Sensor Based Motion Tracking System Ineligible under Section 101

Thales Visionix v. USA and Elbit Systems (Ct. Fed. Clm. 2015).

Suing the government is always an interesting proposition because it is government-employed judges who decide whether or not the government is liable. In the U.S. claims of patent infringement against the Federal Government (or its contractors, typically) are brought in the Court of Federal Claims (CFC).

Here, Thales sued the Government and its contractor Elbit systems for infringing its U.S. Patent No. 6,474,159 used to track the relative motion between two moving objects. The allegation is that the invention is used in F-35 helmet-mounted displays – when the pilot turns his head, the relative tracking system shifts the display information.

The ‘159 patent is expressly directed to “cockpit helmet-tracking,” although it is not expressly limited to those applications. See Claim 1:

1. A system for tracking the motion of an object relative to a moving reference frame, comprising:

a first inertial sensor mounted on the tracked object;

a second inertial sensor mounted on the moving reference frame; and

an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

Reading claim 1, you’ll note the requirement of two sensors physically mounted upon two different objects as well as a signal receiver configured to receive data and compute the relative orientations. Further claims define the types of sensors as well as mechanisms for computation.

In the lawsuit, the United States Government raised the defense that the patent lacks subject matter eligibility – as impermissibly directed to an abstract idea. In its opinion, the CFC agrees;

Here, the Court … finds that TVI fails the first prong of the Alice analysis because the independent claims of the ‘159 Patent are directed to mathematical equations for determining the relative position of a moving object to a moving reference frame. Derived from Newtonian principles of motion and “borrowing the mathematics that an inertial navigation system uses to track an airplane relative to a rotating earth”, the navigation equation is undoubtedly a complex mathematical concept, and a solution to the problem of tracking two moving objects in relation to each other. However, the Court finds that this concept is a “building block of human ingenuity”, and the solution lies in the mathematical formulae, not the generic devices listed in the system claim. Accordingly, TVI’s claims fail the first prong of the Alice analysis because the claims are directed to the abstract idea of tracking two moving objects, and incorporate laws of nature governing motion, both of which are ineligible for patent protection.

[Regarding Alice Step 2] the system claim fails to transform the method claim into a patent-eligible invention. The plain language of Claim 1 describes generic, fungible inertial sensors that admittedly have already gained “widespread acceptance” in the field of motion tracking. Like the computer elements in Alice, these inertial trackers, when considered as an ordered combination in the claimed system, add nothing transformative to the patent. Although the concept of tracking the motion of a moving object relative to a moving reference frame may have been novel and nonobvious, the claimed system does nothing to ground this abstract idea in a specific way. The claims allow for the application of the navigation equation in almost endless environments, and are not limited to a fighter jet and a pilot’s helmet. . . .

Ultimately, the concern that drives the exclusionary exceptions for abstract ideas and laws of nature from § 101 eligibility “[i]s one of pre-emption.” Alice. The Court finds that the scope of the subject patent’s claims is insufficiently limited under the holdings of Mayo and Diehr, and if the patent were considered to protect eligible subject matter, it would pre-empt the use of the underlying abstract idea of relative motion tracking by others in the field. The patent’s ineligibility is confirmed by the machine-or-transformation test, under which the claims are not tied to any specific machine and do not transform the nature of the patent into something more than the abstract mathematics behind it. At its core, the patent is seeking protection for the mathematical formulae used in determining the relative orientation of two moving objects. The Court is unwilling to afford patent protection to Plaintiff’s claim on this building block of motion tracking technology.

101 – Read the Court Decision.

359 thoughts on “Sensor Based Motion Tracking System Ineligible under Section 101

  1. 28

    Do have a look at claim 22:

    22. A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame.

    In my youth we used to call this a “free beer” claim.

    There may be some maths in the written description, but precious little evidence in the claim.

    If there is a discovery, or some surprising and unusual result, in claim 22 then it is indeed well hidden.

    1. 28.1

      Paul, agreed. The claim is so broadly written as to include all mathematical formulae for computing the desired result that is claimed — which is actually a WORSE problem than preempting the specific math disclosed.

    2. 28.2

      Paul do you think that readers will cotton on to the reason why such claims are called free beer claims? As I understand it, free beer is a desirable result, but one which is, without explanation, impossible to realise. There is no such thing as a free lunch. If, by contrast, there is free beer then it does need explaining (in the claim) how it is delivered.

      Here, I offered a defence of the claim, that the invention lies in a flash of inspiration that two sensors could be stacked. As it happens, that insight was old. But what if it had been new?

      1. 28.2.1

        @ Max Drei

        It was my great pleasure to see free beer once in my life, and to see a phrase that we had long used in relation to a particular kind of claim turn into practical reality.

        As I remember the beer was Murphy’s Irish Stout which had just been launched. As part of the launch, the brewers were giving away bottles of the product in the hope that those who had tried it would like it and buy more. The offering was immensely popular, as you would expect, and there were long queues.

        Claim 22 gives away a result but pays nothing in terms of technical features that achieve that result. A something for nothing claim whose only technical features are two known sensors mounted on different articles. There may have been a perfectly wonderful invention in this specification but this claim wasn’t it (Apologies to Groucho Marx).

        1. 28.2.1.1

          Thanks Paul. Bottles of beer given away free would of course be immensely popular, as are free beer claims. But the flow of free beer soon stops, as should the flow of free beer claims.

          Are you just a bit uncomfortable with using the eligibility tool to strike down a claim that recites a less than sufficient number of technical features. I personally prefer the way the EPO deals with such claims (as old, obvious or indefinite).

          BTW, I take it that you are not suggesting that the delivered technical effect has to be recited in the claim.

  2. 27

    If I understand correctly, it seems that an electronic device/arrangement is now ineligible subject matter if you accidentally mention in the claim that it is configured to carry out some function (which presumably is programmed, which presumably involves mathematics of some sort).

    Glad I’ve got that cleared up.

    1. 27.1

      Ely, is that your interpretation? Really? Come on now.

      But seriously, if that is your conclusion, and this is not a joke, please just say so. I am truly puzzled that people can come to this conclusion.

      1. 27.1.1

        Ned,

        You have two sensors located in specific different physical locations and performing functions.

        Please provide me any robotic assembly which you can’t use the same logic as the court to say that it is patent ineligible subject matter.

        The problem with the claim is that it should be found unpatentable for being too broad in view of known prior art, but to say that it is ineligible under 101?

        Ely

        1. 27.1.1.1

          Ned,

          I’m still aghast at this decision so I’m going to vent a little more.

          1. Every single object in the world electronic or purely mechanical works in accordance to the laws of nature.

          2. Every single object in the world is made of known common physical components (even a new material or drug is just a combination of known molecules or elements).

          3. Looking at the court excerpt above:
          “the independent claims of the ‘159 Patent are directed to mathematical equations” => please point out to me the equation in claim 1.
          “Derived from Newtonian principles of motion and “borrowing the mathematics that an inertial navigation system uses to track an airplane relative to a rotating earth” => the merriam webster definition of “engineering” is “the application of science and mathematics by which the properties of matter and the sources of energy in nature are made useful to people”.

          “the Court finds that this concept is a “building block of human ingenuity” => The only meaning I can derive from this statement is that they mean it is not novel.

          “and the solution lies in the mathematical formulae, not the generic devices listed in the system claim.” => what device isn’t made of generic components, if you look closely enough?

          Basically all the arguments are just that the claim is too broad – but this should have been easily proven by bringing prior art.

          Let me know why you disagree.

          1. 27.1.1.1.1

            Ely, the court actually said that the math was actually claimed in claim 22 which is also an independent claim.

            The apparatus claim actually does not claim math, and claims a result which is worse. See Rubber-Tip Pencil

        2. 27.1.1.2

          The sensors are eligible, so was the computer in Benson, so were the pencil and rubber piece in Rubber-Tip Pencil.

          The courts are not saying these are not eligible. The court is saying rather that invention must be in eligible subject matter.

          Now the court construed the “element” elements as covering mathematical formulae. These are not eligible. But this, it appears, was the sole invention in the claims.

          So we had Mayo again. Sensors providing data that is input to a calculation. The claim then stops.

          There is no specific application or machine claimed to use the calculation. Therein lies the problem.

          1. 27.1.1.2.1

            Again C R P Ned – You ignore what is really going on with the “Gist/Abstract” sword and your anti-nominalism is nothing more than Wax of Nose anti-constitutionalism.

            BOTH sides in Alice stipulated that the statutory category aspect was met. The Court waved that away and made it disappear.

  3. 26

    Somewhere in this thread anon is asserting that, when it comes to eligibility/patentability, there is a key difference between “math” and “applied math”. I don’t see it. Rather, I see no reason to disbar pure mathematicians as inventors.

    Suppose a number theorist one day has an insight that his pure math could be useful in cryptography. That leads to a good claim in the field of cryptography, which ought to make its inventor a lot of money. Are we to dub the field in which the inventor is working “applied mathematics”? Or are we to say that it doesn’t matter to patentability whether the mathematics underpinning the exhortation “Apply it” are pure mathematics or applied mathematics?

    In other words, when it comes to “Apply it” must it be applied math that one applies, or can it also be pure math?

    Anybody care to comment constructively?

    1. 26.1

      Of course you don’t see it.

      Open your eyes – that’s the best constructive advice you will get – from anyone.

    2. 26.2

      One thing that you don’t see because you are purposefully closing your eyes is that I have always maintained the difference between eligibility and patentability.

      Your not-so-subtle conflation happens to echo the Malcolm “whatever” mantra.

      You should (constructively) take note that those positions clarifying the law are always better than those positions that conflate the law.

    3. 26.3

      Max, LE ROY ET AL. v. TATHAM ET AL., 55 U.S. 156, 14 L. Ed. 367 (1852). link to scholar.google.com?
      case=9195622383669422745&q=le+roy+v.+tatham&hl=en&as_sdt=2006

      Claiming math without an application is the same as claiming an idea without a practical means for implementing it.

      The basic distinction hear came out of England in the cases cited by the Supreme Court in Le Roy and can be found in Webster’s patent cases — describing English patent cases.

      1. 26.3.1

        Well yes Ned. Answering that question isn’t that difficult for the courts is it? Article 52 of the EPC declares “mathematical methods” as such to be ineligible. Who could argue with that? My point was that the math that you apply (to generate eligible subject matter) does not have to be applied math but could also be pure math.

        1. 26.3.1.1

          Your “point” MaxDrei evidences a basic misunderstanding of what math and applied math mean.

          There is no such thing as “pure math applied.”

          1. 26.3.1.1.1

            The misunderstanding on my part is not of the difference between pure and applied math but, rather of what you wrote earlier in this thread.

            You see, all that I have to go on, as to what you are thinking when you type your contributions, are the words that appear on my Screen.

            I hope we can agree on the trite propositions that i) a mathematical method, as such, is not eligible for patents, whether in the USA or in Europe, ii) any eligibility lies in the application of the said method and iii) it doesn’t matter what sort of math is found in the said method, because no sort of math is excluded.

            1. 26.3.1.1.1.1

              Your inclusion of “as such” has NOTHING to do with my words on your screen.

              No MaxDrei, the lack of understanding is not from my end.

              What is trite is your attempted differentiation between pure math and applied math and somehow thinking that one can apply pure math, and have it remain pure math.

              You need to work on the basics, like the difference between pure math and applied math.

  4. 25

    So again, non-reality. In information processing, functional claiming is used to represent a set of solutions. Period. There is no dispute about this with scientist.

    What has happened? Judicial activist have intentionally misrepresented this fact to harken back to old SCOTUS case law before the 1952 Act.

    The shameless disingenuous behavior from the anti-patent crowd is endless.

    (And, my disingenuous friends, please try to dispute the fact above and not write some giant post of smoke.)

    (But wait, there’s more—module is now a nonce word ’cause them there spanking new Fed. Cir. Google purchased judges say it is. And the sun goes around the earth and if you say differently we’ll burn you at the stake.)

    1. 25.1

      link to bbc.com

      This is really getting outrageous. These scientist need to be taught that these machines are just abstractions and that any generic computer can do anything any computer can do.

      Sheesh. The scientist don’t read the pronouncements made by the God-like 9 and the Google purchased Fed. Cir. judges.

      In other news, the programmers are in danger of being burned at the stake for continuing to use the world “module” to convey structure and to have a meaning. The Fed. Cir. issued a warning to programmers that they have proclaimed that “module” conveys no structure and the continued use of “module” by programmers may result in stake burnings. The Fed. Cir. has asked the DOJ to collect the names of the programmers so that they can burn a few as examples.

  5. 24

    Where does one appeal CFC decisions? SCOTUS or Fed. Cir.? Just curious to see if we will see this case appealed, and if so where, or if this is essentially the end of the case.

    1. 24.2

      Sec. 1295. Jurisdiction of the United States Court of Appeals for the Federal Circuit

      (a) The United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction—

      (3) of an appeal from a final decision of the United States Court of Federal Claims;

  6. 23

    There once was a body of 103 law designed to protect patent owners/applicants against the unfairness of hindsight opinions, intuitive rejections/invalidations, lack of rigorous analysis, and basic procedural fairness. Because often things look obvious after-the-fact. And, everything new is made of old stuff but put together or modified in a new way.

    The New 103 Jurisprudence (aka, section 101) is based on a statute that starts with the qualification that “any” invention in one of several very broad categories is patentable. The New 103 Jurisprudence allows judges to deem, from the bench, in their infinite wisdom, what is (a) new, (b) what is “significant”, (c) what is a “fundamental building block”, (d) what would or would not preempt use, etc.

    These subjective findings are now allowed to be made without evidentiary support, but rather are based purely on text construction and the knowledge of the judge(s). Such inherently subjective holdings can be made before a claim construction proceeding, so the judges do not even interpret the claims as one of ordinary skill in the art would interpret the claims. The judges interpret them … as a judge would.

    If you read the decision (Sensor Based …) of this blog entry, the actual analysis can be narrowed down to about one paragraph, possibly two. The judge invalidates an issued patent based on a single paragraph of “analysis” (conclusory statements, actually) that lacks any citation to facts on the record.

    Do tell, lawmakers (judges), how is one supposed to write a claim serving the public-notice purpose of a patent when the intended audiences are both technical artisans and … judges likely lacking even a formal technical education?

    I have no problem with many of these _outcomes_, but the process by which they are arrived at is a travesty of justice. Too much judicial discretion, too much unpredicability, too few requirements of proof or analytical rigor.

    [Prediction: Malcolm Mooney dodges the main issue raised by this post, and instead posts a comment isolating some picayune detail of this post and then rants on with feigned sorrow for undeserving public-robbing pretend-inventors]

    1. 23.1

      HofPU, there are a lot of misassumptions in your post which indicate a fundamental misunderstanding of what is going on.

      Two steps: 1. Identify ineligible material and describe its gist; and 2) determine whether it is sufficiently applied. With respect to the latter, the MOT is a good guideline. But claiming the novel subject matter as a result sans any of means of method of achieving the result is also not sufficient.

      Step 2 is the most critical, in my view. This looks to see if the otherwise patentable subject matter is other than conventional, or whether the ineligible material is applied to transform the claim as a whole into a patentable application. Think, new matter doctrine as to what this means — some new functional relationship of the abstract to the underlying subject matter.

      103 is all about comparing the claim to the prior art. It has nothing to do with patentable subject matter.

      1. 23.1.1

        I think you miss the point. The two-step analysis is a sham that requires no factual support and allows a judge to make decisions about technology, the meaning of terms of art, the state of the art many years in the past, obviousness (in so many words), and what are fundamental building blocks.

        I know what 103 is about, but I’m not alone in observing that the new 101 decisions are quite similar to old 103 analyses that were discredited in precedential decisions.

        1. 23.1.1.1

          All of these points in the last two posts by HoPB are good points. When did 103 become 101? In Alice.

            1. 23.1.1.1.1.1

              It is entirely disingenuous Ned to ignore the conflation going on here by the Court regarding 101/103.

              You lesson even more what is left of y0ur “credibility” with your mindlessness.

        2. 23.1.1.2

          Well, H, certainly if claim has in it subject matter that has previously been found to be “abstract,” or a product or law of nature, then the second step becomes applicable.

          What findings of fact must there be on step 1? What expert testimony can be introduced to negate a finding that the claim contains subject matter that has previously been held to be ineligible.

          On step 2, it must be apparent that everything else in the claim is not the invention of the patentee. Generic computers, a generic reference to the Internet, any and all inertial sensors in the case at bar, are examples where the patentee is not claiming invention in these generic components. The only defense would be to show that the claim is to a specific machine as in Alappat or that the ineligible material, the programmed computer, used in the particular application produces an improved result as in Diehr.

          There seems to be a complication in this formula when the novel subject matter is claimed as a result, i.e., to the point of abstraction, and everything else in the claim is old. Here, the claim might otherwise pass 101 except for the abstract way the novel subject matter is claimed.

          So the question is when a claim is to a result, is this a finding of fact or question of law?

          1. 23.1.1.2.1

            Stop parsing.
            Jepson claim format is an optional claim format.
            There were perfect cures before the Diehr patent.
            Perfectly valid patents are made up entirely of all old items ALL THE TIME.

            The Merry GO Round continues…

            Some “debate” there Ned.

          2. 23.1.1.2.2

            Really Ned a generic computer? Is that there one of them computers that magically does whatever Justice Stevens tells it to do in exchange for Posner giving it a pizza?

            1. 23.1.1.2.2.1

              Maybe it is one of those “House/Morse” computers in which all future inventions are “already in there” and that Britney Spears CD is exactly the same as that Microsoft Windows operating disk….

              Oh where oh where has my little Nazomi gone? Ned clenches tight his eyes and refuses to see the easy lesson of the Grand Hall.

          3. 23.1.1.2.3

            >There seems to be a complication in this formula when the novel subject matter is claimed as a result, i.e., to the point of abstraction, and everything else in the claim is old. Here, the claim might otherwise pass 101 except for the abstract way the novel subject matter is claimed.

            Ned this is disingenuous. I just quoted from a technical book a few weeks ago on here where chapter 1 said that functional statements were meant to represent a set of known solutions. You know that. I guess you anti-patent people can continue to tell us that the sun goes around the earth and as long as the God-like 9 and Google purchased Fed. Cir. backs you up, then that is the law. But it is not reality.

            Just shameful Ned that you push this stuff. Try to address how a person of ordinary skill would interpret the functional claim. (But we all know you just start blabbing and blabbing and don’t address this.) Blab. Blab. Blab.

              1. 23.1.1.2.3.1.1

                So–let’s see I just challenged you with a fact. You responded with what?

                OK. Sure Ned. You don’t think you are fooling any real attorneys on here with your nonsense do you?

                But, please blab away some more ….

                1. Night, the problem I see with your side of the “debate” is a almost complete disdain for the rule of law.

                  Since State Street Bank, the PTO has been issuing patents on business methods and anything and everything that included a computer or CRM. But anyone who knew what Benson, Flook and Diehr stood for knew that the Federal Circuit had adopted a rule that was destined to be reversed. But it took the PTO to force the issue in Bilski.

                  So now the heyday of State Street Bank has come a cropper, you simply refuse to accept the ruling of a unanimous Supreme Court in Alice. I call this a profound disrespect for the rule of law — akin to the revolt lead by Judge Rich in ’50-’52 to the rulings of the Supreme Court on a variety of issues in the ’40s.

                  I also think it is a variation of CYA so that one can blame others for one’s only malpractice in telling clients that their business methods were patentable subject matter when anybody with any common sense knew that Judge Rich’s view of things would never prevail in the long run.

                  Now I too think some Supreme Court rulings are unfortunate — eBay being at the top of that list. But I do not advise my clients that eBay is not controlling law, nor do I willfully misstate it holding.

                2. And again there was a simple fact about whether functional language is used by engineers to represent the set of solutions in CS/EE. We know it does. And yet you keep claiming it doesn’t. That was what the “debate” was about. You just blew a smoke screen the size of Texas.

