1. 10.2.1.1.3.1

              Thanks for not responding at all to the question. I think everyone here understands why you won’t answer. How is it that methods for improving the functioning of the computer (even if entirely related to information processing) or a network are ineligible to claim? According to Alice, these methods are squarely within the realm of eligibility.

        2. 10.2.1.2

          Hi Mm, I was unclear I think. Compression of course is ancient. What about a new method of compressing a string of bytes so they use less memory to hold the same information? In the claim I describe specifically a new way to transform the string of bytes into a different smaller string of bytes and how to transform it back. The new method is anew solution to an ancient problem. How is this not eligible?

          1. 10.2.1.2.1

            As contrasted with a new method of arranging screws in a package to take up less space. Why is arranging screws different from arranging bytes?

            1. 10.2.1.2.1.1

              Slash, there is a difference in math where the output is a number or series of numbers and something physical.

              I give you 1 + 1 = 2.

              Now, I ask you, how does this improve the disk drive?

              It doesn’t, does it?

              1. 10.2.1.2.1.1.1

                Nice then, Ned, when you realize that software is not math.

                Tell me (since you have never answered this question in an honest and straight forward manner, can you copyright math? (And no, do not move the goalposts and talk about a math book).

                Simple questions that you avoid at all costs scream so loudly that your monologues just cannot be heard.

                1. Again with the equivocation, Anon?

                  Instead of hiding under your equivocation umbrella, how about nailing down which meaning of “software” you want to discuss?

                  Math and software algorithms are comparable, and are not copyrightable.

                  Software source code is copyrightable, similarly to that math book you so desperately want to avoid.

                2. Your attempted spin is simply wrong, Dobu.

                  There is no equivocation in my position. None. I am not equivocating at all, as the plain fact of the matter is that software has multiple aspects providing different protections under the different IP laws. I am not using one meaning to avoid another, as aoftware has the multiple aspects. I am merely pointing out that items from one aspect inform the discussion on the other aspects.

                  Case directly on point is that software uses math. I have never said otherwise. But software is more than just math (as your non-grasp of the philosophy of MathS shows).

                  Software is no more “just math” as it is “just A ‘1’ – Ned’s fallacy.”

                  I “want to avoid” the math book discussion not because the math book discussion in any way detracts from my points, but because the math book discussion moves the goalposts and does not address the plain fact that software is more than just math.

                  You really need to come to the battle here prepared, my son.

                3. Anon,

                  Case directly on point is that software uses math.

                  Software is just an inanimate collection of steps and data. Attempting to claim it “uses” math is anthropomorphizing.

                  The software author uses math.

                  Mathematics is the manipulation of the meaningless symbols of a first-order language according to explicit, syntactical rules.
                  — Ernst Snapper, in Mathematics Magazine.

                  Your steadfast denial that software composition is exactly this activity is just willful blindness on your part.

                4. Dobu, your incorrect use of the word anthropomorphizing shows that you could not be more wrong.

                  You attempt to insert the “human” action, not I. You are the one not recognizing what software is. Much like you fail to truly grasp the philosophy of MathS.

                  You venture into a legal terrain that you are clueless about, and you don’t even know how to handle the t001s of the arguments you bring with you.

                  Software is NOT the act of authoring software. The manufacturer is not the manufacture.

                  You really have to up your game, son.

          2. 10.2.1.2.2

            Slash, there is a difference between claiming math and claiming a method of compressing data on a medium where the compressed medium is part of the claim.

            All you suggested in your question is that you wanted to claim a method of compressing data which, without more, is just math.

    2. 10.3

      MM: “All information (factual or non-factual) is abstract.”

      “Information and computation form the bedrock of the reality, say physicists who have used this idea to derive quantum mechanics”, as noted in the Physics arXiv Blog (medium[DOT]com/the-physics-arxiv-blog/how-quantum-mechanics-derives-from-a-revolutionary-new-theory-of-information-4487489dbb34″).

      Check out “Information Theory and Evolution”, by John Avery, and “The use of information theory in evolutionary biology”, by Adami, at MSU. Great stuff.