                  As to your smoke screen: Ned, seriously? So, during the State Street period everyone “knew” the law was wrong and it was OK to argue such, but now Alice has set things straight and only unethical people argue that the law is wrong. Seriously.

                  And please stop mixing up my statements about reality and the judicial activist that call themselves judges and what I advise clients. OK. Nice try. Wow more smoke than a CA wildfire. Good job. I guess it probably confused someone.

                3. Night, query: functional language == set of known? solutions, or all possible solutions?

                  Regarding judicial activism, has any judge ever been less conservative that Rich? State Street, a panel decision pity’s sake, overturned both Benson and Hotel Security. Now you discount that people did not know better that State Street would not stand subsequent Federal Circuit and Supreme Court scrutiny.

                  But it did take awhile for the PTAB to reject State Street — its 2006 decision in Bilski, a couple more years for the Federal Circuit to follow suit. Supreme Court condemnation quickly followed.

                  All of this was predictable. No one really expected any of these courts to simply rubber stamp State Street Bank.

                4. Ned, your diatribes and denigration of a person remain a smokescreen against accepting what Congress did.

                  It is truly desp ic able that you show such disrespect for the rule of law and pull a Malcolm and accuse others of the very thing.

                5. Ned, you know the answer to that question.

                  Functional = all known solutions and then all of other patent law takes over for determining whether another solution would fall under it–enablement, e.g.

                6. Night, I am with you if the claim is construed to cover known structures and infringement is determined by equivalents.

                  You lose me when you say the scope of the claim includes everything enabled by the spec., so one does not actually know whether one infringes until on actually tries to build something according to the spec.

                  Such a claim scope is inherently indefinite.

                7. Ned>You lose me when you say the scope of the claim includes everything enabled by the spec., so one does not actually know whether one infringes until on actually tries to build something according to the spec.
                  Such a claim scope is inherently indefinite.

                  This is more smoke. What? Nonsense. Scope of enablement is —of course–the gold standard and how claims should be construed. Where in the world do you generate this nonsense Ned?

          4. 23.1.1.2.4

            Ned, I like your last point. At least claiming a result is arguably an objective criteria.

            My critique of Alice and its offspring is that it is too subjective and lacks requirements of proof. A claim is to be interpreted as it would be by one of ordinary skill in the relevant art, at the time of invention. Good drafters/prosecutors keep this in mind; they constantly ask “how will an engineer/biologist/etc. interpret this language?” Technicians in some fields use some rather specific argot. An Alice “analysis” ignores this.

            Your remarks on step 2 confirm my other complaint. Step 2 involves understanding what is or is not new. How can this be done without resort to facts of record? A judge is an expert on what the state of the art was on inertial sensing and computation at the time of invention? I don’t think so.

            The unstated purpose of Alice is judicial efficiency. Let judges get rid of low quality seemingly overbroad patents without great expense to challengers. And so the pendulum swings. Maybe in 10 or 20 years we’ll see another State Street, or correct statutory construction applied to section 101. In the meantime, patent participants are left with a serious predictability problem.

            Alice wasn’t needed. The problem of overbroad patents (claims that are clearly within a statutory category but very broad) already had a solution. The new patent proceedings at the PTO allow a streamlined 103 challenge, which is the right statutory tool for most of these overbroad patents. Study the history and language of section 101 and you’ll find that its present use was never intended by Congress and is not supported by the black letters of the statute.

            1. 23.1.1.2.4.1

              Well, H, I have said this before and will say it again here, if the otherwise eligible subject matter in the claim is not self-evidently old and old in combination, then Mayo would caution that there could be invention in such. This by itself would move the claim into 102/103 where the novelty of the eligible subject matter would be placed at issue.

              To resolve a case at the 101 stage, there has to be no dispute of facts. None.

              In the case at bar, the Court noted that the patentee had argued that the location of a sensor on a moving platform was itself an invention. The court simply ignored this because the sensor itself was generic. However, I think that might have been enough to move the question of patentability out of 101 and into 102/103.

              1. 23.1.1.2.4.1.1

                OK, Night. You accuse me of infringement because the functional limitation literally reads on my device. I, using your definition of scope, send you an expert opinion that based on your spec. that my clients device was not enabled by your specification.

                What?

                Enablement has nothing to do with infringement or scope. One cannot functionally claim everything an then have the courts reduce the scope o the claim to the extent the spec enables something. That is way, way out there Night. Literally way way out there.

              2. 23.1.1.2.4.1.2

                >>that my clients device was not enabled by your specification.

                Ned, LizardTech deals exactly with this issue. And, of course this issue is going to come up. That someone invents something that reads on your claims, but is not enabled. And, what happens is the claims are invalidated. That is the tension. If you claim too much, your claims may be invalidated in this way.

                As to the rest of your nonsense—it is nonsense. You keep saying you can’t claim “functionally” ’cause ’cause. How about you try to be a real patent attorney? Try to focus on the inventions — you see that is what real patent attorneys do. Those skilled in the art discuss the inventions using functional language. The books say expressly that they use functional language to represent sets of solutions.

                Deal with that.

                1. Being a real patent attorney would mean that he would have to stop his curse-ades – at least as far as his dissembling in pretending that the law written by Congress is something other than what it is.

                  But to do that, he would then have to admit that what he is really after is a change in law, a change that the courts are not sanctioned to write.

                  And this is exactly why his sh00ting himself in the foot with his posting of the Judge O’Malley article warning against judicial activism when it comes to statutory law is oh so typically common of the anti-patent failings.

                  I don’t mind at all that certain people have certain views of how they would prefer patent law to be.

                  I completely mind when those same people are simply – and plainly – dishonest in their approaches.

                  Inte11ectual honesty is simply not too much to ask for.

                2. It is totally out of control anon. It is coming from the massive money from Google and the likes of Lemley. There is no ethics just the power to burn it down. That is what is driving this madness.

                  Lemley, and his software has no structure, is, represents the worst of it. A professor that is untethered from ethics.

                3. All too often “ethics” in the eye of the beholder means nothing.

                  One only has to look at the “ecosystem” here – a blight has persisted for nine years and running (long long long before I ever started posting here), without even a hint of care by the blog masters.

                  Why is that?

                  Perceptions are left to abound.

      2. 23.1.2

        lot of misassumptions in your post which indicate a fundamental misunderstanding of what is going on

        …from the Malcolm School of Misdirection….

    2. 23.2

      HofPBs great post. No facts needed only a judge’s opinion about how they feel about it. No rules. No law.

      Ned: you have become ridiculous. Just an absurd person at this point Ned.

    3. 23.3

      None of what you decry is necessary where there is you know, physical structure or transformations of matter. The stuff patents were intended to protect.

      What you decry is essential to adjudicate the ownership of ideas, which should be anathema to patent law (and free people) but which has become the means to profit and/or control, and so will only be torn from those who benefit. As we can see.

      1. 23.3.1

        Yes Marin I am typing on an idea right now. It all exists in the spirit world and is not real machines.

        Maybe if you educated yourself so you understood information processing machines then next time you wouldn’t think you can just make any system you want regardless of what patents are out there.

        1. 23.3.1.1

          I have warned you in the past: stop the defamation. You wont read the case papers by your own admission- willful ignorance.

          The machine has physical structure. Patent eligible.

          Your misguided arguments have structure, are somewhat novel, and useful (to you apparently). Not patent eligible. Neither is per se software. Get over it.

  7. 22

    Rick, the pencil and rubber tip were old. The idea of catching one to the other without more detail was an example of claiming the idea of attachment, not any means or method of doing so.

    The case has repeatedly been cited by the Supreme Court as an example of 101 claiming an idea — abstract .

  8. 21

    What an interesting thread. Paul Cole points out that the claim is directed to a result or a goal to be achieved. Ned Heller observes that the stacked sensor idea was known and desired but thought to be out of reach because the computation was too slow, but then along came the mathematicians at Thales, with math good enough to get the computation done fast enough.

    Ned thinks that limiting the claim to a HUD renders it eligible. I suppose that Paul would disagree. I suppose that if Paul were judging patentability he would want the math in the claim. After all, it is the math that solves the problem, and patents are for solutions to problems not mere statements of the problem to be solved.

    At the EPO, the means by which the problem is solved have to be “technical”. Paul, is the math technical?

    1. 21.1

      Perhaps a better question (along your portrayal of the question**):

      Is it math or application of math?

      **there are different problems that inure based on your approach, but I am setting those aside for the moment to highlight a certain “looseness” in terminology here: the difference between mere math and applied math.

      1. 21.1.1

        It was not the difference between pure and applied math that was troubling me. Rather, it was what sort of person to name as inventor. A mathematician for example.

        1. 21.1.1.1

          What is troubling you appears to be a distinction without a difference.

          Sure a mathematician can be an inventor.

          So can a plumber, fireman, third-grader, heck, even an academic can be an inventor.

          The great thing about software in fact (the thing that Malcolm is consistently deceptive about) is that thie type of invention opens up inventive activity to the greatest spread of people EVER.

          And yet, he both claims this is a “t001” of ultra-elite 1%’ers as well as something that is “PER SE” outside the realms of patent protection.

          1. 21.1.1.1.1

            anon, you misunderstand. I am not saying that there is a prohibition on naming mathematicians as inventors of, say, kitchen gadgets. What I am suggesting is that, when it comes to eligibility, it can be helpful to ask oneself what technical field the person would have been operating in, when conceiving the invention. Tax accountancy or product marketing, for example.

            Here, the physics was known, as was the math to deliver the result. Lacking was just a person with enough math talent to streamline the math. So the invention was not in engineering or physics or even in programming, but 100% in math.

            Not saying that is conclusive for eligibility, just something to think about.

            1. 21.1.1.1.1.1

              Clearly, such can also be non-helpful, as the prejudice then quickly arises as to my first response and the looseness and lack of understanding as to the difference between mere math and applied math.

              You seem to want to pidgin hole the inventor for some (rather obvious) reason.

              Just another way to parse what should not be parsed.

              As even Lemley notes (in his AIA positions), it takes a village to invent.

              Your attempted parse here is nothing but the “Point of Novelty” misapplied yet again.

              That’s just not how our sovereign has written the law.

              Thanks, but no thanks.

              1. 21.1.1.1.1.1.1

                By the way, this should be familiar to you – we went through a similar back and forth regarding patents for “mere automating” of previously non-automated things not so long ago. Our law simply does not apply a de facto or per se ineligibility on such things.

                Here, our Congress devised a different law to cover that concept.

            2. 21.1.1.1.1.2

              Something else to think about is whether there is any difference in patentability, under the US statute, between the subject matter of the claim in Diehr and that of Thales here.

              In Diehr, the Arrhenius equation was old and the process of the claim was old but, nevertheless, patentability was found to lie in the use of that equation in that specific machine/process.

              Here, the equation was new and not obvious. You can’t patent the equation as such. But if you claim a specific machine or process running that new and not obvious equation, you might have something that’s patentable, piggy-backing on the attributes of the equation. That claimed machine or process, running that equation, itself recited in the claim, can’t be obvious, can it?

              So, claim that subject matter. Claim all that you can, of what you’ve invented, that is to say, contributed to the art, that’s also patentable. Simples.

              1. 21.1.1.1.1.2.1

                Absolutely it can MaxDrei.

                In the instant example of Diehr, it was known that perfect cures were obtained previously.

                Another way of doing something – even something old – is absolutely within the realm of eligibility.

                And once again, your “simples” is simply TOO simple. The Jepson format is NOT a requirement but an option. This counter point to the way of thinking that you want to impose is itself “simples.”

                Why are you not grasping it?

            3. 21.1.1.1.1.3

              MaxDrei – Lacking was just a person with enough math talent to streamline the math. So the invention was not in engineering or physics or even in programming, but 100% in math.

              When a person applies his/her math skills to solve a specific math problem that arises in the context of a specific engineering problem, then I don’t call that “math.” I call it engineering. You know, engineering has moved past making a better arrow or ax. Nowadays engineering involves a quite a lot of math, and engineers know quite a lot of math.

              I think the fact that the inventor in this case solved a specific math problem that arose in the context of a specific engineering problem is proof enough for me that this was an “engineering” invention.

              1. 21.1.1.1.1.3.1

                Genghis, what you write makes sense. Just because it is “math” doesn’t mean that it is outside the technical field of engineering. But to have a real debate about eligibility/patentability, we need to debate a specific claim. The name of the game is the claim. Perhaps we can agree that the equation as such is not eligible, and that is why, for innovations in equations, in math, SCOTUS urges to “apply it”. In your invocation of a problem in engineering, you seem to be doing the same thing.

                Did you read my third para? Do we not agree, on eligibility/patentability?

                Look at the claim here. Is it reciting the equation? If not, is it instead coveting all ways to a goal. Was it an invention to i) state that goal or to ii) claim so widely that the claim is tantamount to claiming no more or less than the achievement of that goal, a heist of that goal as such, a pre-emption of the goal, as such. In other words, claiming the result. You know, merely because you have found one way to get to a result people already desire is not a good enough reason to give you a 20 year monopoly on all ways under the sun to get to that result, including all those yet to be invented.

                These days, the trouble with advancing a covetously broad claim is that it does tend to attract a lot of judicial disapproval. Courts have come to the view that there are too many trivial patents and too many over-broad claims that once were “duly issued” by mistake. Once you have attracted that disapproval you have to brace yourself for a finding of invalidity, without the court worrying much about which tool to use, to despatch the claim to oblivion.

                1. Yes, I agree with your third para.

                  To me the claim should be patent eligible because it claims a physical system.

                  However, I think the claim can be (and should have been) struck down as obvious or as being “too broad” (i.e., it covers other non-obvious, non-equivalent embodiments that the inventor did not invent).

                  Obvious because it places no limitations on the math that is used for determining the orientation. I’m assuming both parties agreed that determining the orientation of the tracked object based on two inertial sensor is well known albeit using “slow math.”

                  As far as “too broad” issue is concerned, I don’t think invalidating the claim is the right thing to do. Instead I think if the claim is too broad then that should be taken as a permission from the inventor(s) to narrow the claim scope as the court sees fit (I guess I’m advocating invoking means-plus-function interpretation for claims that are “too broad”).

                  If sufficient details of the “fast math” had been added to the claim then I think it would have prevented the obviousness and the written description issues.

                  You said – Once you have attracted that disapproval you have to brace yourself for a finding of invalidity, without the court worrying much about which tool to use, to despatch the claim to oblivion.

                  I agree. This is what I’ve come to believe after reading these cases.

                2. Genghis, here is where claim construction can save the claim. The “element” claim element was already construed to incorporate into it the corresponding algorithm. Had that claim construction also incorporated a display responsive to the calculation, the 101 problem would have been solved.

                  This is a situation where 112(f) can come to the rescue of the patentee.

                3. You don’t need “claim construction” and you don’t need 112(f).

                  You need a court that respects the rule of law, the separation of powers and the fact that Congress wrote the law as they did.

                  This is a perfect example of a claim as a whole that is NOT purely functional with real to goodness “objectively physical” claimed elements being “Gisted” away.

                  Wake up Ned. The anti-nominalists have re-written the statutue by effectively removing the statutory categories here. There are but two sections of 101:
                  1) the proper utility (the Useful Arts)
                  2) the wide open gates of the four (not three and a handmaiden) categories.

                  THAT is how Congress wrote the law.

                4. MaxDrei,

                  I love the fact that you find it so difficult to give credit where credit is due.

                  You do realize that the difference I first pointed out (applied math versus just math) is EXACTLY the same thing as this engineering comment, right?

                  Your quickness too to thank others (but not me) is also more than just a bit petty of you – and reflects more on you (or as the case may be, less of you) than you might think.

          2. 21.1.1.1.2

            Ha your belieb system is so backwards…software patents are so rarely about “invention” and so often about merely expressing a desired result…Why we all could be inventors! We all can “invent” our days away dreaming about what others can express in software, and who pay us for the privilege! its magic and innovative…

            If only we could figure out a way to make that work for the tee vee shows I watch. I can think of a million ideas for them! Id be so rich….

            1. 21.1.1.1.2.1

              So very sad of you Mr. Snyder.

              The demagoguery does not work for the “professed” anti-patent attorneys here. It certainly does not work for you and your uninformed, lack of knowing the lay of the land in the Sun Tzu sense mindless dribble.

    2. 21.2

      Thanks for the summary MaxDrei.

      Ned – it seems an “improvement” (in the 101 sense) to “a system for tracking the motion of an object relative to a moving reference frame” seems to be sufficient to draw whatever parallels need to be drawn to the rubber curing system of Diehr. I don’t see how adding a “HUD” to the claim suddenly makes the claim eligible.

      It would have been interesting if at least the broad strokes of the math were in the claim (may be some of the dependent claims have such high-level details of the math).

      Re: the invention enables faster computation. How about a limitation that provides an upper bound on the amount of time required for determining orientation, or even better – an upper bound on the number of floating point operations required? Such a limitation seems to go to the heart of the matter in this case.

      1. 21.2.1

        Just to be clear – I’m not suggesting that adding an “upper time/computation bound” limitation to the claim will make this patent eligible. I’m just curious as to why I rarely see such time/computation limitations in process claims. Limitations that provide upper/lower bounds for dimensions etc. are of course quite common in other arts.

        1. 21.2.2.1

          And you my ever-eager-to-learn** friend might find interesting my comment, at 19.1.1.1.1.

          There is a reason why the Jepson claim format is but an optional claim format. If our Congress wanted what you pursue, they could have easily simply made it a non-optional claim format.

          **as long as it aligns with your existing philosophies

      2. 21.2.3

        Genghis, the system level purpose is not sufficient per se. Much too general. See Flook and compare to Alappat.

        The claim would have passed must if “element” had been specific like rasterizer in Alappat, given the construction of the court to read into the claim the novel math.

        1. 21.2.3.1

          Is Alappat still considered good law? I think this case is somewhere between Flook (a general purpose computer) and Alappat (I think this case was for an oscilloscope – am I right?).

          I’m shocked that not a single dependent claim recited the use of the system in a HUD. Because if it had, and if your hunch about how the court would have ruled in that case is correct, then that trivial sounding dependent claim could have saved this patent. Amazing.

          I will be even more shocked if this does not get appealed to the Fed. Cir. I guess you seem quite confident that this claim is ineligible. But given that the “new math” was read into the claim by the court during claim construction (so that the claim is no longer “too broad”), to me this case is right on the eligible/ineligible boundary and I’ll be very interested to see what the Fed. Cir. does.

          1. 21.2.3.1.1

            Genghis, of course Alappat is good law. Even if a programmed computer is involved in the claimed subject matter, it passes 101 if it is a limited to a particular machine, and the Alappat case it was a rasterizer of a graphics unit that smoothed a waveform for a display (anti-aliasing). But the key point is a rasterizer was a known component of a graphics unit.

            Without being limited to a particular machine, the case is exactly like Flook where it ended in a calculation and the only link to use of the calculation was in the preamble which is far too generic – not a particular machine. Alappat, in this regard, is quite different.

            I agree that the Federal Circuit may wish to explain why this case fails the Flook/Alappat distinction.

            1. 21.2.3.1.1.1

              Thanks Ned, Genghis. Your comments provoke some more from me.

              On the one hand, the name of the game is the claim. On the other hand, claim construction seems to be elastic enough to get the claim to mean anything you want it to mean.

              Where I am, more respect is given to the drafter of the claim. They are also held to the consequences of their own drafting. Courts assume that the drafter meant what he/she wrote and find their claims invalid if, as they stand, they are indeed invalid. That’s why, where I am (Europe) dependent claims are an indicator of the skill of the drafter. If the drafter has done a competent job, the independent claim will be at the limit of what the drafter thinks might survive. It will capture all of the scope that’s conceivably capturable. Nearly always then, the dependent claims are going to have a crucial job to do, namely, save the patent when it turns out that claim 1 is too broad for a successful defence of its validity. The dependent sequence, then, had better be good.

              Americans seem to think that quality dependent claims harm the independent claim. (Is that because they put the idea into the mind of a PTO Examiner, that something narrower defines the invention more definitely, and therefore ought to be insisted upon?). In my jurisdiction, though, the best way you can defend a broad claim is to back it up with a powerful set of dependent claims. An independent supported by a finely graded, incrementally narrower set of dependent claims, each one of them making a positive contribution to patentability, is a powerful pointer to the legitimacy of the root independent claim from which they all depend. One’s chances of defending the independent successfully go up with the quality of the dependent claim sequence.

              Mind you, that’s how it is in First to File country. I accept that the considerations are very different, in the USA.

              1. 21.2.3.1.1.1.1

                Max, I agree that the claim should be clear on its face as to what it covers and should not incorporate additional structure, materials or acts from the specification. That is why I advocated either a repeal of 112(f), or in an alternative, that means plus function claims be construed without incorporation to guard against the courts continuing to read such limitations into the claims in order to maintain validity. In this manner, the US would then join the ROW in construing means plus function.

                Of course, the risk of such a broad claim is lack of support/the prior art.

                A

  9. 20

    Paul Cole reports below, that the EPO claims are narrower. Ned Heller reports below, that not one of the 42 claims is directed to a HUD which in turn suggests to me that Thales wrote the math but went no further, or else lacks any commercial involvement in the hardware (helmets and stuff like that). Ned advises that limiting to a HUD would have been enough to see off the 101 validity attack, so why didn’t they have such a claim to fall back on?

    I have some questions.

    For Paul: is the EPO patent narrower by virtue of some recitation of hardware, like a helmet?

    For Ned: I see the re-issue and intervening rights issue. That suggests that the claim drafting should have been better. But suppose Thales had directed their claims to a HUD. Would such a claim of a US patent have been eligible for compensation by the Government?

    If neither the US nor the EP has any claim to a HUD that suggests to me that the any drafting deficiencies were with Applicant. If the EP claims are to a HUD but the US claims not, that might focus attention on who did the drafting of the claims specially for the USA.

    1. 20.1

      Max, of course — even when limited to a HUD, the claims covered what the government was doing.

      However, without the limitation to the HUD, the claim simply ended in a calculation with no use. Adding the HUD was all that was needed, given the claim construction that limited the “result” element to the novel math.

      1. 20.1.1

        If the “objectively physical” sensors could be Gisted away, so too could the HUD.

        This hindsight “if they included one MORE piece of “objective physical” item in the claim is a waste of everyone’s time.

        1. 20.1.1.1

          Ned, the HUD is irrelevant. You can’t be implying that “display the result in a HUD” would be “enough” are you?

          Here’s the simple fact: Most if not all asserted software claims will be found ineligible, if not by the District Courts then certainly by the Federal Circuit.

          Judges want to empty their dockets, and Alice gives them a perfect opportunity to do so. A couple days ago a District Court sua sponte required briefing on 101 and invalidated a patent. Once that gets around no software patents are safe. DDR is an anomaly.

          The exception has swallowed the rule. Best get on the other side of it. I work for a client who is toeing the 101 line. Frankly I want to get as far away from that as possible. It’s time to stop whining that the courts are using Alice improperly or that Alice is a poorly thought-out and poorly worded decision and time to figure out a business model to make money invalidating patents under 101.

          1. 20.1.1.1.1

            Yep,

            The sword does not stop with software.

            ALL patents fall by the logic being used.

            It really is that simple.

            1. 20.1.1.1.1.1

              Show me one non-software claim invalidated or even asserted to be invalid under 101.

              1. 20.1.1.1.1.1.1

                Are you saying that software is being targeted?

                Didn’t even the Supreme Court pass three times on doing that (directly)?

                ;-)

                1. You’re correct! But that’s irrelevant, since the argument “Well SCOTUS could have said software is ineligible but it didn’t therefore you can’t use 101 to kill everything” is not working. In the courts or the PTAB.

                  I’m not sure what you have to tell people to get them to pull their heads out of the sand. Alice and Ultramercial have for all intents and purposes killed the vast majority of software patents. You don’t like that? Time to talk to Congress. The Courts don’t care. The PTAB doesn’t care. The PTO will still issue specious claims because if they don’t it’s going to cost them a pretty penny.

                  Whining on a blog isn’t going to change this. Writing an article about how the courts are running amok isn’t going to change this. The Supreme Court isn’t going to change (or clarify) this. Congress is your only shot.

                2. You only think that it is not working – I see why you wanted examples.

                  Sadly though – you errantly make this personal as if it is up to ME to change what is coming.

                  I am the one saying to stomp on the gas and make the logic being used for one target be used with the actual limits given by the Royal Nine – that is, NO limits.

                  You are right about one thing – when this happens in other people’s back yards, the realization will dawn (just look now at the Pharma lobby trying to rewrite IPR’s to exclude their own backyard.

                  The answer my friend is NOT to label my efforts (incorrectly, btw) as “whining” but to see that playing with judicial targeting just is wrong and not sustainable.

              2. 20.1.1.1.1.1.2

                Looking aside from the fact that biotech is also targeted by 101 (*ahem* Mayo), look at the claim in this case:

                1. A system for tracking the motion of an object relative to a moving reference frame, comprising:

                a first inertial sensor mounted on the tracked object;

                a second inertial sensor mounted on the moving reference frame; and

                an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

                I don’t see anything about “software” in that claim – it could just as easily be implemented as a circuit.

                1. That is exactly right. And, in general, you can’t differentiate between circuits and software. As someone that has written patent applications for consumer electronic products I know. It is real hard to stop design arounds because funcationality can just be pushed in and out of a circuit.

                  Anyone that is a real patent attorney in EE/CS knows this.

                2. David, I agree that nothing in the claim discusses software or an algorithm or math. Yet the court clearly construed the claim to read into the claim the novel algorithm.

                  The court provided no explanation as to why this was so. Perhaps there was an earlier claim construction hearing where the court ruled this way. Perhaps 112(f) was applied. We simply do not know based solely on the opinion.

                3. > I agree that nothing in the claim discusses software or an algorithm or math. Yet the court clearly construed the claim to read into the claim the novel algorithm.

                  False.

                  The opinion uses the words “software” once (in the citation to Accenture Global Services v. Guidewire Software), and the terms “algorithm” and “code” only in summarizing the holdings in the Alice and Flook cases.

                  When discussing the “element configured to determine an orientation” item, the court summarized it simply refers to it as the patentee did: as an “element.” For example:

                  “The system in Claim 1 appears to be an arrangement of generic data-gathering elements designed to feed orientation data into the navigation equations, which are described in Claim 22.”

                  There is nothing in this case to limit the holding to software – nor should there be, because the claims do not read as such.

                4. “Put simply, the system in Claim 1
                  appears to be an arrangement of generic data-gathering elements designed to feed orientation data
                  into the navigation equations, which are described in Claim 22.”

                  “Claim 22, the method claim, even more directly describes the navigation equations by
                  reciting, “a method comprising determining an orientation of an object relative to a moving
                  reference frame. . . .” ‘159 Patent at 13:24-27. The orientation of the object is represented
                  mathematically by an orientation matrix. Id. at 8:6-8. The orientation matrix is calculated using
                  the angular velocities determined by the inertial sensors, and solved in equation (11). Id. at 8:5-8;
                  Defs’ Mot. at 11. This orientation matrix is then plugged into the complete navigation equation,
                  equation (10). Distilled to its core, Claim 22 is nothing more than an instruction to solve a
                  navigation equation.”

                  “At its core, the patent is
                  seeking protection for the mathematical formulae used in determining the relative orientation of
                  two moving objects. The Court is unwilling to afford patent protection to Plaintiff’s claim on this
                  building block of motion tracking technology.”

                5. Thank you for proving my point. Where do you see anything about “software” in there, Ned?

                  I could design a circuit, today, that will perform these features strictly in hardware – basically a series of differencing op-amps that output the differences of these signals. Voltage in, voltage out, using specialized physical structures to achieve the operations. This is basic circuit design, Ned. It fully meets the description above, and it doesn’t even take a person of “ordinary skill” in electrical engineering – a 200-level circuit undergraduate design class is sufficient.

                  Some day, Ned, you’re going to have to accept the fact that circuitry can perform math without software. Like your theories about patent law, your theories about technology are woefully outdated: your understanding of “calculating” = “only software” is disproven by the Turing-Church theorem of 1930. You may want to review that bit of information before hazarding technical opinions in future situations.

                6. David, I think you are setting up a strawman. Nothing in the ruling says anything about software, I agree. But this is irrelevant. It is the mathematical algorithms that are being protected. How they are implemented, whether by programmed computer or by hardware, is beside the point.

                7. Ned, your attempts to shoehorn your theories of patent law into cases that do not support your point is in full bloom here – much like Dennis’s “Judge Newman says ‘functional at point of novelty'” headline, when she wrote nothing of the sort.

                  These disingenuous tendencies are why I rarely post here any more.

                8. David, what cases are you talking about specifically?

                  Regarding the case at bar, since there were no limitations to “how” the math was implemented, the claims covered all implementations — at least according to the court.

                  But the ultimate vice was that the claims were so abstract as to not be limited to any particular use or machine. All uses were covered. All machines were covered. Any implementation of the math was covered.

                  Where is your problem with the holding of the court?

                9. Ned, I meant this post:

                  Judge Newman: Functional Claim at Point of Novelty => Abstract Idea

                  Despite the headline, Newman’s opinion had nothing to do with “functional” claim language, nor any discussion of the “point of novelty.” Neither term, nor any synonym, even appears in the opinion.

                  Rather, Newman’s opinion is a straightforward invalidation under the two-step 101 / Alice test. The claims were found to recite the “abstract idea” of “retaining information lost in the navigation of online forms,” and the additional details in the claims were found to be “conventional” and not add “significantly more.” The End.

                  Absent any explanation or correction of the distorted heading of this post, the apparent motivation is to put words in Newman’s mouth – or, rather, pen – that support a particular agenda for where patent law should go. It is unseemly and not consistent with the disinterested, academic tone that this blog strives to project. And it is why I mostly ceased posting here right around that time. There are plenty of other places to discuss patent law nowadays.

                  Regarding the case at bar, since there were no limitations to “how” the math was implemented, the claims covered all implementations — at least according to the court.

                  All implementations – I agree! And that is completely different than recharacterizing the decision as making any specific point about “software” or “algorithms,” which is precisely what Night and anon and I have been arguing in this thread – contrary to yep‘s assertion, as well as yours, that “algorithms” are specifically implicated by this opinion.

                  In truth, neither the claim, the claim construction, nor the decision focuses on “algorithm.” That is our point, and I’ll take your last reply as a concession.

                10. David, as I said, on reading the apparatus claim I had a very hard time understanding how the apparatus claim implicated math or laws of nature. Then I read the opinion. The reasoning of the opinion thought that

                  because

                  the claims were not limited to a specific machine they monopolized the entire field — any application of two generic sensors, mounted as claimed, with a calculation of orientation as claimed in claim 22, a corresponding method claim.

                  “At its core, the patent is seeking protection for the mathematical formulae used in determining the relative orientation of two moving objects. The Court is unwilling to afford patent protection to Plaintiff’s claim on this
                  building block of motion tracking technology.”

                  Now, what I see here is that the court bootstraps its conclusion by first reading into the claims the specific “mathematical formula disclosed.” That to me was unnecessary for the result here because the claim implicated all formulae, not just the formulae disclosed.

                  But there really is no difference between mathematical formula and algorithm. That they can be implement by hardware, software, or combinations of each is beside the point. And, since the claim covers all formulae, the claim is far more preemptive that the court states because I do not see how one can read into the claim the specific formulae disclosed unless one is applying 112(f).

                11. Regarding the early post about Newman’s opinion in Internet Patents, the problem with the claim was not that it was attempting to claim math, business methods, laws of nature or a product of nature, things that are non statutory and cannot be claimed regardless of the detail of their description, the claim was claiming something inherently patentable, in my mind anyway, the retention of information in a web page form when moving back and forth between linked pages.

                  The reason this was declared “abstract” by Newman was that it was expressed only as an “idea,” a result to be achieved without any detail as to how. This certainly violates Rubber-Tip Pencil, the case the Supremes often cites for this proposition — that an idea cannot be claimed — only an application of the idea.

                  Regarding claiming results, even Judge Rich acknowledges that one cannot claim results while allowing that a machine may be claimed as a process. See, Application of Tarczy-Hornoch, 397 F.2d 856 (C.C.P.A. 1968). link to scholar.google.com

                  But, you should be aware as well that “claiming results” is another expression of the concept underlying the aphorism “functional at the point of novelty.” Thus there is nothing truly misleading about Dennis’s post. What he did not do was link the two concepts through Rubber-Tip Pencil.

                12. Ned,

                  You have NO credibility in the conclusions that you wish to install here with your “versions” of law.

                  None.

                  Just as David ripped apart your case cites earlier, just as even Prof. Crouch told you that you are trying to apply a circuit case incorrectly, and just as I have demolished your windmill crusades time and time again with valid counter points put on the table for discussion – points you always run away from, ignore and turn around the next day with your internet style shout down monologueing.

                  Plainly put, it is you that remains in plain legal error on a great number of points that are simply “inconvenient” for your windmill chases.

                  Three – the new four – is not five
                  congress – not Rich – made changes in patent law in 1952,
                  Software is not the execution of software, nor the thought of software
                  Software is a machine component and a manufacture in its own right.
                  Software is equivalent to hardware and is equivalent to firmware
                  [old box] does NOT have “already in there” (you know, the proper patent law doctrine of inherency) all future improvements to [old box] that arise by changing [old box] by way of adding the machine component called software and re-configuring [old box].

                  These are basic and fundamental things that you MUST accept if you are to engage in any form of inte11ectually honest dialogue – and not your usual C R P monologue.

                13. Ned:

                  First, about this case:

                  You’re using the term “algorithm” in an unreasonable way. I doubt that anyone in the field would look at a single op-amp that generates an voltage signal that is the difference of two input voltages, and conclude that an “algorithm” is involved.

                  Picture a Rube Goldberg device, with a cup on a spring positioned above a switch. When one marble drops into the cup, it compresses the spring a bit; when a second marble drops into the cup, it compresses a bit more and hits the switch. Would you say that this machine is performing an “algorithm?” Or implementing a “mathematical formula?”

                  It is apparent that you are stretching the term “algorithm” to “anything that is described by a function,” in an attempt to extend the 101 test arguments against “algorithms” as covering all functional language. DDR Holdings is one of many such examples to show why this conflation is not valid.

                  Second, about Internet Patents Corp.:

                  Yes, Newman stated that the claim recited only an “idea” and was therefore “abstract.”

                  No, it had nothing to do with which portion of the claim recited that “idea” – whether it was a “point of novelty” (a term that Newman never uses in an form) or anything else. The opinion reviewed the claim as a whole, and found the whole claim lacking.

                  No, it had nothing to do with whether the “idea” was recited as a result, or as a functional step, or as a structure (such as conventional hardware). The form of the claim did not matter – only that it did not contain “something more” than an “abstract idea.”

                  So I maintain that both you and Dennis are distorting the holding in that case: it cannot be summarized as relating to “functional at the point of novelty” when (1) it had nothing to do about functional claiming, and (2) it stated nothing whatsoever about a “point of novelty.”

                14. David, analog circuits is it? How did we get there? I am only referring to the equivalence between digital circuits and programmed computers.

                  Regarding “idea” and “result,” they are two different ways of saying the same thing. The Supreme Court uses “idea.” Rich used “result.”

                  So, Newman’s objection was that the “invention” was claimed as a result.

                15. David, analog circuits is it? How did we get there? I am only referring to the equivalence between digital circuits and programmed computers.

                  You acknowledged – two replies ago – that the “element” covered all embodiments, which is why it was found invalid. That’s how we “got here.”

                  You are now retreating from that admission to: “no, it only covers digital circuits and programmed computers.

                  Wrong once again. Look at the claim: there’s nothing about “digital circuit” or “programmed computer.” Look at the opinion: still not there.

                  Incidentally, attempting to compartmentalize this decision as only covering “digital circuitry” is technically specious. Analog circuitry could have worked just as well – including the op-amp that I noted, which is inherently analog. Same with analog machinery, like the Rube Goldberg machine. Also, virtually every electronic device today is a “mixed mode” circuit, comprising some digital elements, some analog elements, and D/A and A/D converters in between.

                  So, no. You have already admitted that the claim covers “all embodiments,” which it does. You cannot retroactively reinterpret it as strictly involving the areas of technology that you believe to be problematic.

                16. David, I was not thinking analog circuits at the time. But your position now reduced tho this, which I think is manifestly not accurate:

                  Analog circuits cannot, as a matter of law, effect mathematical formulae.

                  Tell that to Wernher von Braun, the guy who flew rockets into England using analog computers. He must have been using inertial sensors in much the same manner as claimed here.

                  In point of fact, I started my career working on ICBMs and this is exactly how we used inertial sensors to tell us where we were — with analog computers.

                17. Analog circuits cannot, as a matter of law, effect mathematical formulae.

                  You must be kidding.

                  Here is the first paragraph of the Wikipedia entry on analog computers:

                  An analog computer is a form of computer that uses the continuously changeable aspects of physical phenomena such as electrical, mechanical, or hydraulic quantities to model the problem being solved. In contrast, digital computers represent varying quantities symbolically, as their numerical values change.

                  Ned, if you are so driven by your legal theories that you will redefine the functional capabilities of broad classes of technology to fit them… then I really cannot engage you any further. And nor should anyone else, until you understand why this is not a valid option.

                18. David, I do not exclude analog computers from coverage of claims that recite algorithms.

                  I thought that was what you were arguing.

                  If not, the claims at issue here cover all forms of apparatus that execute the disclosed mathematical formulae — just as the court stated? Do you agree with that proposition?

            2. 20.1.1.1.1.2

              Better yet, convince your software patent clients to pay you to file a few lawsuits relying on Alice to invalidate non-software patents under 101. If you win, you can be sure someone will take notice.

              1. 20.1.1.1.1.2.1

                You do realize that you need standing to get into court there, yep?

                Just curious yep, what do you do for a living?

                1. Come on man. Then start advertising “COME ONE COME ALL, I CAN GET ANY PATENT INVALIDATED. BRING ME YOUR DJS, BRING ME YOUR SUMMARY JUDGMENTS.” Stop screaming at the moon and focus your efforts on Congress.

                2. You did not answer my question and now you have shifted away from your point of having my software clients pay for lawsuits.

                  Maybe you need to understand this law thing a little better, it appears that you are just more interested in a little “peace for our times,” or perhaps you are just anti-software patent (and don’t realize that that means that you are just anti-patent).

                  You are trying way too hard to just want some “comfortable” silence – and you will be immensely disappointed as the legal issue just won’t go away.

                  Quite in fact, it will get only louder. That’s what happens when you target things inappropriately and then want silence on that inappropriateness.

          2. 20.1.1.1.2

            Yep,

            Here, in an hypothetical claim, we have sensors that output something to a processor element that processes these signals digitally to produce a processes signal which is then used to improve a display, were the processing is limited by claim construction to the inventive algorithm. This hypothetical claim defines both an improved machine and an improved process. See, Alappat and Diehr.

            Where is your problem?

            A computer programmed to compute an improved price does not improve any specific machine or process. I hope you can see this.

            As to asserted software patents, what are you smoking? Most of them are directed at improving something abstract, not at a physical machine or process.

            1. 20.1.1.1.2.1

              Ned’s magical (forgetting of the first step) again that in order to “use” software, one first must change the machine and configure said [old box] with the machine component and manufacture in its own right of software.

              Ned, once again I invite you to use the proper legal doctrine of inherency to realize that all future inventions are NOT already “in there.”

              Software is not the use of software.
              Software is not the thought of software.
              Software is indeed a machine component and a manufacture.

              Please let’s have some inte11ectual honesty about these basic understandings in this dialogue.

              1. 20.1.1.1.2.1.1

                anon, is smoking something magical to continue to believe in both fairies and in the wisdom of the CCPA in Application of Bernhart.