      Better yet, try “Chemical information theory: Structural aspects”, by Bonchev. Abstract: “Information is a concept of no less importance than matter or energy. Information has been described as a measure of the variety in a given system. We review several of the indices of molecular information, including those indices related to molecular composition, molecular symmetry, graph automorphism, graph coloring, and connectivity as measured by adjacency, path lengths, and cyclicity.”

      Here is something more at your level: “Is Information Fundamental?”, www[DOT]pbs[DOT]org/wgbh/nova/blogs/physics/2014/04/is-information-fundamental/ … “What if the fundamental “stuff” of the universe isn’t matter or energy, but information? That’s the idea some theorists are pursuing as they search for ever-more elegant and concise descriptions of the laws that govern our universe. Could our universe, in all its richness and diversity, really be just a bunch of bits? … To some theorists, though, information is more than just a description of our universe and the stuff in it: it is the most basic currency of existence, occupying what theorist Paul Davies terms the “ontological basement” of reality.”

      Of course, in the legal sense, you can call anything “abstract”, even information, since the word “abstract” has so little meaning. But your ignorance shines when you try to extend that legal absurdity into the real world, where information (and the math to work with it) is a real tool for solving real world problems.

      1. 10.3.1

        the word “abstract” has so little meaning

        It has plenty of meaning.

        you can call anything “abstract”, even information,

        LOL. “Even”? Information is quintessentially abstract. It’s also always been ineligible for patenting.

        Here is something more at your leve

        Here is something at your level: you are a whining crybaby. There is more pain coming. Get used to it.

        1. 10.3.1.1

          Here is something at your level: you are a whining crybaby.

          Says the site’s biggest whiner – bar none.

          So very Malcolm.

        2. 10.3.1.2

          Your talent at avoiding the main issue and latching onto minor points is unparalleled.

          So what about a reply to the point about information not being abstract? Huh? Waiting…

    3. 10.4

      Are you, MM suggesting that almost all database patents (Oracle, SAP), Credit card processing patents (Visa, Mastercard), Social Network patents (Facebook) etc. are now invalid?

  8. 9

    I have not been carefully keeping score, but has not IV by now had a near perfect string of not so intellectual ventures in suing folks from its massive vaults of patents?

  9. 8

    […] e-commerce market projected to grow 10 times by 2020, MIT alumnus Vishal Mehta say more… Intellectual Ventures Software Patents Too Generic (i.e., Abstract) | Patently-O – Patently-O Intellectual Ventures Software Patents Too Generic (i.e., Abstract) | Patently-OPatently-OOn […]

  10. 7

    Re the title: Intellectual Ventures Software Patents Too Generic (i.e., Abstract)

    I think there is a chance that some of the readers here will misunderstand what is going on. “Too generic” does not equal “abstract.” The CAFC (or at least certain sub-panels) correctly understands that a “more specific” description of abstract (or any other ineligible) subject matter will not help one avoid a subject matter eligibility problem.

    The classic example proving this fundamental point is a description of a claim whose only novel element is the communication or realization of some ineligible information, e.g., a measurable number. It doesn’t matter if the value appearing the claim is “greater than zero” or “8.3232321088”. Both claims are equally ineligible. If anyone doesn’t understand why this is necessarily the case, I’m happy to provide further examples and explanation.

    The reason that the term “generic” pops up in so many 101 cases is because the recitation of non-generic but otherwise eligible subject matter can, in fact, make all the difference between an ineligible claim and an eligible claim. To understand why this is, one must first understand that “non-generic” in this context means “non-obvious”. If your claim recites a non-obvious combination of existing computer components (structurally defined) then your eligibility problems are minimized (such non-obvious combinations are going to be very rare, of course, given that computation components nearly always do what they were designed to do in a predictable manner).

    To put it another way: if you can describe your “innovation” as “Use generic computer components to [insert information processing/storage/transmission steps here]” you are — at best — toeing the ineligible subject matter line, and there is a very good chance that your claim is going to be found ineligible (if not during examination, then during enforcement). Moreover, absent a complete re-write of the existing patent statutes, that is always going to be the case.

    1. 7.1

      It is not helpful for you to continually try to make the cases fit your wish 101 eligibility criteria.

      1. 7.1.1

        it is not helpful for you to continually try to make the cases fit your wish 101 eligibility criteria.

        It’s not helpful to you — that much we know.