                1. You have shown NO real law to back up your statement here Ned.

                  You have shown no facts to back up your statement here Ned.

                  All that you have done, is, well, nothing.

                  Maybe you want to reply to the things that I have put on the table for discussion.

                  Not likely though, as you have only consistently run away from these discussion points.

  10. 19

    If anyone can tell me what surprising new function or result can be derived from the combination of features claimed in claim 1 of the patent in issue (and nothing else!), and he or she is attending the Annual Meeting of AIPLA, I will then buy him or her a beverage of his or her choice.

    “… an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors” – a wish without any of the features needed to make the wish come true.

    The claim granted in Europe is slightly narrower but still somewhat embarrassing.

    On 30 second scan of the patent there may well have been a patentable invention here. But it does not seem to have found its way into claim 1.

    MORAL: Make sure that claim 1 is defendable. If it is not and the patent is litigated there may be an indelible bad impression created in the mind of the court.

      1. 19.1.1

        Ned help me here. Merely adding a Field of Use doesn’t work in all cases. Is there a difference here between 101 and 103 of the Statute? In other words, limiting to HUD use would definitely have seen off the 101 attack even if, in the end, it provides little or no assistance under 103.

        You see, Ned and Paul, I suspect that the invention lies in the insight that one could stack the sensors. Having had the insight, calling up the math is routine and applying the math to a HUD in a helmet is routine.

        On that basis, it strikes me that the claim in suit was defensible.

        1. 19.1.1.1

          Max, I think the spec noted that the reason people did not use the sensor arrangement claimed was because the calculations were too complex and could not be done fast enough for a pilot.

          The invention appeared to be in the math.

            1. 19.1.1.1.1.1

              This is not an idle “correction” by the way, as yet again, the difference between the invention as claimed (and claims being taken as a whole) and the gist of the invention point out a very real difference: gists can hand wave away those pesky “objectively physical” things really there in the claim.

              This ability to eliminate actual parts of a claim results in the court having the ability to eliminate a section of 101 – the very real danger of anti-nominalists lie in the logical conclusion that the sword of “Gist/Abstract” was provided by the Supreme Court with NO limits.

              Hey, I “get” why this is an “inconvenient fact” that I keep reminding people of, but it is a fact that simply cannot be ignored in each, any, and even every case that is presented on these boards.

              The elephant in the room is that the a Rule of Law as written by the Supreme Court is just incompatible with the actual law as written by Congress.

              There is only one master of the statutory law that is patent law. That master does not wear black robes (or as the analogy presents itself, the fine raiments of one’s birthday suit).

    1. 19.2

      Max, 42 claims, not one of which is limited to a Heads Up Display. Not one.

      The claims go into great detail about the prior art. But get close to the novel subject matter, and presto, we get into abstractions.

      The Abstract says this:

      Inertial trackers have been successfully applied to a Wide
      range of head mounted display (HMD) applications includ
      ing virtual environment training, VR gaming and even
      ?xed-base vehicle simulation, in Which they have gained
      Widespread acceptance due to their superior resolution and
      loW latency.

      Simply limiting the claims to HUDs (with the claim construction used by the court to include the novel math) would have saved these claims. Why didn’t they have even one claim directed to the HUD application?

      Filed, April 2000.

      The patent can be fixed with a reissue. However, that will invoke intervening rights so that past infringers are off the hook.

      link to google.com

    2. 19.3

      “what surprising new function or result can be derived from the combination of features claimed in claim 1 of the patent in issue”

      The court itself ruled it is not obvious “Although the concept of tracking the motion of a moving object relative to a moving reference frame may have been novel and nonobvious, …”

    3. 19.4

      Paul, if this is the way you think about patents do us all a favor and don’t attend the AIPLA and please go find something else to do.

      Now flip and try a real argue. Cite art that renders the claims obvious rather than telling us your speculative nonsense.

      1. 19.4.1

        And construe the claims as one skilled in the art would in light of specification and consider enablement.

        You know, Paul, try to be a real patent attorney and not a witch burner. Shameful post by you Paul. Please find another profession.

    4. 19.5

      “surprising new function or result”

      Really, Sir Monty Python II?

      This is your personally designed test?

      1. 19.5.1

        I am sure that the real legal lesson was just lost in translation.

        Maybe it was the “don’t offend the feelings of the judiciary” bit – it takes a child now to recognize that the King has no clothes, apparently.

  11. 18

    Unfortunate case for those wanting a liberal stance on eligibility. Some cheese-eating surrender monkey defence contractor inventor has the gall to ask the US DoD for more, to claim some financial compensation for use of patented Thales technology. The outcome, that the Thales claim could not be entertained, was never really in doubt. Or was it?

    One interesting thing for me is how quickly the case came to a decision. We know that investors do not like ongoing uncertainty, but it seems the government likes it even less. Was the court chivied into getting its decision out with a minimum of delay? If so, how does the DoD make it so effective?

    As for the Claimant, Thales, at what point was it no longer possible to amend the claim (in the way contemplated by posters here) to something a bit less “abstract”? Did the door shut before or after Alice came out? Bit of a bummer, I should have thought, if you have to commit to the abstract claim and then SCOTUS issues the Alice judgement.

    Presumably the case is non-precedential though. Can we therefore now put it out of our minds?

  12. 17

    I give up. Let’s implement 1 week terms for all fed judges. This decision is horrible. Reject claim under 102, 103 or 112, but 101? Really?

    1. 17.1

      the decision is confusing given the claim construction.

      but your reaction to it indicates that you are part of the problem.

      1. 17.1.2

        Says the one chasing windmills and attempting NOT to recognize what happened (by Congress, and not his scapegoat target Rich) in 1952…

        The hypocrisy…

    2. 17.2

      I am with you brother. Alice test: Set up a strawman – knock it down with surmise and conjecture.

  13. 16

    Tough case bros. I haven’t read the whole thing yet but from what D said, and from what I see in the claims, and finally from what they’re saying was described as the invention throughout the spec it sounds like the court correctly made the call. If it was indeed the intention to preempt all uses of the formula in x field then that’s goin down.

    That being said, they may well have made a mistake on this one in so far as maybe there are plenty of uses left outside the claim. I don’t know as of now.

    Overall, looks like this is a rare case where the court successfully pulled back the draftsman’s veil.

    1. 16.1

      Totally agree. I do wonder if they included that it was for a cockpit helmet or for display in a cockpit, if that would have been enough to get beyond 101.

    2. 16.2

      6 That being said, they may well have made a mistake on this one in so far as maybe there are plenty of uses left outside the claim.

      Whether there are “plenty of other uses” outside this claim is not a relevant fact so it’s unclear what you’re talking about.

      1. 16.2.1

        “Whether there are “plenty of other uses” outside this claim is not a relevant fact so it’s unclear what you’re talking about.”

        If there be plenty of other uses outside the claim then it taint preemption brosef.

    3. 16.3

      If claim 2 was incorporated into claim 1, do you think this would have passed the court’s test:

      2. The system of claim 1 in which the first and second inertial sensors each comprises three angular inertial sensors selected from the set of angular accelerometers, angular rate sensors, and angular position gyroscopes.

      Claim 1 is broad, but that was the law in 2000. There should be a procedure to allow patent owners the opportunity to pay to incorporate dependent claims into independent claims – kind-of like a new re-issue patent, but only involving incorporating dependent claims into the independent claim.

      1. 16.3.1

        There should be a procedure to allow patent owners the opportunity to pay to incorporate dependent claims into independent claims – kind-of like a new re-issue patent

        The procedure is called applying for a narrowing reissue patent.

        But given the fact that it’s entirely possible for a valid or eligible dependent claim to depend from an earlier claim that happens to be invalid or ineligible, the reissue might not be the best use of money.

        If claim 2 was incorporated into claim 1, do you think this would have passed the court’s test:

        2. The system of claim 1 in which the first and second inertial sensors each comprises three angular inertial sensors selected from the set of angular accelerometers, angular rate sensors, and angular position gyroscopes.

        The answer depends, in part, on exactly what systems (and what types of inertial sensors) and uses thereof were contemplated by the prior art.

        Let’s face the facts shall we? All the value in this claimed “technology” resides in the apparently novel magical “element” that takes information from the old sensors and uses that information (somehow) to “determine orientation” “automatically” in a fast and extremely accurate manner. If it isn’t fast and it isn’t extremely accurate, nobody cares.

      2. 16.3.2

        This is why claims are invalidated, not the entire patent. If claim 2 (or any other claim) has merit under 101, the patentee could bring the action elsewhere if another infringer were found, especially given the lack of precedent here.

        Unless the opinion set forth a reasonable position on the rest of the claims there is little to hold back the patentee in the future.

      3. 16.3.3

        I kinda doubt it, looks like that one either stands or falls with claim 1. But it may, it’d take more looking into than I’m doing right now.

    4. 16.4

      6, the claims recite no algorithm or equation or law of nature, yet the court clearly constructed them to cover the corresponding math described in the specification.

      I call this bogus.

      Still the claims are invalid as claiming a result.

      How would you hand the claims as written, not the construed claims, in the PTO?

      1. 16.4.1

        the claims recite no algorithm or equation or law of nature, yet the court clearly constructed them to cover the corresponding math described in the specification.

        How does a generic information processing “element” determine a fact from numbers embedded in a signal without using logic or math?

        Note also that the claim on its face covers not just the math in the specification but any other math that would suffice to achieve the broadly stated goal.

      2. 16.4.2

        ” yet the court clearly constructed them to cover the corresponding math described in the specification”

        They didn’t merely “construct” them to cover the corresponding math. They noted that it appeared to be the intention to cover the corresponding math. I’ve had this a verrrry situation arise in one of my own cases. And they just amended a bit and it was fine.

        “I call this bogus.”

        Well brosef, you’ve never really been on the preemption train. Choo choo, we leavin the station without ya!

        “How would you hand the claims as written, not the construed claims, in the PTO?”

        Very similarly if I happened to notice what the court did. That being said, I may well have missed it. It takes a lot of digging into such matters to see those things.

          1. 16.4.2.1.1

            Yes anon, and for the thousandth time WHAT is preempt is what matters. If you’ve got ineligible subject matter all tied up within your claim your claim goes down. This is regardless of how fancy your drafting was.

            1. 16.4.2.1.1.1

              Claim as a whole 6 – you don’t get to parse like you are attempting.

              Let’s leave the fingers out of the Wax Nose.

              Keep in mind that claim as a whole already capture the mere aggregated claim scenario. There is no need to obfuscate here.

              1. 16.4.2.1.1.1.1

                ” you don’t get to parse like you are attempting.”

                Tell it to the courts, your congress, your prezzy and my hand brosefus. Though in this case there was no “parsing” taking place. All the court had to do was look to what was actually the subject of the claim.

                “Let’s leave the fingers out of the Wax Nose.”

                I might join you in that if there weren’t folks all the time trying to preempt on judicially excepted subjee maters.

                1. LOL – you too want to use the broken scoreboard, failing to realize that we are talking about the fact that the scoreboard is broken.

                  Wake up son.

  14. 15

    Here is where Judge Wheeler went off the rails:

    “Plaintiff’s claims here are not tied to any particular machine that is integral to the claimed method of determining the relative orientation of two tracked objects.”

    1. 15.1

      Last time I checked, an “element” is not a particular machine.

      Maybe the claim drafter should have called it a “tangible polyintertial processing module.” That sounds sooper dooper techno!

      LOL

      1. 15.1.1

        Yup, because “machine” won’t survive the Supreme Court’s “Gist/Abstract” sword….

        Isn’t it just great how the words of Congress can be made to just disappear from statutory law?

        /off sardonic bemusement.

        1. 15.1.1.1

          Isn’t it just great how the words of Congress can be made to just disappear from statutory law?

          Of course we all know that new books, like any other old media with new information on it, is a “manufacture”. And we all know that thinking is a process. And we all know that logic isn’t eligible for patenting.

          Now watch “anon” dance his little dust-kicking shuffle while simultaneously genuflecting before the “words of Congress.” There never was a bigger hypocrite in the history of patent law, nor any commenter so transparently devoted to squelching any and every discussion of subject matter eligibility. Cherish the laughter, folks.

          1. 15.1.1.1.1

            Dude. There’s problems and then there’s making yourself the problem. This case is about a bad job of judging and why. Not about you.

            1. 15.1.1.1.1.1

              Dude. There’s problems

              And then there’s the use of sockpuppetry to pollute threads with nattering naybobisms and insults.

              Your li’l bro “anon” was a professional abuser for years. He get help in the form of his sockpuppetry being called out by the blog owners (after he denied it — whoops). Maybe you need some of that help, too? Starting to seem like it …

              1. 15.1.1.1.1.1.1

                How is your transperancy challenge coming along with Dr. Noonan?

                What a Chump.

          2. 15.1.1.1.2

            There is no song and dance from me Malcolm, as I merely point out that you dissembled and attempted to descend into a non-Useful Art type of argument.

            You are wrong at the gate.

    2. 15.2

      How, are you construing the claim to cover the corresponding Heads Up display described in the specification?

      If so, what is your legal justification for incorporating all that structure into the claim?

  15. 13

    The patent system is beyond broken. If the Supreme Court decides to create a “new” test that basically invalidates a slew of patents, isn’t it only right that the patent owners would be given a chance to change the claims to conform to the test under a special fast-track procedure? Where is the equity and justice for patent owners who played by the rules, spent millions of dollars, and now find that their patent portfolio is not worth the paper it is printed on? This may be the end of patent law in the US. How can any CEO of any company continue to spend any money on patents that will be invalidated in IPRs or the courts over a new hurdles put up by the Supreme Court? Why not just spend the money on litigators who will claim everything is an abstract idea and nothing can be patented?

    1. 13.1

      This may be the end of patent law in the US.

      Because “sunny” doesn’t get his favorite claims.

      Was there ever a more entitled self-important class of attorneys than the patent attorneys who habitually defend the lowest forms of innovation and the worst patents ever granted?

      How can any CEO of any company continue to spend any money on patents that will be invalidated in IPRs or the courts over a new hurdles put up by the Supreme Court?

      Like this: “Here’s some money. Spend it trying to obtain a junky claim because this ignorant investor whose money I want to grab really, really likes patents.”

      Where is the equity and justice for patent owners

      The nation weeps for these poor persecuted wealthy people who never, ever seem to get their way in their own minds. Boo hoo!

      1. 13.1.1

        So therefore it’s okay to do a crappy job of applying the law?

        1. 13.1.1.1

          Sorry, sockie. You keep switching your nyms like a l0ser and it’s not worth my time to try to educate you.

          Just keep flailing and I’ll keep laughing.

          1. 13.1.1.1.1

            Where is the Johnny Walker school of law by the way?

    2. 13.2

      This has nothing to do with the Supremes. This is a problem with judges who can cut and paste case law but have no experience applying it to patent disputes.

      1. 13.2.1

        In fact, sockie, it’s really just a problem for a tiny, tiny, tiny handful of desperate wanna be “innovators” (quite often patent attorneys themselves) who want to exploit the patent system for their personal gain at the expense of everyone else and the integrity of the system. Those people were, in fact, aided by judges whose understanding of the patent system could fit in a thimble.

        1. 13.2.1.1

          MM, have you had a chance to google the plaintiff in this case? Thales Visionix is not a small company, but looks instead like the leader in this field. They don’t appear to fit your “desperate wanna be innovators” because they may be actually producing the leading products in this field. That is even stated in the beginning of the decision, “its patented technology is critical to the success of the F-35 Joint Strike Fighter (“F-35”), the first tactical fighter jet in 50 years without a heads-up display system. ”

          So the CEO who spent millions on developing this technology is told that their patent is not valid because the court is supposedly following the Supreme Court’s new Alice test.

          PS I am not associated with TV1 in anyway or the law firms asserting this patent.

          1. 13.2.1.1.1

            Thales Visionix is not a small company, but looks instead like the leader in this field.

            And if they play their cards intelligently, they’ll continue to be “a leader”, with or without junky patents like this one. Did they lose some money here? Sure. Did they lose all of their money? Not even close. Most people wish they had that kind of “problem.”

            they may be actually producing the leading products in this field

            Glad to hear it. They should hire some better patent lawyers.

            the Supreme Court’s new Alice test

            Again: if you think “the Alice test” is “new” you haven’t been paying attention to this blog for the past decade or so. Maybe you were paying attention to some other blog that is reliably wrong about pretty much everything that matters.

            1. 13.2.1.1.1.1

              I wish they had lost your money. And preferably all of it. Then we’ll see how sanguine you are.

          2. 13.2.1.1.2

            Don’t you know? Medical pills are generic under Alice and so a chemical formula cannot be tied to any particular pill that is integral to the claimed formula.

            1. 13.2.1.1.2.1

              Medical pills are generic under Alice and so a chemical formula cannot be tied to any particular pill that is integral to the claimed formula.

              Translation: “If I can’t have my favorite claims then nobody can have any claims because all claims are the same when I stick my head into this here sandpile.”

              Deep stuff. Please tell us about how new flying machines aren’t eligibile for patenting either. That’s always fun.

              1. 13.2.1.1.2.1.1

                Here’s a suggestion then Malcolm – use actual critical thinking to make your case. If you only offer the “whatever” sandpile, don’t be surprised if the natural and logical conclusions are drawn using that sandpile.

                Yes, this does mean that you will need to use actual law and actual facts and do more than just pound on your table of opinion/policy/”all-software-is-ineligible-per-se” feelings.

                You are the one that needs to recognize that the Court has provided NO limit to the “Gist/Abstract” sword. That sword is coming to your very own backyard soon.

    3. 13.3

      sunny: Where is the equity and justice for patent owners who played by the rules, spent millions of dollars, and now find that their patent portfolio is not worth the paper it is printed on

      Just for the record: when I first started to see the wave of junky information processing claims come through the system –courtesy of my clients — I informed the clients in no uncertain terms of the issues presented by those claims. I explained to them the arguments I would make if such claims were asserted against me. My clients, at least, were able to make an informed decision.

      Obviously that wasn’t true for the clients of attorneys who either lacked the intelligence or the integrity to see the glaring problems and provide the necessary alerts.

      Choose your counsel wisely. Stop paying attention to information sources that spew misinformation and propaganda and have a track record of being endlessly wrong about pretty much everything.

      1. 13.3.1

        spew misinformation and propaganda

        Way too funny.

        Way way way way way way way way way way way way way way way too funny.

    4. 13.4

      This Bull makes me so angry that I have a very hard time controlling myself.

      Programmed computers without more are not per se eligible.

      Business methods are not eligible.

      Claims that end with a calculation without applying it are not eligible.

      Claims that claim a result are not patentable under Morse->Halliburton. The statutes the courts rely on have varied over the years. Today the court has said the issue is a 101 problem.

      Did you really think that State Street Bank was good law?

      Did you really think that Rich overruled Halliburton that was based on O’Reilly v. Morse when he got congress to enact 112(f)?

      Rich was your problem. It was he who tried to change the law because of his participation in crafting the ’52 Act, and his virtual control of the CCPA and the Federal Circuit for so long.

      Sue his estate.

      1. 13.4.1

        >>Programmed computers without more are not per se eligible.
        >>Business methods are not eligible.

        This is such nonsense from you Ned. You have learned how to characterize information processing machines in the language of the witch burners. But try to be ethical. Try.

        Deal with equivalence. Deal with it. You can’t. Deal with the fact that eligibility is not tied to ancient beliefs about innovation.

        Get that patents are to promote innovation. Get that Alice is total crxp. Alice is based on what? Do you even know? Alice is based on the SCOTUS by themselves absent any evidence concluding that “abstract” in their personal opinion based on the movies they watch does not promote. Ridiculous. The Royal 9 should be impeached for their never ending nonsense.
        The Royal 9 fabricated judicial exceptions — based on what Ned–based on “promote” in the Constitution. Then what did the Royal 9 do Ned? Then the Royal 9 unmoored the judicial exception from the Constitution and used them as if they were part of the Constitution to justify the new laws the Royal 9 passed.

        That is reality.

        Also, reality: information processing takes time, space, and energy. The conservation of information is the most important law of physics. The information processing machines are performing tasks better and more like humans every year. The information processing machines are like our brains.

        Deal with the equivalence of special purpose chips and software + GPCs. You can’t.

        Such nonsense. Filth really–just unethical filth for this stuff to be pushed.

        1. 13.4.1.1

          Night, you cannot be serious. You would advise your clients that a programmed computer, without more, is per se patentable subject matter?

          Perhaps Dennis could conduct a poll of his readers to determine how many would agree with you.

          1. 13.4.1.1.1

            Ned,

            Stop your dissembling.

            There is NO “per se” anything. You are trying to frame the question in a far too expansive manner – just like your fallacious attempts to talk about canards like non-Useful Arts as if legal implications fully apply (they just don’t – the classic Pauli principle)

            1. 13.4.1.1.1.1

              And you should also note that this IS – it is not something that can be “changed” by any poll offered, taken, or explicated on a blog.

            2. 13.4.1.1.1.2

              hey, a non, read Bernhart. There was no if’s, and’s, or but’s there.

              You stop. anon. You stop it with your diversion attempts, your strawmen, etc.

              Just answer the question.

              1. 13.4.1.1.1.2.1

                You quip “just answer the question,” but you have not asked one – least wise, an inte11ectually honest one that recognizes the counter points (the LONG list of ones specifically in answer to your relentless propaganda) concerning actual law by Congress.

                Maybe you want to stop labeling the attempt to clear away your propaganda as “diversion” or “strawman” since they are not – and actually engage the counter points you so often run away from.

    5. 13.5

      If the Supreme Court decides to create a “new” test that basically invalidates a slew of patents, isn’t it only right that the patent owners would be given a chance to change the claims to conform to the test under a special fast-track procedure?

      The Supreme Court specifically said in Diamond that Einstein couldn’t have patented e=mc^2. That was 1980. It was citing Funk Brothers when it said that. That was 1948. I think they kind of had notice that laws of nature and math were not patentable prior to filing.

      Where is the equity and justice for patent owners who played by the rules, spent millions of dollars, and now find that their patent portfolio is not worth the paper it is printed on?

      The claimed invention was a mathematical proof, not the design of a fighter jet nor even the coding of computer software (that would be what the government and it’s contractor created). I don’t know what you think mathematicians get paid, but clearly I want to come work for you.

      1. 13.5.1

        Random, the problem was caused by the patent attorneys who for so long learned to draft “configured to” as if that were enough. Claim a result? Well didn’t Rich say there was no problem in Donaldson which overruled cases that prohibited such claiming.

        They should be angry and rightfully so — but their anger needs to be directed at the source of the problem, and it was just one man who is behind it all.

        1. 13.5.1.1

          Random, the problem was caused by the patent attorneys who for so long learned to draft “configured to” as if that were enough.

          Is the claim drafting an issue here? Look at his spec, he knows all he did was a mathematical proof. Let’s assume he thought he was allowed to claim more – how could he think anything but that his only contribution was a law of nature or math?

          1. 13.5.1.1.1

            Random, there was a real invention here — and if claimed to as a part of a Head Up Display, the claims would have had no 101 problems.

            My point is is that practitioners had for so long been schooled that a programmed computer by itself made a claim eligible. Thus one, they thought, could make a claim eligible by simply claiming a processor configured to do something. This of course supported directly by Application of Bernhart and State Street Bank.

            I do not know if you read the brief of the AIPLA the Supreme Court in Alice, but that was the position they were arguing the Supreme Court – that a programmed computer by itself was sufficient for 101 purposes.

            1. 13.5.1.1.1.1

              Thank you Ned. If patent attorneys drafted claims in 1999-2000 (date patent issued) following the current patent law, why not give those important patents a chance to be amended with “heads up display” language that you suggested? A special proceeding to make sure amended patent passes 101 issues, but without those special pleading requirements for narrowing reissue. That was the point I tried making only to be picked apart by narcissists naysayers who think they are superior and know all. Do you know a forum where solutions are proposed to make claims ruled invalid by courts pass the 101 test?

            2. 13.5.1.1.1.2

              Random, there was a real invention here — and if claimed to as a part of a Head Up Display, the claims would have had no 101 problems.

              A particular heads up display would have had no 101 problems. In reading the spec I don’t see the invention of a heads up display.

              1. 13.5.1.1.1.2.1

                ^ the post above mine (13.5.1.1.1.1.1) illustrates the point. Any particularly claimed HUD from 2000 wouldn’t be the subject of a contractor’s invention in 2015. That’s not how military tech works. It’s like when you assert a patent from the 90s in computer software. It’s highly unlikely someone is essentially re-inventing a stone age wheel (as that is what 20 years in software is), so it’s most likely an ovebroad claim.

                1. improvement thereof” seems to be a big conceptual stumbling block for you Random….

                  The ladders of abstraction have many rungs. You keep on acting like there are only two: the present day and the top level one. May I suggest that you return to engineering school as you do not grasp the understanding of what the ladders of abstraction mean.

  16. 12

    In other 101 news, the PTAB correctly tanked as ineligible a claimed method of “applying an algorithm” (yes, folks, the claim recites “algorithm” generically) to two molecules to determine which of the two is more likely to be useful.

    There is a very poorly reasoned critique of the PTAB’s decision over at the blog where speading misinformation and hyberbole about 101 has been the rule for many years (I’m not going to link to it). Interestingly, the piece was written by an anonymous commenter (presumably a patent attorney with a direct financial investment in the outcome — how else to explain all the errors?).

    Among other mistaken observations are the following:

    it is not helpful for the PTAB (or the CAFC or patent examiners) to provide these opening general descriptions of what the invention “involves.”

    Wrong. General descriptions of what the invention involves are always helpful. It’s always helpful to cut through the legalese and jargon and summarize for readers what was (allegedly) innovated.

    creating an artificial generalized version of the claim at the outset is likely to doom the analysis.

    Nope.

    The claim does not merely recite “an algorithm,” but instead an algorithm with some level of detail.

    The claim states that the algorithm has genric “variables” and generic “coefficients” associated with the structure of the molecules. That’s not “detail.” That’s a joke, friends.

    it would have been helpful to know whether the claimed process incorporates new data inputs, selects important minimal inputs from a list of candidates known in the art, gives different weight to known inputs or combines them in a new way, etc

    If the author can’t answer this question using his/her science background and a modicum of common sense, the author has no business writing about the subject. The PTAB doesn’t need to write its opinions for elementary schoolchildren.

    The PTAB does not analyze the individual steps or how they integrate into the overall process, but instead boils everything down to the algorithm

    The “process” is “the algorithm.” You select the subject molecules, then you “apply”, “determine” and “generate” the output data. There is no “integration” with the physical world to discuss because the physical world is completely unchanged by the application of the algorithm.

    Appellants made the far more compelling argument that taking a general idea and devising a specific modification of it such that it performs better or is better suited to a new application is sufficient for eligibility.

    That’s a ridiculous argument because new abstractions that are “better” than old abstractions are just as ineligible as the old abstractions. Does the PTAB need to waste its time and resources providing detailed rebuttals to nonsense like that? Of course not.

    at one point the PTAB states: “Unlike the claims at issue in Diehr, Appellants’ claims do not involve the transformation of an article into a different state or thing. See Diamond v. Diehr, 450 U.S. 175, 184 (1981).” It is true that Claim 85 does not appear to recite transformation of a physical article. But the phrasing of this statement casts Diehr in a broad negative light and may be viewed as resurrecting machine-or-transformation, rejected by the Supreme Court as the exclusive test for eligibility in Bilski.

    Try to parse that one out. Look, folks, forms of the so-called “machine or transformation” test for subject matter eligibility are very much alive and well. All the Supremes did was informed everyone that the simplest form of that test is not the sole test for subject matter eligility. Make no mistake: if there is no new machine described in objective physical terms in your claim, and there is no new transformation of physical matter, then you are almost surely facing a serious subject matter eligibility issue.

    Practitioners … are hungry for guidance

    Sure they are. You can hand feed “guidance” to some practioners all day long and they still wont get it. In part that’s because of people like “Sue D. Nym” continue to kick up dust and create confusion wherever possible.

  17. 11

    Paul Morgan: [H]ow much more “meat” would need to be put on this “element” claim “bone” to avoid both current 101 rejections AND what could have been a 112 rejection for inadequate specification examples to support such a very generic claim? Where are those lines to be drawn?

    Excellent question and one that I’ve been asking the defenders of the worst patents ever to answer for many years now.

    Novel objective physical structure would be a great start, of course. It’s 2015. Long past time for the so-called “computer arts” to grow up already.

    Without objective physical structure it’s anybody’s guess because logic is, well, logic. If some logic is more patent worthy than other logic, then someone needs to step up and explain (i) exactly why that’s the case and (ii) how that logic is going to be evaluated against the logic in the prior art (logic wasn’t invented yesterday, you know) by both the PTO and the courts. Right now the PTO is simply flailing about trying to serve it’s incessantly whining “customers” who, in turn, continue to demand and assert the worsts patents ever granted in the history of any patent system on earth.

    1. 11.1

      You asking others what you need to provide to back up your maltreatment of the words of Congress…

      Is anyone surprised?

    2. 11.2

      …and once again the internet style shout down of pretending an optional claim format is somehow the only “true legal” claim format….

      What was that about “growing up”…?

      Maybe you need to have your short script “grow up.”

  18. 10

    Essentially, you have functional language at the point of novelty (okay, sorry for swearing in patentese, but you know what I mean). The invention lies in the “configured to determine” limitation. But that’s all it says. Take old components, and configure them to solve the well-known problem.

    For example, everyone wants to beat the stock market and get rich. So I write a claim to a computer, a memory, inputs, outputs, etc., with a final limitation “configured to trade stocks so as to always outperform the DOW index.” Is that eligible? Have I advanced the public knowledge in any meaningful way?

    1. 10.1

      So I write a claim to a computer, a memory, inputs, outputs, etc., with a final limitation “configured to trade stocks so as to always outperform the DOW index.” Is that eligible? Have I advanced the public knowledge in any meaningful way?

      Of course not.

      But the defenders of the worst patents ever will respectfully ask you to refrain from playing the stock market should you continue to ask these kinds of questions. They’re very serious people!

      1. 10.1.1

        …because Malcolm inserting his usual C R P line of “so serious” is itself, well, “so serious.”

        /off sardonic bemusement.

      2. 10.1.2

        So tell us MM this is the worst patent ever? Tell us why that is. Tell us more about what you know about this technology.

        My guess: you are completely ignorant about the technology or the innovation that is behind this patent. You are merely a paid anti-patent troll.

      3. 10.1.3

        MM wrote “So I write a claim to a computer, a memory, inputs, outputs, etc., with a final limitation “configured to trade stocks so as to always outperform the DOW index.” Is that eligible? Have I advanced the public knowledge in any meaningful way?”

        If enabled, absolutely. Everyone would want a license. If not enabled, then invalidate under 112 not 101.

        Why are all the software patent bashers so afraid of 102/103/112? Because they represent the infringers who thrive on the work of others not because implementation in software is not inventive.

        1. 10.1.3.1

          Why are all the software patent bashers so afraid of 102/103/112?

          Software patent bashers aren’t afraid of those statutes at all. On the contrary, tons of software claims fail under all those statutes and all those statutes are routinely used to tank junky software claims.

          101 is preferred, of course, because subject matter analyis is many situations is free of the time and money that is wasted addressing (“activist”) judge-created nonsensical “factors” that are part of the obviousness determination (e.g., how many people licensed the junk patent, etc).

          Also, as everyone knows, without a subject matter eligibility you end up in situations where the other statutes are useless. That was the loophole that the proponents of software patenting opened up for a while and which led to the US patent system turning into a miserable troll-polluted joke.

          1. 10.1.3.1.1

            As explained to you with simple set theory, it was NOT by way of judicial rewriting that permits the patent law allowance of functionally related printed matter.

            You know this and yet insist on deceptive spin.

            It was a Judicial doctrine that first constrained printed matter. The act of the judiciary to recognize (at least partially) its own over-reach with that doctrine and pull back when the printed matter in any particular instance exhibits behavior meant to be protected by patent law (utility by way of functionality), just is NOT as you falsely attempt to spin some “gift” of judges.

            Please stop using your deceptions to obfuscate this point.

            1. 10.1.3.1.1.1

              …and this applies across the board, in ALL art units, from magic hats to measuring cups and yes to anything involving software and computers.

              Don’t like it? Talk to your congressman. You are perfectly free to NOT use any innovation protected thusly.

    2. 10.2

      I don’t know. I haven’t read your specification. The claims aren’t there to describe every aspect of the invention. They are there to provide a finger print to IDENTIFY the invention.

    3. 10.3

      Except reality, you know, that the spec enables the determining step. So, everything you just said is disingenuous at best.

      You have to love these anti-patent nut jobs. So, let’s ask the judge what his job is. Is it determining an outcome? I think it is. So, if an inventor invents a computer to do his job and write a claim to determining the outcome and enables it in the spec then according to this genius judge with no science or patent law background it is ineligible.

      So, a machine that does the judges job is not eligible for patentability.

      OK. Sure. We are back to medieval Europe. Not a surprise given that we are dealing with people that are completely ignorant about science, real innovation, and patent law.

    4. 10.4

      A-thought, there is also a problem that the claim does not clearly call for using the results of the calculation to improve the display in the helmet. It seems to simply stop at the calculation. I am not so sure that “element” can be construed to be the display mechanism or simply some means for calculating. But unless it is construed to be a specific display apparatus, then the claim is directed to a calculation as in Flook and stops there.

      1. 10.4.1

        I think this is a good point. It seems the inventors were trying to solve a technological problem – how do you provide a display to a jet fighter pilot, which the pilot can see even when not looking straight ahead as in the old heads-up display systems. The inventors solved that problem by providing a helmet-based display along with the inertial sensors that could be used to determine the orientation of the helmet.

        In that respect, the inertial sensors are analogous to the “thermocouple” that Justice Thomas relied on in distiguishing Diehr in the Alice decision.

        Maybe if the patentee here had claimed a helmet-based display system, rather than just a “system for tracking the motion of an object,” the claims would have been closer to Diehr and thus patent eligible.

    5. 10.5

      Enablement is not a 101 issue.

      Beware the “whatever” (lack of) critical legal thinking – you are not even engaging the basics.

      1. 10.5.1

        Don’t fall into the NWPA line of thinking. Morse enabled using electricity to convey information at a distance, that does not mean he is entitled to every embodiment of that field that will ever exist. He had a telegraph, not an internet computer, even though an internet computer still uses electricity to convey information at a distance. Enablement is not the sole standard of reach of invention.

      2. 10.5.2

        anon, there is a relationship between enablement and 101. The brand spanking new Alice is about abstract. Now, in reality, abstract would mean that the ladders of abstraction are not enabled. That is what abstract means in the real world.

        It is interesting that we get to know what it feels like to deal with the medieval church where the Pope burns you at the stake if you say that the Earth revolves around the Sun. Thanks Obama.

  19. 9

    Can’t believe people are defending this claim. It is two data gathering elements and a mathematical equation describing physics. This guy didn’t invent the relative orientation relationship – it’s inherent in the world, he just conveyed the relationship. It’s EXACTLY THE SAME as claiming e=mc^2 or the equation for gravity. Would you allow a calculation of gravity so long as it followed two elements for measuring the masses of the objects?

    These people engaged in a mathematical proof, they did not invent. It is irrelevant (as always) whether something is novel under 101. The fact that he was the first to perform the proof has zero bearing on 101.

    1. 9.1

      ” This guy didn’t invent the relative orientation relationship – it’s inherent in the world ”

      These guys didn’t invent the shape of a wing having a bearing on aerodynamics – it’s inherent in the world……

      1. 9.1.1

        That’s not what was claimed, but a disclosure of the lift equation and then stating “I claim every wing that produces lift” would also not be an invention.

        1. 9.1.1.1

          Wings had already been invented.

          What they claimed was moving a portion of a wing out the plane of the wing. They disclosed their preferred embodiment, which involve twisting or “warping” the wing. They enforced the patent against ailerons.

          1. 9.1.1.1.1

            What they claimed was moving a portion of a wing out the plane of the wing. They disclosed their preferred embodiment, which involve twisting or “warping” the wing. They enforced the patent against ailerons.

            Exactly – that has nothing to do with this invention. They were talking about mechanically moving things. They were not attempting to claim lift and anything that would result in or from lift. This guy is claiming relative tradjectory determination and the only machines he is claiming is conventional machinery to gather data for the determination

            1. 9.1.1.1.1.1

              “They were not attempting to claim lift and anything that would result in or from lift.”

              And “this guy” is not attempting to claim relative motion and anything that would result from relative motion.

              “This guy is claiming relative tradjectory determination and the only machines he is claiming is conventional machinery to gather data for the determination”

              No he isn’t. “This guy” is claiming a particular class of system to determine relative motion.

              Eli’s machine was made of conventional components.

              So was Wilbur and Orville’s machine made from conventional components. It doesn’t get more conventional than wood, cloth and rope.

              1. 9.1.1.1.1.1.1

                Les: Eli’s machine was made of conventional components.

                Nobody saw what you just did there, Les.

                Riiiiiiiiiiight.

              2. 9.1.1.1.1.1.2

                No he isn’t. “This guy” is claiming a particular class of system to determine relative motion.

                A particular class of system? He’s claiming two devices to measure the data that he’s going to use for the determination step.

                Just so we’re clear – would you say a claim of the equation of gravity is eligible so long as you turned it into a system that included a scale for figuring out someone’s mass when a scale was conventionally known? Would you find eligible a claim to determining if two cars were going to collide because you throw them in a system with radar guns? What about a completely ephemeral story embodied on a conventional book? How about “a system comprising an old camera interacting with a newly discovered naturally occurring plant or animal”? I’m just curious how little machinery someone needs to add to a claim to fool you into thinking they’re not actually claiming something ineligible.

                By the way, how would you reject “a system comprising an old camera interacting with a newly discovered naturally occurring plant or animal”? It passes 101 because it is a system with a man made machine, and it passes 102/103 because no system has ever contained the new animal. What’s your basis for rejection of this claim? Please tell me you’re not going to give weight to the new animal.

                Eli’s machine was made of conventional components. So was Wilbur and Orville’s machine made from conventional components. It doesn’t get more conventional than wood, cloth and rope.

                “A machine comprising conventional components” is not eligible. “A machine comprising conventional wood, cloth and rope” is also not eligible. You can’t hand someone a Lego box and claim every configuration of those Legos under 101, regardless of if combining the Legos in every manner is in fact enabled under 112. Being reductionist is reductionist. One can use conventional items in particular ways and be eligible. That doesn’t mean that stripping out the particular manner or configuration from the claim would leave it still eligible or valid.

                You routinely try and assert by analogy that because some advancement was made that any claim scope put forward should issue/be valid. Not all advancements are protected by patent law. Of the advancements that are protected by patent law, not every exclusionary scope asked for is the correct one. Eli invented something just like Morse did, but when Morse fashioned an improper claim scope it was still struck down because the particular machine he invented and the broad field he claimed were two totally different things. Einstein postulated e=mc^2. Patent law doesn’t reward him at all, despite that being a significant advancement. Morse or Einstein can’t point to Eli as a reason his scope is valid, and you can’t point to Eli as a reason this scope is valid.

                1. RG, I applaud the effort. All this has been pointed to Les before, as you are surely aware. None of what you’re saying matters to Les and his cohorts because Les and his cohorts know that you are wrong. All machines are eligible, no matter how they are claimed, as long as you use the word “machine” — because they say so! Same with every process. And surely that is what Congress meant when they drafted 101. How could it be otherwise? No, don’t try to answer that. You’re already wrong!