        But it does help a lot of other people. Believe it or not, there are patent attorneys who have been paying attention to these issues for a long time.

        All this was predictable. In fact, it was predicted.

        You can keep your head buried in the sand, scream into your echo chamber, or you can open your ears and your mind and try to learn something. It’s your choice.

    2. 7.2

      And more dissembling round about the simple mere aggregation doctrine which wrecks the Malcolm spin of “[new thought]….

      You need a better short script Malcolm.

      1. 7.2.1

        more dissembling round about the simple mere aggregation doctrine which wrecks the Malcolm spin of “[new thought]….

        I’ve no idea what you are babbling about and I’m certain I’m not alone.

        1. 7.2.1.1

          …try to learn something…

          The Malcolm standard AccuseOthers blahblahblah strikes again in back to back comments to NW and myself.

          Classic Malcolm.

          What a chump.

  11. 6

    Has anyone else considered this: There is legislation that is working its way through Congress. Lee has admitted that 101 is a mess. Lee who is supposedly the Director of the PTO is not proposing ways to fix 101. I think that betrays Lee as not acting in the best interest of her position. Lee may be a Google executive past and likely future, but her responsibilities are supposed to be the U.S. Government and the people.

    She is clearly not acting in the interests of the U.S. of America. Please remove this thing Obama. Oh wait, you were paid too much to do that.

    1. 6.1

      I totally agree with you that it was the directors of the PTO that were largely remiss in not taking to the front to lead on this issue. 101 should have been statutorily sorted out before I got here, and it should have been done reasonably.

    1. 5.1

      They are also limited in scope

      Explicitly as used in that context, NOT a 101 issue.

      LOL – what was that about “integrity”…?

      1. 5.1.1

        It’s beyond weird that you would somehow find an excuse to rave about “integrity” in response to a straightforward comment about M+F claiming.

        My comment was intended as reply to Ken’s comment at 1.3. Apologies for any confusion.

        1. 5.1.1.1

          What is “beyond weird” is how you “seemingly” don’t recognize your own rampant lack of integrity.

          Nine years and running.

  12. 4

    No real patent attorney should be able to read this stuff without being outraged. This is so ridiculous. Alice is essentially no law. How can anyone doubt that Graham is overturned.

    The functional claiming nonsense of Williamson overturns Phillips or tries (fed. cir. vs. the SCOTUS.)

    Just outrageous stuff. Just remember boys and girls that we are 1/2 step away from being thrown in prison under these sorts of tests.

    Someone that has the time needs to deal with the reality that Graham has been overturned. The reason the Fed. Cir. hasn’t (note that Newman came close to discussing this) is that there is simply no justification for it other than ’cause.

    1. 4.1

      Note too that I am a guy that does this for a living. I write applications and do some licensing and some litigation. I work with real start-ups and real big corporations. I’ve worked for AMLAW 100 and the best IP boutiques.

      I see this stuff from the trenches. And, just as a practical matter of running through the process of advising a client on the patentability of an invention Alice overturns Graham. And Williamson overturns Phillips. That is just at the nuts and bolts level of trying to do my job. I am sure the fancy pants Lemley and Stern can put psychotic spins on this so that people that don’t know science and/or patent law will never understand what is going on, but —reality–this is crxp.

      1. 4.1.1

        As these type of cases are decided, in which a judge can characterize a claim and then simply label it abstract, it is apparent that are patent system is being gutted.

        To think that statutory interpretation of 101 has lead us here – it surely gives me pause.

        1. 4.1.1.1

          simply label it abstract

          The abstract subject matter here was not identified capriciously.

          Budgeting is abstract. Personalizing information is an abstract.

          There are no novel objective physical structures recited in the claims. There are no novel physical transformations of matter recited in the claims.

          These claims are junk and should never have been granted.

            1. 4.1.1.1.1.1

              Isn’t a car just locomotion, in the abstract?

              No, it’s not.

              But don’t take my word for it. Please make that awesome “argument” repeatedly to the CAFC and the Supreme Court and see how far it gets you and your cohorts. After all, you’ve had so much success to date sticking your head in the sand and screaming “NOBODY CAN UNDERSTAND AND OF THIS!!!”.

              1. 4.1.1.1.1.1.1

                You sound a little upset.

                These claims are junk because they should have been rejected under 102 or 103.