                  By the way, how would you reject “a system comprising an old camera interacting with a newly discovered naturally occurring plant or animal”? It passes 101 because it is a system with a man made machine, and it passes 102/103 because no system has ever contained the new animal. What’s your basis for rejection of this claim?

                  They have no basis but you’re not suppposed to talk about stuff like this. For starters, it requires the use of reason and logic and that’s not allowed. What is allowed is reading the statute in a vacuum and pretending that you were born yesterday.

                2. MM, you are right, of course. These people seem wedded to the nominalist approach to 101 so long advocated by Rich. I suspect they were all taught from the time they were in the patent attorney nest that if one nominally claimed a useful machine, etc., that one passed 101, move on to 102/103/112.

                  They never understood Benson because it, in essence, was a claim to a programmed computer, and computers are machines.

                  In their view, the only thing wrong with Bilski’s claims was their not being limited to a computer.

                  Ditto Alice.

                  They cannot accept that the only thing new in Mayo was the law of nature.

                  They cannot accept that DNA is not a “new” composition even though it was discovered. They continue to believe that “new” is equivalent to “not known,” thus the Supreme Court must be applying some unconstitutional “exception.”

                  The denial is across the board, but their belief system was, but no longer is, firmly based in Rich’s view of 101 where he actually said everything they believe in.

                  Now we get to “functional at the point of novelty.” They thought that Rich had firmly put that baby to rest to no longer to bother the adults in the room. How many times have we heard that Halliburton was “abrogated.”

                  But now that baby has woken up and claiming results will now get you a quick exit on 12(b)(6) motion or on a summary judgment. So much for avoiding the use of means-plus-function. That in hindsight appears to be a mistake.

                  But they have a right to complain, Malcolm, in that the neither the CCPA nor the Federal Circuit ever stood up to Rich, and that allowed him the warp patent law for a very long time, so long that practitioners thought they could get away with 101 nominalism and functional claiming without fear.

                  They may have some explaining to do to their clients. But tell the client the truth will not be among the things discussed. Blaming the Supreme Court is the what they are doing as if they really didn’t know better.

                3. Pure C R P Ned – again with the scapegoating and false spin, ignoring who (Congress) did what (change the actual law).

                  Windmills Ho!

        2. 9.1.1.2

          …. oh, and by the way “that’s not what was claimed” can be applied against your comments at 9.0 and the actual claim under discussion.

    2. 9.2

      I love how many people think it’s not a 101 issue to create a system to hide the claim to non-statutory subject matter.

      1) I claim a story about a boy wizard. <—- Nobody questions it fails 101

      2) I claim a system comprising a story about a boy wizard, paper to write it on and a pencil to write it with <——- About half of the people get confused.

      Is there a suggestion or assertion anywhere that this guy invented a pencil? Or paper? Or that you could use pencil and paper to record information? No, everyone knows the "advancement" he is seeking to patent is the story.

      1) I claim a mathematical equation that describes a pre-existing relationship of physics in the world <—- No question

      2) I claim a mathematical equation that describes a pre-existing relationship of physics in the world, and a conventional processor to calculate that equation, and conventional sensors to gather the data for performing the calculation <—— Bottom half confused

      When the invention comprises non-patentable subject matter, adding background limitations to hide that fact do confer eligibility.

      1. 9.2.1

        RG: When the invention comprises non-patentable subject matter, adding background limitations to hide that fact do not confer eligibility.

        Pretty sure that is what you meant to say. ;)

      2. 9.2.2

        You really don’t get any of this, do you Random?

        No one is “hiding” or “creating a system to hide.”

        What people are doing, are attempting to follow the words of Congress.

        Don’t like it? Write your congressman. But please, get a clue as to what the law actually is.

        1. 9.2.2.1

          No one is “hiding” or “creating a system to hide.”

          Because “anon” said so! And he’s a very serious person.

          What people are doing, are attempting to follow the words of Congress.

          Congress never said that “systems” were eligible subject matter.

          Nice try, though.

        2. 9.2.2.2

          What people are doing, are attempting to follow the words of Congress.

          They can “attempt” all they want, but taking unpatentable things, like e=mc^2, or things that appear in nature and trying to put them into a statutory category like “I claim any machine that calculates e=mc^2” or “A system comprising naturally occurring flowers and a machine that interacts with the flowers” will be seen for what it is – an attempt to claim the unpatentable thing.

          1. 9.2.2.2.1

            For what it is…

            So declares the Red Queen’s young apprentice

            Just not that compelling, Random.

              1. 9.2.2.2.1.1.1

                Your “version” of that concept has been noted for its lack of veracity.

                Thanks.

                Pay attention to what the issues really are.

                1. As I have posted below:

                  People retreating to the “it must be right because the Court said so” are sticking their heads into the sand and missing what the actual issue is.

                  Pointing to a broken scoreboard when the discussion included the point that the scoreboard is broken only proves that you just are not aware of the issues in play.

                  Try to keep up son.

    3. 9.3

      Random, I see no mathematical equation in the claim. I see no law of nature in the claim. I see a claim to a result.

      I did a quick search of the opinion and did not see that they had construed the “functional” element under 112(f) in order to incorporate the mathematics or law of nature into the claim. So how can either you or the court say that the claim is claiming mathematics or law of nature when nothing like that appears in the claim at all.

      But what I do see in the claim is a claim to a result and that violates Halliburton in the recent Federal Circuit case of Internet Patents.

      1. 9.3.1

        I see a claim to a result.

        Yeah but it’s a result applying math describing physics. It’s closest to Mayo where the asserted invention is a disclosure of a pre-existing relationship. There it was a drug in the body. Here it is physics.

        how can either you or the court say that the claim is claiming mathematics or law of nature when nothing like that appears in the claim at all.

        The invention was a mathematical proof –

        The inventors go on to describe kinematic equations involved
        in inertial tracking relative to a fixed platform. Id. at 3:27-4:9. They then review “basic equations of terrestrial navigation” for inertial tracking relative to the rotating earth. Id. at 4:52-54. These equations were “primarily a source of inspiration” for the section dealing with tracking a moving body relative to another moving body. Id. at 4:10-15. Then, “borrowing” these mathematics, the inventors made “modifications” to account for the motion of a moving platform instead of the earth. This modification requires an inertial measurement unit (“IMU”) to measure a variable angular rate vector for the moving object (for example, a fighter jet) instead of using the more constant angular rate vector of the rotating earth. Id. at 6:1-4.

        The novelty in this claim was a new calculation describing a pre-existing relationship – a mathematical representation of a law of nature.

        when nothing like that appears in the claim at all.

        Are you sure? Does “configured to determine” invoke 112f? The office would say yes. If so, does it import the equation described in the specification? Regardless, even if you’re right that it encompasses every way of achievement and is an abstract idea, you can’t get around the fact that each of those means would have to include at least some relationship of relative tracking as the heart of their means. Your AI point is taken, but I think the other categories are better fits.

        1. 9.3.1.1

          Any – and critically ALL – drugs only have utility after the effects “in the body” happen.

          Your “logic” just wiped out all pharmaceutical patents.

          Thank you, this century’s Mr. Duell.

          1. 9.3.1.1.1

            Any – and critically ALL – drugs only have utility after the effects “in the body” happen. Your “logic” just wiped out all pharmaceutical patents.

            Simply wrong. An unadministered drug has utility because it is capable of curing an ailment if it were to be applied, in the same way that one can claim a battery without having to claim it actively hooked up to something, or a saddle without also claiming the horse. It’s also why you can claim a non-transitory computer readable medium without also claiming a processor, even though the software is not actively “doing” anything without the processor.

            The key question here is whether you’re claiming the preexisting relationship or the novel structure. A claim to “curing cancer” or “killing cancer cells” is ineligible. A claim to a particular method of curing cancer is not. Cancer was always killable, nobody invented that. Someone may invent a particular method of killing cancer. This guy wants to avoid claiming the particular structure (because unlike a composition of matter, this invention at it’s base is still completely ineligible – simple math) so he claims the relationship. That doesn’t work.

            1. 9.3.1.1.1.1

              You quite miss the point there Random that the drugs – EXACTLY like software – only have utility because of the subsequent “functionally related.”

              You curse-ade against software simply is a curse-ade against patents.

              1. 9.3.1.1.1.1.1

                You quite miss the point there Random that the drugs – EXACTLY like software – only have utility because of the subsequent “functionally related.”

                Everything only has utility because of the subsequent “functionally related.” A car performs the function of moving things and its utility is transportation. That doesn’t mean I get to invent a particular car and claim all methods of transportation or all combustion engines.

                I think the phrase you are looking for is that software only has “profitability” because of the subsequent functionally related scope. That may be true – that applying the patent laws to software result in poor motivations. That is an argument for changing patent laws though, not a statement of the current law.

                1. You are still very much missing the point here.

                  And no, I am NOT at all inserting a “profitability only if” angle. Thanks.

                  Take your time here and compare your own actual words (hint: you may have to recognize how poorly Prometheus was written).

    4. 9.4

      Is the following subject matter eligible (not asking if novel or nonobvious):

      A system for locating a lost object, the system comprising:
      a signal emitter mounted on the object;
      a receiver that receives a signal from the emitter and determines the location of the signal emitter, and thereby the object, relative to the receiver; and
      output means that provides information specifying the location of the object.

      1. 9.4.1

        No because “determines the location of the signal emitter” is not limited. Your problem is “My stuff is lost” and your solution is “find it” but “do the finding on a computer.” To be an invention the determine step would need to be particularly defined. Absent that particular definition the only thing the claim is encompassing is “determining a location” using conventional data gathering elements.

        Now when you describe the particular determining method, now we have something we can compare to conventional locating means to make a judgement as to whether its novel or non-obvious or not. If your means are entirely conventional (i.e. applying GPS in a world that already knows about GPS) its going to be anticipated or obvious. If your means are completely different you may have an invention.

        Every time you are performing information processing and you use the word “determine” you’re likely outside of 101, because it matters HOW you determine it and you’re not entitled to every means of determining. That is an entire field.

        1. 9.4.1.1

          RG: Every time you are performing information processing and you use the word “determine” you’re likely [ineligible], because it matters HOW you determine it and you’re not entitled to every means of determining.

          Yup. Basic stuff. And it was always basic.

          It’s amazing– and sad — that self-identifying patent attorneys still struggle with this stuff. Of course we know where the source(s) of their problems lies: an endless campaign of misinformation and ignorance.

        2. 9.4.1.2

          RandomGuy, are you saying that it is subject matter ineligible because:

          1- it is indefinite (To be an invention the determine step would need to be particularly defined. Absent that particular definition the only thing the claim is encompassing is “determining a location” using conventional data gathering elements) or

          2- it is preemptive (Every time you are performing information processing and you use the word “determine” you’re likely outside of 101, because it matters HOW you determine it and you’re not entitled to every means of determining) or

          3- ?

          1. 9.4.1.2.1

            1 and 2 (and a 3) are intertwined.

            The only thing an invention CAN be is a particular means of achieving something. If you disclose a particular means in the specification (so for example you use a grid method as opposed to a triangulation method) and you as the inventor are seeking to claim that particular means but fail to include a limitation, you have left out of the claim an important limitation and you fail 112b because you are not particularly claiming your machine with reasonable certainty under Nautilus and Wabash.

            But, the inventor might say, my invention is not any particular method of determination, but ANY way of locating, no matter how different from my disclosed methods, that utilizes an emitter/receiver. This routinely occurs in software, where an inventor provides a method but peppers it with language like “For example” or “In one embodiment” making it clear that the intent is to claim all means of achievement. When the inventor views his invention in this manner the thing he is claiming is a field, because he is claiming the result regardless of how achieved. He is never entitled to a result regardless of how achieved, as the means of achievement are the manner by which we have always distinguished inventions. Under this view of the invention it IS being particularly described by the claim, but now it is overbroad. This is a 101 rejection.

            Because post-filing a claim is construed to not import limitations from the spec the most likely interpretation is that this is a 101 rejection and not a 112b.

            A third thing to mention is that 112a tends to often go along with 101 when language of result (functional language) is used. The only way that one can enable and describe the full scope of “determine a location” is to have a finding that the art knows every method of determining a location. Most times that cannot occur, because science is inductive by nature and you generally can’t say you know all there is to know about something. If you look at Morse, the paramount 101 case, a lot of that language is language that today would be called enablement and WD. Disclosure of a single method of achievement does not mean the art can perform every method of achievement, nor that the inventor himself possesses multiple ways of achievement. Enabling/describing one point within a large scope is insufficient to meet the enablement/description requirements.

            So in short when you have an overbreadth situation the proper rejection to make (or challenges to make in court) are all of 101, 112a, 112b and the only solution to all of the rejections is to limit yourself to your particular posited means, as that is all you are ever allowed to claim – your means and equivalent means. There is no mechanism of either spec drafting or claiming by which you can validly be granted an exclusionary scope over a means of achieving the same result through means that the art would not consider being substantially similar to your own. Functional language routinely encompasses that scope (indeed, that’s the point of using the functional language) and therefore is routinely overbroad and invalid.

            1. 9.4.1.2.1.1

              RandomGuy, just making sure we are on the same page as to the code.

              101: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

              The only substantive question 101 asks is: is the invention a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”? 101 does not concern the specification, lack of written description, insufficient enablement, undue breadth. Those are all 112.

              In using the term “the invention”, 101 requires consideration of the claimed invention as a whole rather consideration of the subject matter eligibility of each of its individual components. This is the first place Alice got it wrong.

              The “new”-ness of the invention is determined “subject to the conditions and requirements of” the remainder of “this title”. I think this is where the confusion lies in the Court, because Alice asked whether or not there is subject matter eligibility at the point of novelty. So, first they dissect (improper) the claim to identify the point of novelty and then ask if that point of novelty is subject matter eligible.

              BUT 101 requires consideration of “the invention” and an “invention” is defined by the claim as a whole. If “the invention” was to be defined by a single element (as Alice improperly does), then why bother with the rest of the claim text and why bother with the requirement of 112b.

              112(b) concerns the claims
              “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”

              Notice that the inventor, not the Court, gets to decide what the “inventor regards as the invention”, and it is the claim as the inventor files it that defines what the “inventor regards as the invention”.

              The Court can’t willy nilly (as in Alice, Mayo and Myriad) completely disregard, and on top of that redefine, what the inventor regards as the invention by dissecting the claim and improperly only considering subject matter eligibility of only that part of the claim that the Court (not the inventor) regards as the invention.

              The inventor, not the Courts, get to define what “the invention” is, and the USPTO and Courts must consider the invention as a whole. So, 101 can only properly be applied to the claimed invention as a whole because that is what the inventor regards as “the invention”.

              Turning to the book example you presented elsewhere, if the inventor places new software code in a book and drafts a claim to the book with the new code, then that combination (the claimed invention as a whole) IS subject matter eligible simply because the book is an article.

              I AM NOT SAYING that the book and code are PATENTABLE. I think they are not, because it is obvious to include printing (or whatever) and information of all types in a book. So the proper finding for the book and code should be (again NOT saying that this is where the Courts are, just saying what the finding SHOULD be): the book and code are subject matter eligible but are unpatentable under 102/103.

              I know that the conclusion in view of Alice would be lack of subject matter eligibility of the code.

              1. 9.4.1.2.1.1.1

                101 does not concern the specification, lack of written description, insufficient enablement, undue breadth. Those are all 112

                All the patent statutes are related and there are no boundaries as clear cut as you appear to believe. Last time I checked, claims to perpetual motion machines are ineligible under 101 because they “lack substantial and credible utility.” Explain to everyone how you arrive at that result without addressing the enablement issues.

                If “the invention” was to be defined by a single element (as Alice improperly does),

                Actually that’s not at all what Alice does. This is where Rick begins to do the familiar dance of a dishonest dissembling hack.

                it is obvious to include printing (or whatever) and information of all types in a book.

                Even non-obvious information? Please explain to everyone why non-obvious information is per se obvious as a matter of patent law. That’s a very curious assertion indeed.

                After your finished with that explanation, Rick, please explain to everyone how the “per se obviousness”of a claim to a “new book with nonobvious information” is so meaningfully different (soooooo much better, you say) from a finding that the claim protects ineligible subject matter (all information, regardless of its novelty or utility) in a conventional but otherwise patent eligible context (e.g., old book manufactures).

                Bear in mind as you prepare your answer that this question has been posed to numerous other commenters here for many, many years and none of them have provided a sensible answer.

                1. “Even non-obvious information? Please explain to everyone why non-obvious information is per se obvious as a matter of patent law. That’s a very curious assertion indeed.”

                  Well, In re Gulack has been around for about 30 years, and it addresses this very issue. To answer your question specifically: the printed matter doctrine explains when non-obvious information is per se obvious as a matter of law. As noted in Gulack, the key inquiry is whether the printed matter is functionally related to the substrate upon which it is printed. If so, then it can distinguish from the prior art. If not, then it can’t. In the book example, the printed matter is not functionally related to the underlying substrate (the book), and thus will not distinguish the book from the prior art in terms of patentability.

                  Rick: by the way, very good posts.

                2. In re Gulack has been around for about 30 years, and it addresses this very issue.

                  No, Gulack does not address the questions that were asked of Rick. Nice try, though.

                  In the book example, the printed matter is not functionally related to the underlying substrate (the book), and thus will not distinguish the book from the prior art in terms of patentability.

                  A few questions for you:

                  (1) why isn’t the printed matter functionally related to the book? Different books have different functions, after all. Everybody knows that.

                  (2) where is any of this “you can ignore limitations when we say so” business found anywhere in the patent statute, much less 103? — surely that question is of great importance to all the sooper dooper “principled” people who loathe any consideration of subject matter eligibility beyond the kindergarten grade level.

                  the printed matter doctrine explains when non-obvious information is per se obvious as a matter of law

                  Non-obvious information is per se obvious … sometimes? Sure, that makes a lot of sense …

                  Rick: by the way, very good posts.

                  A good post would answer the question I asked instead of repeating d.o.a. talking points that were debunked and decimated years ago by at least two unanimous and predictable Supreme Court decisions.

                  But hey, if it makes you feel good, polish Rick’s shoes for him. [shrugs]

                3. related and no boundaries….

                  The return of he mindless “whatever.”

                  Critical thinking in law is the antithesis to Malcolm and his purposeful obfuscation of law.

                4. MM, please excuse the following brevity but a lot of questions were raised. I’ve done my best to keep the answers in order.

                  perpetual motion: 101 states “new and useful…” That’s the utility requirement. The real problem with perpetual motion machine is that perpetual essentially means infinity, and neither the inventor nor the USPTO can prove infinite motion.

                  non-obvious (new) information: I recently ran across Ex parte Cavusoglu (Appeal 2010-009341) relying upon In re Ngai and In re Gulack. They explain the requirements of functionality between printed text and an article.

                  What Alice does: Ned stated (7/24) “The problem with the claim is that it is abstract at the point of novelty. It claims a result sans any of the disclosed method or means for achieving that result. Historically, the claim suffers from undue breadth under 112. The case is consistent with the recent Federal Circuit case where claiming a result at the point of novelty was deemed abstract and a violation of 101.”

                  I agree that an overly broad claim (as a whole) should be rejected under 112. I disagree that breadth of claim is a 101 consideration.

                  I agree that an abstract idea (as a whole) cannot be patented. I disagree that a claim directed (as a whole) to a composition, machine or manufacture defined by structural elements and that happens to also include a limitation concerning an abstraction is not subject matter eligible.

                  For example, a first claim is wholly directed to a computer having several components (A, B, C), but the claim does not specify the software installed on the computer. A second claim is wholly directed to a computer having the same several components (A, B, C) and also having particular software installed on the computer. The first claim would not raise a 101 query under Alice but the second claim would. Hmmm.

                  As another example, a first claim is wholly directed to a rock crusher having several components (D, E, F) one of which drops onto and crushes rocks. A second claim is wholly directed to a rock crusher having the same several components (D, E, F) one of which employs gravity to drop onto and crush rocks. The first claim would not raise a 101 query under Alice but the second claim would. Hmmm.

                  Additional comments: A very big problem with Alice’s (Mayo, Myriad’s) claim dissection approach is that it is completely contrary to approaches for determining infringement (notice that I am not saying validity). This goes to Alice’s dissection approach to preemption and to abstraction at the point of novelty.

                  In an infringement determination, the claim as a whole is analyzed, because “the invention” is defined by the claim as a whole. If the target product does not meet every single limitation of a claim, then it does not infringe.

                  Dissection approach to preemption: RandomGuy (7/24) argued that I misunderstood or misstated the preemption principle. I understand that Alice concerns preemption of an abstract idea (e.g. mathematical algorithm) or principle (e.g. natural law), and I agree that a claim wholly directed to such should not be subject matter eligible. However, the second computer claim (above) does not preempt use of the software installed therein. Likewise, the second rock crusher claim (above) does not preempt use of or reliance upon gravity.

                  If I was to circumvent computer claim 2 above, all I need to do is remove either of the three components (A, B, C), and I could still use the software. Claim 2 does not preempt all uses of the algorithm. However, an Alice dissection (rather than whole claim) approach would conclude that even removing one or more of the three components would not circumvent the claim.

                  If I was to circumvent rock crusher claim 2 above, all I need to do is remove either of the three components (D, E, F), and I could still use the rock crusher. Claim 2 does not preempt all uses of gravity. However, an Alice dissection (rather than whole claim) approach would conclude that even removing one or more of the three components would not circumvent the claim.

                  Abstraction at the point of novelty: the tracking system claim that started this discussion has two inertial sensors and “an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors”. The “element” (receiver/computer) is the third physical component. The inventors came up with software that employs a complex mathematical formula and installed that software onto the “element” so that it could make the determination.

                  I agree that the mathematical formula, if claimed on its own, should not be subject matter eligible. However, the claim specifies three physical components one of which provides particular functionality. The tracking system should still be subject matter eligible.

                  If “abstraction at the point of novelty” means that the claim fails to provide the necessary structure at the point of novelty, then the claim should be rejected under 112.

                  If “abstraction at the point of novelty” means that the claim relies upon a complex mathematical formula at the point of novelty, then the claim should be rejected under 102/103 as the complex mathematical relationship existed prior to its inclusion in the tracking system.

                  If I was to use the Alice claim dissection approach when determining infringement of the tracking system claim, it would not matter if I used non-inertial sensors instead inertial sensors: a tracking system containing the “element” with the mathematical relationship (the abstraction at the point of novelty) would still infringe.

                  So, just as we can’t rely upon claim dissection for determining infringement, we can’t rely upon claim dissection for subject matter eligibility.

                5. Rick, “If “abstraction at the point of novelty” means that the claim fails to provide the necessary structure at the point of novelty, then the claim should be rejected under 112.”

                  I think this (112 is the proper statute) is how to properly construe Morse. But, the SC squarely placed this kind of abstractness under 101 in Rubber-Tip Pencil, the case ultimately relied upon for Benson.

                6. Ned, I read Rubber Tip Pencil. Please provide more detail on your point.

                  The decision includes the following key statements.

                  “A patent may be obtained for a new or useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof. In this case, as has been seen, Blair’s patent was for “a new manufacture,” being a new and useful rubber head for lead pencils. It was not for the combination of the head with the pencil, but for a head to be attached to a pencil or something else of like character. It becomes necessary, therefore, to examine the description which the patentee has given of his new article of manufacture, and determine what it is, and whether it was properly the subject of a patent”

                  The claim read as follows: “I claim as a new article of manufacture an elastic erasive pencil head, made substantially in manner as described.”

                  The poorly drafted claim forces the reader (the Court) to figure out from the description what the patentable subject matter (not subject matter eligible subject matter) might be. The Court then proceeded with the usual 102/103 analysis.

                  The inventor specifically disclaimed the outer structure as the basis of the invention and focused on the properties of India Rubber and on the size of the cavity of the eraser. The Court presented arguments supporting obviousness and concluded,

                  “An idea of itself is not patentable, but a new device by which it may be made practically useful is. The idea of this patentee was a good one, but his device to give it effect, though useful, was not new. Consequently he took nothing by his patent”

                  So, I think the claim failed because of obviousness and not abstraction at the point of novelty. Importantly, the Court acknowledged a new device by which an idea is made practically useful can be patented.

                  All the claims we are talking about in this discussion specifically deal with combinations of structure and some abstraction. Regarding the tracking system, one need not turn to the specification to identify what the inventor defined as the invention. There are three physical elements defined. If one needs to turn to the specification to add structure to the “element” in order to construe it due to its lack of definition, then that would be a 112 rejection but not a 101 rejection.

              2. 9.4.1.2.1.1.2

                101 does not concern the specification,

                The specification always informs on everything. When it is clear from reading the specification that the applicant doesn’t believe he has invented or improved, for example, the processor, because he doesn’t spend any time trying to teach how to build a processor and maybe outright states that “The processor can be any conventionally known in the art” then the processor is not his contribution to the art and therefore cannot be the thing “new” or constitute “the improvement.” Moreover, when you’re stating you can use any processor, it suggests that the relationship between the processor and the code is also well-known: Every processor will process the code in the same manner. This leaves the code as the only thing to consider.

                This seems to be counter intuitive to a lot of people for some reason. There was a time when there were no processors, therefore the inclusion of a processor in a claim not only conferred eligibility (as it was a claim to a new machine) but patentability (as it was a new, novel, non-obvious machine). Then there was a short time thereafter where a processor may confer solely eligibility because it was clear from the document that the person mistakenly thought that they were the first to create this new machine, so it surpassed 101 (there was a claim to a new machine) but not 102/103. But at some point the processor becomes so widespread (“conventional”) that either the inventor will admit they didn’t invent the processor right in their document, or one of ordinary skill in reading the document would understand that the processor is not what they are claiming to be their addition to the art. In other words, the very same claim that would surpass 101 in the past at some point (dependent upon the art or the admissions of the applicant) in the future would no longer pass 101.

                Suppose I say “I claim an old unimproved book.” The book has been around for thousands of years, we don’t need to venture into 102/103; the applicant is admitting that what they claim is not in fact an invention. I might be seeking a patent, but not for inventing something.

                Suppose I similarly say “I claim an idea.” Here we know it’s not eligible because it doesn’t fit a statutory category.

                Now mash the two together: “I claim an old book that is improved because I wrote a new idea in it.” What does this claim do to improve the art? Does it teach books? No, they were conventionally known. Does it teach ideas? No, they are not an advancement. Does it teach, under the combination, that you can fix ideas within the books (i.e. does it teach writing?) – not reasonably, that’s older than the book. So each part of the invention itself isn’t eligible and neither is the combination; the only thing “new” or “improving” is itself ineligible. This is right result, of course, because patent law does not recognize the difference between a blank book and a book with writing in it.

                Notice that the inventor, not the Court, gets to decide what the “inventor regards as the invention”, and it is the claim as the inventor files it that defines what the “inventor regards as the invention”.

                That’s right, but the court is also not confused by the application of known things into a claim. You’re acting as if the claim language itself, absent what one of skill in the art would construe it as, is entirely determinative. It is not. Including a bunch of things (whether structures or relationships) that the inventor knows are already widely known to the art (“conventional”) is not relevant from a 101 standpoint because they are not describing what the inventor asserts to be his advancement. Those elements are considered to determine if they are conventional, and once determined that they are they are largely irrelevant to a 101 analysis. This is not improper dissection, as each element is being considered, its just not being given weight for the improvement analysis once its found to be conventional.

                Turning to the book example you presented elsewhere, if the inventor places new software code in a book and drafts a claim to the book with the new code, then that combination (the claimed invention as a whole) IS subject matter eligible simply because the book is an article.

                Statutory category is not the only requirement of 101. For example, there must be an assertion that there is an advancement made by this inventor.

                Hypothetical question – Does this following language surpass 101? “I claim an already-existing book that I did not invent” how about “I claim any old, unimproved book.” They’re both articles, right?

                Less hypothetical question – Does the Constitution grant to Congress the ability to confer patents to people who are not inventors? Why is the new regime called “First Inventor to File” and not “First Person to File” or “First to Disclose”?

                1. “advancement” does NOT mean the modern day “version” of that word in that a linear advancement has been made.

                  I have explained this in great detail Random. Pay attention.

                2. Your line of thinking as to “conventional improvement” goes by another label:

                  Flash of Genius

                  This was EXPRESSLY rejected by Congress in 1952.

                3. I AM NOT SAYING that the book and code are PATENTABLE. I think they are not, because it is obvious to include printing (or whatever) and information of all types in a book.

                  BTW, even this logic is mistaken. Non-functional descriptive material is not given patentable weight. It is not only obvious to write something in a book, but a book with particular writing is ANTICIPATED by a blank book. There’s plenty of cases that say that. It’s not just a small distinction – it is NO distinction.

                  What is less clear to the Fed Cir (but certainly clear to the Supremes) is that for the same reason the blank book anticipates the book with particular writing, the book with particular writing isn’t even an invention.

                  It’s no different than if you tried to explain that “this widget is a new widget because it is colored red instead of green” to someone who is red/green colorblind. To them there is no distinction because they don’t see the difference. To patent law, an ineligible improvement is a non-distinction and is no improvement at all.

                4. Except for the FACT that you have an actual difference in functionality, the “argument” you attempt here might support your position.

                  As it is, the argument you offer supports the very opposite position.

                  Thanks.

                  (btw, as I have notified Ned, the patent law doctrine you might want to understand here is “inherency” – you are very much in the House/Morse fallacy that all future improvements to “old box” are somehow “magically” already in there. Such SAME “logic” is captured in my big box of electrons, protons and neutrons).

                  Try to keep up son.

                5. Random, I don’t think you recognize what you did this explanation, but you clearly pointed out why the Federal Circuit and the C.C.P.A. before them went off the rails. If one cannot consider what is new and what is a old at the 101 a stage, and if the only legal consideration is whether that wishes distinguishes the prior art, in your example, an idea written on a book, is obvious to one of ordinary skill, then one gets into whether the idea itself, at least in context of the book of your example, is obvious.

                  But anybody of any common sense knows that one cannot give patentable weight to ineligible subject matter unless it somehow modifies the otherwise eligible subject matter in a new way. Thus the idea does not modify the book in any new way that was not done before with different ideas.

                  Going back to Hotchkiss v. Greenwood (KSR), where a clay doorknob was substituted for wood with a specific doorknob mechanical construction, the court looked to whether substitution of the clay for the wood in that context brought something truly new to the table, not something that was known. Because there was no new mechanical functionality, and the use of clay knobs for durability purposes was known, the combination brought nothing new to the table that was not known.

                  Running this test (KSR) in the context of the idea written in the book, one could say that ideas as a category were known, their physical relationship to the book were known and therefore the combination is not patentable.

                  But this is where we get into the land of the crazy, when people are allowed by the courts to distinguish the prior art based on the meaning of the words precisely because 103 allows them to do this because “every” limitation must be given patentable weight. Clearly the meaning of the words should not be given patentable weight; but unless one has a rule to categorically exclude meaning, one has no basis within 102/103 to deny a patent.

                  Thus we get State Street Bank, where prior art programmed computers were distinguishing from the claimed program computers because the claimed program computers produced an improved price. But one price differs from the next price because its meaning.

                  From the above, it seems rather self-evident that one must have an additional question that must be answered before one can confer patentability upon a claim. The question is whether the point of departure over the prior art is patentable subject matter within the context of 101. If it is not, and if it does not cause the otherwise patentable subject matter produce a new, physical result, then claim as a whole is not directed to something that might be patented.

                  What is sad is that this analysis was the analysis advanced by the Second Circuit in Hotel Security, and was widely followed in the courts prior to turning patent law over to the C.C.P.A. and later to the Federal Circuit who simply ignored Hotel Security, and formally “overruled” it in State Street Bank.

                  But why the overruled it is self-evident. The C.C.P.A. and the Federal Circuit saw software as patentable subject matter. They could not follow Hotel Security line of authority because to do so would have asked the question of whether the computer itself (or some larger machine or process) was improved by the software versus whether the computer programming was directed to an otherwise unpatentable idea such as price.

                  Hopefully, the whole idea that a programmed computer is per se eligible is an idea that will never be seriously advanced again.

      2. 9.4.2

        Yes.

        And here’s the Patent to prove it:

        link to google.com

        A paired finding system comprising at least two locators, any of said locators being usable to find any other of said locators, each locator comprising:
        signal receiving means for receiving and identifying a search signal emitted from another of said locators;
        beacon signaling means for emitting at least one beacon signal to which a human user is sensitive in response to said receiving means identifying said search signal;
        search signaling means for emitting said search signal upon activation by said user;
        a case accommodating said beacon and search signaling means, said signal receiving means and an activatable button accessible by said user from an exterior of said case; and
        a processor accommodated in said case, monitoring said signal receiving means and an activation of said button while in a first mode in which said processor consumes a first amount of current, and controlling said signal receiving means, said beacon signal means, and said search signal means while in a second mode in which said processor consumes a second amount of current substantially larger than said first amount.

        1. 9.4.2.1

          Les, is that not a patent covering the system of finding a misplaced phone by calling it from another phone?

          We are infringers…again.

          1. 9.4.2.1.1

            No, I don’t think so.

            In your phone scenario:

            what is the signal receiving means?
            what is the “another of said locators?
            what is the search signal?
            what is the beacon signal emitting means?
            What is the search signal emitting means? etc…

  20. 8

    What difference does it make under 101 if the sensors are not “new”? What if they were not new? Then would some sort of different analysis be employed? Would the invention suddenly become patentable subject matter, when it wasn’t before? What does 101 “new” mean? Does it mean that same as 102 “new”? Should they cite prior art to support the position that it’s old? What happened to the notion that a new combination of known elements is patentable? What’s the record for consecutive questions?

    This is starting to piss me off. What an f’ing mess.

    1. 8.1

      What difference does it make under 101 if the sensors are not “new”?

      Because it makes clear you’re engaging in conventional data gathering? A new machine to gather new data is eligible. This was not that invention. This “invention” was a disclosure of the relationship between trajectories, which is a mathematical description of the world. This guy did not invent that relationship.

      1. 8.1.1

        If you are discussing whether the inventor was the first to identify a relationship between trajectories, then you belong in 102 or perhaps 103.

        1. 8.1.1.1

          “i invented that”: If you are discussing whether the inventor was the first to identify a relationship between trajectories, then you belong in 102 or perhaps 103.

          Sorry, but that’s not how subject matter eligibility works.

          It’s 2015. You’re apparently several Supreme Court cases and years behind the law. Try harder to keep up.

          1. 8.1.1.1.1

            MM, respectfully, I believe most or all of us on this blog have read and understand the SC decisions. We are just in two different camps: a first camp that agrees with the decisions and a second camp that doesn’t.

            Members of the second camp are just trying to show that the SC got it wrong in Alice, Mayo and Myriad and we are hoping for and trying to bring about correction of those errors. We know it is like beating a dead horse.

            In the meantime, we still advise our clients of the current status of the case law even though we don’t agree with it.

            1. 8.1.1.1.1.1

              Rick: Members of the second camp are just trying to show that the SC got it wrong in Alice, Mayo and Myriad

              You’re not “trying to show” any such thing, Rick. You’re just stating your conclusion and your conclusion was decimated by the Supreme Court because you failed to “show” that you were right when it mattered. You failed miserably, in fact, and your failure was predicted.

              Do you understand, Rick?

              we still advise our clients of the current status of the case law

              Sure you do. Then you tell them that “the pendulum is going to swing back” and you take their money.

        2. 8.1.1.2

          If you are discussing whether the inventor was the first to identify a relationship between trajectories, then you belong in 102 or perhaps 103.

          No, because the relationship was always there, and there is no invention to discovering a pre-existing thing that you did not create. Finding a new plant that grows in the wild is not patentable. Finding a new mineral is not patentable. Columbus finding the new world is not patentable. These have never been considered to be within the patent power.

          It’s bedrock patent law and isn’t a creature of the recent 101 cases to say that Einstein could not have patented e=mc^2. That has always been the rule. This guy just disclosed his e=mc^2 and tried to patent it.

          1. 8.1.1.2.1

            This guy just disclosed his e=mc^2 and tried to patent it.

            That’s excessively generous.

          2. 8.1.1.2.2

            “there is no invention to discovering a pre-existing thing that you did not create.”

            35 U.S.C. 101 Inventions patentable. Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

            What is there TO discover but pre-existing things?

            1. 8.1.1.2.2.1

              Les, got your pencil out it seems, the one with the rubber tip this time affixed, and erased “new.”

            2. 8.1.1.2.2.2

              What is there TO discover but pre-existing things?

              The phrase is discovers any new . New in this case is not “to man” but “to the universe.” All of the examples given (including this case) are not new to the universe. There is no question that discovery of an unknown plant or animal is not a patentable act.

              1. 8.1.1.2.2.2.1

                Wrong.

                One cannot discover (un-cover) something that is “new to the universe.” THAT is called invention.

                I “get” the end you want to reach, Random, but your means here fail.

              2. 8.1.1.2.2.2.2

                Randy –

                I respectfully submit that by definition a discovery is of something “new”. New in the sense of not previously known.

                The cure for cancer, when it is discovered, will be some composition of matter or naturally occurring form of energy that has surely existed somewhere in the universe at some point in time that is newly discovered or newly discovered to be the cure….

    2. 8.2

      Dan R. – your comment is spot on. Regardless of the current legal framework approved of by the Supremes, if someone references the prior art in a section 101 analysis, they are plainly in the wrong section of the statute. Period.

      1. 8.2.1

        “i invented that if someone references the prior art in a section 101 analysis, they are plainly in the wrong section of the statute. Period.

        LOL

        The zombies continue to roam the earth. How many years ago was Prometheus decided and we still have to read this ridiculous baloney?

    3. 8.3

      What difference does it make under 101 if the sensors are not “new”?

      LOLOLOLOLOL

      It’s 2015 and somebody is seriously asking this question? On a patent blog?

      ROTFLMAO

      1. 8.4.1

        The claim as a whole is the “point of novelty” Ned – leastwise as you are attempting to use that term in your ad infinitum ad nauseum internet style shout down monolouging.

  21. 7

    The Court is clearly still in Wonderland…

    Another poor decision based upon an even poorer SCt decision. 101 was written to define subject matter eligibility of a claim as a whole not subject matter eligibility just at the point of novelty.

    The claim as a whole is directed to a system defined by three physical (tangible) elements, one of which happens to employ software to conduct mathematical calculations: it is subject matter eligible.

    Points to chew over…

    “Although the concept of tracking the motion of a moving object relative to a moving reference frame may have been novel and nonobvious, the claimed system does nothing to ground this abstract idea in a specific way.”

    Wrong. The claimed system is grounded in three physical elements that must interact in a specific way to achieve the intended function. Moreover, the Court just acknowledged the novelty and nonobviousness of the invention.

    “The Court finds that the scope of the subject patent’s claims is insufficiently limited under the holdings of Mayo and Diehr, and if the patent were considered to protect eligible subject matter, it would pre-empt the use of the underlying abstract idea of relative motion tracking by others in the field.”

    Wrong. An inventor that figures out how to do relative motion tracking with a single inertial sensor OR with one inertial sensor and one non-inertial sensor OR with one or more non-inertial sensors would not be preempted. Clearly preemption was not an issue for all the laser-based code reader patents all systems of which ultimately require software in order to function.

    “The patent’s ineligibility is confirmed by the machine-or-transformation test, under which the claims are not tied to any specific machine and do not transform the nature of the patent into something more than the abstract mathematics behind it.”

    Wrong. The claim is tied to a machine (system) requiring at least three physical elements which must interact in a specific way in order to provide the intended function.

    “At its core, the patent is seeking protection for the mathematical formulae used in determining the relative orientation of two moving objects.”

    WRONG. The patent (the claim as a WHOLE) is seeking protection for a system requiring at least physical elements, one of which (the receiver) happens to employ software to perform mathematical calculations required to determine the relative orientation of two moving objects.