                1. “Whatever.”

                  The “great” ends-justify-the-means so-called critical thinking on display.

                  Nine years and running – insert optional [shrug] here.

                2. ROFL You sound a little upset.

                  Not at all.

                  These claims are junk because they should have been rejected under 102 or 103.

                  Or 101. It’s often the case that ineligible claims fail under all three statutes.

                  But congratulations: at least you aren’t defending the validity of this junk. That puts you a step ahead of the most deluded patent worshippers around here.

            2. 4.1.1.1.1.2

              Isn’t a car just locomotion, in the abstract?

              Really? The only manner you can posit locomotion is in the structures we refer to as cars?

          1. 4.1.1.1.2

            objective physical structure” is NOT a legal requirement.

            Once again, you seek to dissemble and make an issue the mere optional claim format as if it were the ONLY legal claim format.

            What was that about “integrity”…?

            1. 4.1.1.1.2.1

              Once again, you seek to dissemble and make an issue the mere optional claim format as if it were the ONLY legal claim format.

              There it is again, that “optional manner” type thinking rearing its head in ANOTHER post showing how rarely that “option” is valid.

              I found Waldo again.

              1. 4.1.1.1.2.1.1

                Woohoo gold star for you.

                Now if you could only see the legal issue underlying the concerns of these decisions, you might be able to hold an inte11ectually honest dialogue on the law as written by Congress.

                1. if you could only see the legal issue underlying the concerns of these decisions

                  By this you must mean YOUR concern, as Congress hasn’t evidenced a concern, they’re considering bills to not only keep this analysis but to help it to shift costs to this type of patentee. Nor is there a split amongst the Supremes on this. Nor does the Federal Circuit now even complain. In fact, even the parties here don’t advance the argument that there’s an issue.

                  So by concern you must mean that you and certain “inventors” who say “do what was done before but on a computer this time” have issues. That much I’ll buy.

                2. You are projecting and not getting my legal position correct.

                  The “but just automate it” is far more nuanced than your quip implies. “Just automate” is perfectly valid patent subject matter. It still must pass the rest of the laws but the point you in particular seem to keep on missing is the conflation and magic rewriting of the actual words of Congress that is happening. You appear quite oblivious to the real issue.

          2. 4.1.1.1.3

            I thought it was understood by my comment that I was not just speaking about this case. Nevertheless, I stand by my comment. The methodology of the Fed. Cir. and the Supreme Court is as I stated. While you can argue that the “Alice” case provides a legal basis for such a methodology – such a fact doesn’t change the truth of what I stated.

        2. 4.1.1.2

          To think that statutory interpretation of 101 has lead us here

          Why would you think that (serious question)?

          This is so clearly NOT a matter of statutory interpretation.

          1. 4.1.1.2.1

            anon, would you prefer a rule of what a statutory process IS, or, as here with “abstract,” what a statutory process IS NOT?

            Actually, of course, we do not have a “rule” at all. We have a nonce word, do we not? — a placeholder that is defined by example — the old common law way of developing the law.

            1. 4.1.1.2.1.1

              the old common law way

              Let me know when you realize the basic difference between statutory law and common law.

              I have already given you plenty of hints, and even a classic movie to watch (at the hour and six minute mark).

              Throw in O’Malley’s warning about having the wrong branch of the law making law from a reference you supplied, and maybe someday you will be able to have an inte11ectually honest discussion on the matter.

      2. 4.1.2

        “Note too that I am a guy that does this for a living. I write applications and do some licensing and some litigation.”

        How long till retirement brosef?

    2. 4.2

      Graham on its face only applies to a 103 analysis, and Alice did not answer any 103 question, so it’s hard to suggest Graham has been overturned.

    1. 3.1

      “Pro-patents…even lawyers…”

      Techrights needs a better script. Next thing you know, “IPR” will be some sort of pro-patent propaganda.

  13. 2

    This case is an easy abstract idea. This is a good quote though, especially in light of how applicants pretty much only have DDR to cite to when prosecuting against a 101 rejection –

    The patent at issue in DDR provided an Internet-based solution to solve a problem unique to the Internet that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequence of events after the click of a hyperlink advertisement.

    While I wouldn’t exactly characterize DDR this way, I do think (1) and (2) are necessary requirements for a valid claim. Foreclosing every manner of solving the problem by avoiding limitations as to the particular manner of achievement are the heart of a 101 rejection (and have quite a bit of bearing on 112).

    The court will eventually figure out that this in fact tracks the means requirement of 112f, i.e. the standard for not being overbroad under 101 and 112 will be the same standard for 112f; the claim must be limited to particular means and their equivalents. As I have said before, you cannot achieve a greater valid scope with less disclosure because you choose to avoid 112f. A disclosure supports the scope it supports – it doesn’t enlarge or shrink based upon the use of 112f.

    1. 2.1

      Agreed. The recent Fed. Cir. 101 cases have been slam dunks that aren’t controversial based on any sane reading of Alice (except to the patentees and the trolls holding similar patents).

      We need more cases tied to technology rather than broad business methods.

      1. 2.1.1

        “…based on any sane reading of Alice…”

        Actually some would consider it to be supreme irony (pun intended) that a case in which the court specifically declined to provide any guidance, hint, clue, analysis, test, etc. for determining what constitutes an “abstract idea” is being used as “binding precedent” to find claims ineligible for claiming an “abstract idea.”

        1. 2.1.1.1

          As any patent attorney knows, declining to limit something is not the same thing as not giving guidance. Any applicable abstract concept can be the first step of an Alice analysis.

          1. 2.1.1.1.1

            “Any applicable abstract concept can be the first step of an Alice analysis.”

            You funny. There is no “Alice analysis” as to what constitutes an “abstract idea” because, as we all read in the decision, the court declined to provide any other than, “We know an abstract idea when we see one.” I guess one could call that an “analysis” but it seems highly disingenuous to do so.

              1. 2.1.1.1.1.1.1

                Maybe if the Court gave that direction instead of what it actually did….

                D’oh!

                1. Maybe if the Court gave that direction instead of what it actually did…. D’oh!

                  Keep sticking your head in the sand if you like. Nobody can see you! And it makes you look really clever.

                  [shrugs]

                2. Maybe you want to pick something off of your short list that actually makes sense in your attempted reply Malcolm…

                  At least try just a little in your Tr011 responses.

              2. 2.1.1.1.1.1.2

                abstract – existing in thought or as an idea but not having a physical or concrete existence.

                Not really helpful.

                1. abstract – existing in thought or as an idea but not having a physical or concrete existence.

                  Not really helpful.

                  Because you don’t understand English?

                  It seems incredibly helpful to me and a lot of other intelligent and reasonable people who’ve been holding your hand for the last ten years and spelling it out for you.

                  But go ahead: “appeal appeal appeal!” your junky claims protecting abstract “innovations” and try to enforce them against us. You will lose.

                  [shrugs]

        2. 2.1.1.2

          It’s hard to argue that Alice doesn’t label “fundamental economic practices,” “building blocks of human ingenuity,” and the like as abstract ideas.

          The harder question (at least to all except MM and his Examiner followers) is what happens when we’re outside of that realm. The Fed. Cir., district courts, and PTAB don’t know.

          1. 2.1.1.2.1

            sockie: The harder question (at least to all except MM and his Examiner followers) is what happens when we’re outside of that realm [“fundamental economic practices” building blocks of human ingenuity”]. The Fed. Cir., district courts, and PTAB don’t know.

            First: congratulations! You’ve correctly identified a gigantic realm of subject matter that is “abstract” correctly! Bravo! Truly some significant intellectual progress is being made here. For those keeping track:

            All information (factual or non-factual) is abstract. All claims that protect information — any kind of information in any context, no matter how specific or small — are ineligible.

            “New functionality” recited without the recitation of the novel objective physical structure for achieving that “new functionality” is abstract (of course, “new functionality” is also ineligible subject matter under a plain reading of the statute, just as “abstractions” are).

            Assigning “new” identifications/labels/properties to things (whether those things are abstract or not), without changing those things physically is abstract. This includes the use of old things to “symbolize” something new, and it also includes legal/quasi-legal properties of things (“copyrighted”, “public”, contractual obligations).

            Math is an abstraction, as are mathematical relationships between things.

            Methods of using old apparati and compositions like paper, a ball point pen, or a calculator to perform information processing tasks are abstract.

            Note: none of this is remotely “hard”.

            What appears “hard” to some people but isn’t really “hard” at all is how these fundamental and necessary restrictions on what is eligible for patenting affects the ability of a certain class of applicants to obtain enforceable claims to computerized methods of processing information. If you can add 2+2, you should be able to figure out the answer. That assumes, of course, that you want to know the correct answer. And that’s a big assumption these days.

            1. 2.1.1.2.1.1

              MM: “New functionality” recited without the recitation of the novel objective physical structure for achieving that “new functionality” is abstract (of course, “new functionality” is also ineligible subject matter under a plain reading of the statute, just as “abstractions” are).

              This got me to thinking about Diehr. Had the claims simply said, “use a programmed computer to constantly update the time to open the mold,” the claim would’ve been functional at the point-of-novelty.

              In the Diehr, however, the claim specifically required the use of thermocouples to measure the temperature inside the mold. This “new” structure plus the programmed computer appeared to be sufficient for 101 purposes.

              However, the Supreme Court did not focus on this new structure so we can only hypothesize at this point in time as the whether adding a programmed computer without new structure is sufficient, or where the programming itself provides an improved molding process, and the novel algorithmic steps are claimed.

    2. 2.2

      necessary requirements for a valid claim

      Lots of things are necessary for a valid claim outside of 101.

      That is kind of the point in NOT conflating 101 with 102/103/112.

      And despite the Court itself rejecting a call for conflation, that also is exactly what is going on in the continued massacre of the words of Congress.

        1. 2.2.1.1

          Departure under “routine and conventional” is not a 101 issue – see post 3.2.1.

    3. 2.3

      “As I have said before, you cannot achieve a greater valid scope with less disclosure because you choose to avoid 112f. A disclosure supports the scope it supports – it doesn’t enlarge or shrink based upon the use of 112f.”

      This would seem to support wider use of M+F claiming in general. If it basically just says “whatever I disclosed here that can do X…”, you at least get the benefit of 1) ensuring that you don’t leave any disclosed scope “on the table” as it were (including the fact that “equivalents” are guaranteed via statute and not dependent on the DOE…potentially making it easier to avoid Festo as well as the public dedication doctrine?); and 2) making your competitors have to work somewhat harder (i.e. analyze your whole spec) to figure our what your scope actually is.

      The counter-argument for decades was that you can get broader scope by using quasi-functional language, but if that’s not really so anymore…

    4. 2.4

      I am not a fan of the notion that you can convert ineligible matter to eligible, simply by adding more specificity. By American clients, I am routinely instructed to respond to 103 objections under the EPC by adding more specificity to the claim. It does not convince. Why should it be any more convincing under 101?

      1. 2.4.1

        Max, look at 1.1.1.2.1.1 for a moment.

        When one move beyond claiming a result, and adds specific steps, perhaps that might be sufficient.

        1. 2.4.1.1

          Not so per Alice, Ned.

          As I pointed out to you, both sides stipulated that the claim was to a “objective physical” thing.

          The Supremes waived their magic wand and “Gisted” that away though. Like magic, they removed even the requirement of a statutory category with their (unlimited) sword.

  14. 1

    This case is pretty boring – easy abstract idea. This is a good quote though, especially in light of how applicants pretty much only have DDR to cite to when prosecuting against a 101 rejection –

    The patent at issue in DDR provided an Internet-based solution to solve a problem unique to the Internet that (1) did not foreclose other ways of solving the problem, and (2) recited a specific series of steps that resulted in a departure from the routine and conventional sequence of events after the click of a hyperlink advertisement.

    While I wouldn’t exactly characterize DDR this way, I do think (1) and (2) are necessary requirements for a valid claim. Foreclosing every manner of solving the problem by avoiding limitations as to the particular manner of achievement are the heart of a 101 rejection (and have quite a bit of bearing on 112).

    The court will eventually figure out that this in fact tracks the means requirement of 112f, i.e. the standard for not being overbroad under 101 and 112 will be the same standard for 112f; the claim must be limited to particular means and their equivalents. As I have said before, you cannot achieve a greater valid scope with less disclosure because you choose to avoid 112f. A disclosure supports the scope it supports – it doesn’t enlarge or shrink based upon the use of 112f.

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