    I am not saying the claimed invention is patentable per se, because I am unfamiliar with the prior art, but I am saying it is subject matter eligible under 101.

    Congress needs to send Alice and her minions (Mayo and Myriad) back into the rabbit hole, and there should be mandatory reconsideration of all patents invalidated in view of those decisions. Where are the legislators with the understanding and grit to see this through?

    1. 7.1

      Hey Rick,

      LOL, your comments are right on target. Alice, Myriad, and Mayo are a disgrace and a disaster. The Royal Nine needs to stay out of patent law jurisprudence, and like what happened in the 70’s and 80’s, Congress needs to “take them to the woodshed” (again).

      1. 7.1.1

        Excellent points Rick. EG, I assume you laugh because it beats crying. This decision is pathetic. What’s claimed is a physical system that includes some software; the patent’s validity should be assessed under 102, 103 and 112, but its meeting the requirements of 101 is unquestionable.

        1. 7.1.1.1

          Dan Feigelson What’s claimed is a physical system that includes some software; the patent’s validity should be assessed under 102, 103 and 112, but its meeting the requirements of 101 is unquestionable.

          Presumably Dan is not in the business of providing legal advice to clients.

          Wow.

          1. 7.1.1.1.2

            Jeez, could you be more dismissive of others opinions? I bet you’re fun to work with.

            1. 7.1.1.1.2.1

              Because the really “fun guys to work with” are the guys who say stuff like “a physical system that includes software is unquestionably patent eligible.”

              It’s 2015. Grow up already.

            2. 7.1.1.1.2.2

              “The Royal Nine needs to stay out of patent law jurisprudence”

              The best and the brightest. No doubt he’s a real “fun guy to work with”, too. Full of deep insights.

              1. 7.1.1.1.2.2.1

                Malcolm,

                When you resort to nonsensical statements like these, I know the debate with you is over. Over and out.

                1. There is no debate with Malcolm – a debate would necessarily address the counter points raise. Malcolm only repeats his short script.

    2. 7.2

      The problem with the “machine or transformation” test is the “machine” part is unknown. No one knows what makes a “machine” in terms of 101. It seems to me that this claim meets a “machine” under 101, but again since there’s no definitive guide to what constitutes a “machine” under 101, a “machine” is whatever you want it to be. It’s similar to “abstract”: you let this be whatever is best for your position. Since there are no limits on what’s “abstract”, it’s malleable to the point no one can argue against whatever position you take.

      I agree that many claims used by patent trolls are overly broad. But the current rules for 101 are such that I can no longer counsel my clients as to what is patentable. Is encryption patentable? It doesn’t seem so. Is modulation patentable? It no longer seems so. Is there anything that doesn’t “improve the functioning of a computer” (whatever this means) but uses a computer patentable? It doesn’t seem so.

      1. 7.2.1

        Patent Bob, I think the difference is whether one is using a machine or whether one is a creating a new or improving an old machine.

        A computer programmed to calculate and improve price is an example of a machine that is being used.

        A rasterizer, which is a specific part of a graphics processing unit for a display, programmed to improve anti-aliasing in the display,9 is a specific machine – Alappat.

      2. 7.2.2

        Is there anything that doesn’t “improve the functioning of a computer” (whatever this means) but uses a computer patentable? It doesn’t seem so.

        There’s an infinite variety of things that “improve the functioning of a computer” that are eligible for patenting.

        Please learn to describe them like peole in the grown-up arts have been doing since pretty much forever: using objective physical structure. Then you won’t have so many problems.

    3. 7.3

      The claimed system is grounded in three physical elements that must interact in a specific way to achieve the intended function.

      hahaha “three physical elements” “in a specific way” – it’s directed to two elements that measure data and a third element that performs a calculation based on that data. When the data gathering was conventional it’s just putting lipstick on a pig to claim those sensors – the claim is really directed toward making the mathematical calculation which is proven by the fact that you say:

      An inventor that figures out how to do relative motion tracking with a single inertial sensor OR with one inertial sensor and one non-inertial sensor OR with one or more non-inertial sensors would not be preempted.

      What you’re really saying is that you don’t preempt people that use a different mathematical equation. Of course that’s true, he doesn’t preempt people calculating gravity either. But he still is trying to claim a mathematical equation that describes a relationship that existed in the world before him. What he did was explain the pre-existing relationship. That’s fine, but that’s not invention.

      WRONG. The patent (the claim as a WHOLE) is seeking protection for a system requiring at least physical elements, one of which (the receiver) happens to employ software to perform mathematical calculations required to determine the relative orientation of two moving objects.

      It’s no different than Alice here – Alice had “physical elements” in the computer, but the computer itself was entirely conventional, it was new software that made the claim. Just because you consider the claim as a whole doesn’t mean you give each limitation equal weight. You can’t protect otherwise unpatentable information by tangibly fixing it in a book and calling it statutory – the court is capable of seeing through the fact that the book is simply an attempt to get at patenting the information. It’s the same with this system – the sensors and software are just attempts to get at patenting the mathematical equation which describes math and physics that pre-existed in the world.

      1. 7.3.1

        But what about “inertial sensor?” Is that concrete and a machine, or is that abstract? Is an inertial sensor limited to a specific type of inertial sensor, like a gyro? Or can I use a camera and an associated dsp to determine, frame by frame, what inertia must exist on the reference object?

        This game can go on forever, and will, until some meaningful limitations are set forth (via rules or precedential rulings), or until we all agree to use a modicum of common sense. But, since we are all paid to advocate one side or the other, the latter is unlikely as it would poorly serve our client. So, let the circus continue.

        1. 7.3.1.1

          But what about “inertial sensor?” Is that concrete and a machine,

          It’s an old machine.

          This game can go on forever

          It’s not a game. It’s the law. Get used to it and stop filing junk claims. Thanks.

          1. 7.3.1.1.1

            It’s an old machine

            Only in the exact same sense that electrons, protons, and neutrons are old items (call them too machine components).

            You are doing that parsing thing again…

            1. 7.3.1.1.1.1

              (btw, this is also EXACTLY like Ned’s fallacious “ineligible elements” windmill chase).

              You just don’t get to parse up the claim like that and hunt down each element. That is not how CONGRESS wrote the law.

              There simply is no patent claim IN ANY ART that survives the sword of “Gist/Abstract.” Each and every element can in and of itself be subdivided and parsed and brought to the EXACT SAME logic being used to lay waste to the claim.

              It’s a lot like the nonsense of wanting to have a dictionary as part of the application – the words themselves used in the dictionary part that defines other words would then themselves need to be defined…

              …with words.

              Then repeat that cycle again, because those words would need to be defined…

              Then repeat that cycle again, because those words would need to be defined…

              Then repeat that cycle again, because those words would need to be defined…

              . . .

        2. 7.3.1.2

          But what about “inertial sensor?” Is that concrete and a machine, or is that abstract? Is an inertial sensor limited to a specific type of inertial sensor, like a gyro? Or can I use a camera and an associated dsp to determine, frame by frame, what inertia must exist on the reference object?

          What is the inertial sensor used for? It’s being used to gather data to plug into an equation. If nobody could have gathered that data before (i.e. there were no inertial sensors before this guy) then his particular inertial sensor would be an invention. That is not his claim. He knows that the data gathering is entirely conventional, his invention is in taking that data and manipulating it. His manipulation is only to run it through an equation that describes the physical relationship of things. He did not invent the physical relationship. He discovered what that relationship is, but that discovery has never been considered to be a patentable act.

          This game can go on forever, and will, until some meaningful limitations are set forth (via rules or precedential rulings), or until we all agree to use a modicum of common sense.

          There is plenty of common sense, you’re just not seeing it. When the inventor is saying “I need this limitation because I need to gather data for my invention, but I’m not arguing this is my advancement” then you don’t give a lot of weight to it being included.

          What would make less sense is if the inventor said “My invention is this story, but I know stories aren’t eligible so I’m claiming my story embodied on any book, or displayed on any display, or in any machine.” and we let him get around the statutory requirement by doing that. That is all this inventor did, his ineligible story is just an ineligible natural law. Don’t get confused because he’s tacking on a conventional system into his claim for an ineligible equation.

          1. 7.3.1.2.1

            RG: What would make less sense is if the inventor said “My invention is this story, but I know stories aren’t eligible so I’m claiming my story embodied on any book, or displayed on any display, or in any machine.” and we let him get around the statutory requirement by doing that.

            Indeed. What also makes less sense is ignoring the ineligible subject matter and declaring the claim as obvious under 103, a statute which expressly mandates consideration of the claim “as a whole”. But for some mysterious reason a certain class of patentees just gets all gushy over that approach. Anybody wonder why? I don’t.

            1. 7.3.1.2.1.1

              More – and typical – mischaracterizations from Malcolm.

              No one is saying “ignore.”

              What they are saying is that you don’t get to parse the claim and you don’t apply eligibility on a parsed, per-element basis, without more.

              Once again, this reflects the fact that your pet theory is nothing more than what is already covered in the “claims as a whole” doctrine: no mere aggregations, regardless of the types of elements in the claim.

              But let’s see you kick up dust and pretend that you don’t understand this basic patent law concept, yet again.

    4. 7.4

      An inventor that figures out how to do relative motion tracking with a single inertial sensor OR with one inertial sensor and one non-inertial sensor OR with one or more non-inertial sensors would not be preempted.

      That’s nice. Also irrelevant. Plainly you don’t understand the concept of pre-emption as it applies to subject matter eligibility issues.

  22. 6

    The problem with the claim is that it abstract at the point of novelty. It claims a result sans any of the disclosed method or means for achieving that result.

    Historically, the claim suffers from undue breadth under 112.

    The case is consistent with the recent Federal Circuit case where claiming a result at the point of novelty was deemed abstract and a violation of 101.

    1. 6.2

      “An element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation ”
      “Configured to determine an orientation” does indeed seem to preempt ANY way of accomplishing the claimed result receiving signals from two inertial sensors.
      That leaves the question of how much more “meat” would need to be put on this “element” claim “bone” to avoid both current 101 rejections AND what could have been a 112 rejection for inadequate specification examples to support such a very generic claim? Where are those lines to be drawn?

      1. 6.2.1

        Paul, I don’t think we can come up with a hard and fast rule of how much more one would have to add to the claim to include the novel structure and mathematics disclosed, but simply using means plus function here may have been sufficient.

        In the end, the claim should have two sensors, some calculation, and an improved physical result – an improved display.

        1. 6.2.1.1

          Ned,

          The point of the matter is that NO novel structure may be present in a perfectly valid claim.

          Stop the parsing game.

      2. 6.2.2

        Paul Morgan: [H]ow much more “meat” would need to be put on this “element” claim “bone” to avoid both current 101 rejections AND what could have been a 112 rejection for inadequate specification examples to support such a very generic claim? Where are those lines to be drawn?

        Excellent question and one that I’ve been asking the defenders of the worst patents ever to answer for many years now.

        Novel objective physical structure would be a great start, of course. It’s 2015. Long past time for the so-called “computer arts” to grow up already.

        Without objective physical structure it’s anybody’s guess because logic is, well, logic. If some logic is more patent worthy than other logic, then someone needs to step up and explain (i) exactly why that’s the case and (ii) how that logic is going to be evaluated against the logic in the prior art (logic wasn’t invented yesterday, you know) by both the PTO and the courts. Right now the PTO is simply flailing about trying to serve it’s incessantly whining “customers” who, in turn, continue to demand and assert the worsts patents ever granted in the history of any patent system on earth.

  23. 5

    We learn from the press this week that John Conway is a “charismatic” mathematician:

    link to theguardian.com

    We also learn from the newspaper article that he and Neil Sloane assigned to A T & T a patent, US 4507648, written by Ron Slusky (he of the book on patent drafting, I suppose) in just 13 pages. The patent issued in 1985. I wonder how it would have fared today, at the USPTO.

    1. 5.1

      The claims seem to have no 101 problem given the Supreme Court decision in Bell. Dolbear v. American Bell Telephone Company, 126 U.S. 1, 8 S. Ct. 778, 31 L. Ed. 863 (1888). link to scholar.google.com

      Here the first part of claim 1:

      1. Circuitry for use in a data communication system in which inputted data signals are modulated onto a carrier signal to generate a modulated signal representative of one of a predetermined plurality of n-dimensional codewords and in which said modulated signal is supplied to a data communication channel,

      1. 5.1.1

        Does anyone see a pattern here? That when the last action being performed by the adapted element (i.e., the outcome of the claimed invention) is to “determine” something? That the last step in Dolbear is to “generate” something?

        Determining does not provide a concrete outcome — but generating doe.? To me, the act of determining is a mathematical formula being applied, but without a further application of the formula-derived result, it is only an unpatentable formula.

        To me, patentability hinges on the last action being claimed.

        1. 5.1.1.1

          Not necessarily the last action, but I would suggest that when you use a word like “determine” or “analyze” or “generate” or “calculate” you’re covering a wide range of solutions rather than a particular means and you’re violating 101.

        2. 5.1.1.2

          patentability hinges on the last action being claimed.

          No, it’s not the “location” of the action (first middle or last).

          More accurately, eligibility hinges on the nature of the novel action or combination of actions that are recited in the claim. If those actions are abstract and they protect the abstract subject matter in the context of an old subfield, then you’ve got an eligibility problem. On the other hand, if those new actions result in a physical transformation that was previously unknown or unexpected (i.e., not merely a “determination”), then you’re almost certainly in excellent shape.

            1. 5.1.1.2.1.1

              Having difficulty imaging an example of your scenario.

              I can try to help you but I’m not sure what scenario you’re referring to.

      2. 5.1.2

        Make that:

        Determining does not provide a concrete outcome — but generating does.

        1. 5.1.2.1

          Definitions of determine:
          + ascertain or establish exactly, typically as a result of research or calculation
          + to conclude or ascertain, as after reasoning, observation, etc.
          + to establish or ascertain definitely, as after consideration, investigation, or calculation
          + to set limits to; bound; define. to settle (a dispute, question, etc.) conclusively; decide. to reach a decision about after thought and investigation; decide upon. to establish or affect the nature, kind, or quality of; fix

          1. 5.1.2.1.1

            here’s part of the claim:

            “to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors”

            Given the breadth of definitions, here’s one construction:

            “to ascertain exactly as the result of a calculation an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors”

            Without expanding the definition of “determine” in the claim, the claim claims a formula: calculate x from y and z.

            1. 5.1.2.1.1.1

              Encryption is nothing but a “formula.”

              The problem you have is that “process” is also nothing but a “formula.”

              1. 5.1.2.1.1.1.1

                The claim is claiming nothing more than a calculation, i.e., determination. This is the end result of the claim. Without a further element such as generating image data or sending the image to a display unit or something else the applies the determination, the claim ends with a calculation. This claim claims a calculation and nothing more. Again, I believe that when a claim ends with a determination, you’re claiming a formula.

                Along the lines of unpatentable subject matter, I inform my clients that you can’t claim a signal, but you can claim the generation of a signal or the application of the signal.

              2. 5.1.2.1.1.1.2

                I was speaking to a claim ended with a “determination” being made. I can’t speak to a claim ending with “encryption”, but I suspect post-Alice that it is unpatentable subject matter (but I haven’t been keeping up with recent case law).

                Why not add an element that “providing the encrypted data to at least one user unit”. With the claim ending with something other than a determination, it removes the claim from being unpatentable subject matter.

  24. 4

    “government-employed judges”

    To be clear, these bureaucrats are not judges in any constitutional sense. They have the power to decide a case against the government, but cannot enter “judgments” that have a collateral estoppel effect in an Article III court, that is, to the extent that Stern v. Marshall, decided just in 2011, was not “overruled” by B&B Hardware.

    [Recall, Thomas raised the constitutional issue sua sponte because the result in B&B seemed to fly in the face of Stern.]

    Also, when these bureaucrats start calling themselves judges and their tribunal a court, they display a lot of arrogance demean the currency.

    1. 4.1

      I don’t believe it is the CFC “bureaucrats” that are naming themselves “judges” and their tribunal a “court”:

      28 U.S.C. 171: “The President shall appoint, by and with the advice and consent of the Senate, sixteen judges who shall constitute a court of record known as the United States Court of Federal Claims. The court is declared to be a court established under article I of the Constitution of the United States.”

      Also, I think you are reading too much into Stern v. Marshall outside the specific bankruptcy law context. Courts have long given administrative agency rulings collateral estoppel effect in appropriate circumstances. See United States v. Utah Constr. and Mining Co., 384 U.S. 394 (1966). That seems even more applicable to decisions of the Court of Federal Claims.

      1. 4.1.1

        Pilgrim, collateral estoppel may apply except if the effect of the estoppel is to deny a party a right to have his day in court or to have the issue tried to a jury.

        Utah Construction involved a public rights dispute, a “contract between the Government and a private contractor.” When public rights are involved, the findings of fact of the administrator are “final.” See, e.g., Murray’s Lessee. Ditto, “newly” created private rights. Crowell v. Benson.

        However, when a right that was litigated in the courts of England in 1789 are involve,d the Article I tribunal has no constitutional authority to adjudicate in the first instance. While the government may consent to the finding of its tribunal, the tribunal’s findings do not have collateral estoppel effect. Stern v. Marshall.

        Patents were litigated in England in 1789, for infringement, for injunctive relief and for repeal for invalidity. All such actions must be tried in an Article III court under Stern and its predecessors. Since that is a given, there is no collateral estoppel effect to the decision of a tribunal.

    2. 4.2

      The Supremes have demeaned that currency enough, thank you.

      (but Ned likes to turn a blind eye when the separation of powers aligns with his desired end results – the rather dubious lack of objectivity and “6-is-an-Einstein-because-he-agrees-with-me” malady)

  25. 3

    “However, the Court finds that this concept is a “building block of human ingenuity”, and the solution lies in the mathematical formulae, not the generic devices listed in the system claim. Accordingly, TVI’s claims fail the first prong of the Alice analysis because the claims are directed to the abstract idea of tracking two moving objects, and incorporate laws of nature governing motion, both of which are ineligible for patent protection.”

    There is so much wrong with this conclusion I hardly know where to begin.

    1. At the end, of course: There is no proscription against a claim incorporating laws of nature, and doing so does not render the subject matter of the claim ineligible. Diehr.

    2. Likewise, “directing” a claim to an abstract idea does not in and of itself render the claim ineligible. Not even sure I know what “directed” means in this context — just another CAFC wobble-word these CFC folks appropriated, like the rest of us.

    3. The solution to what??? The claim as a whole is the solution to whatever problem is being solved. Just because that solution involves, inter alia, a few thousand lines of geek-speak doesn’t mean the claim as a whole is ineligible.

    My problem with the claim is more theoretical: how does one mount a sensor on a reference frame?? A reference frame is an intangible mental construct, at least it was when I last took a physics course. Furthermore, merely determining the “orientation” of an object relative to a reference frame does not, without more, tell you anything about the motion of the object; therefore the problem addressed by the claim is not fully solved by the claim itself.

    There are only 2 independent claims. The other one, Claim 22, is a one-step method claim: you guessed it: “determining an orientation of an object relative to a moving reference frame . . .” IOW even more of a dud than Claim 1. Not an example of Fish & Richardson’s best work.

    Moonbeams, this one is for you. Watch your language.

    1. 3.1

      I suspect the drafter was thinking that detecting motion includes determining orientation because if you do it twice, the difference gives you a rotation, which is “motion.”

      Mounting on a reference frame seems OK. Nothing stops a real object from being a reference frame. You always see physics books saying “take the Earth as your reference frame.” It is a bit like making someone the Pope. There is no physical transformation involved in doing so. But people do not say the Pope is an intangible mental construct. Although in a sense it is, like all titles are.

      1. 3.1.1

        The Pope, indeed. I think the physical transformation is in the hat, isn’t it? Seriously, with your until-now-latent talent for clever analogy you should consider writing for New Yorker mag. Or, better, drawing some cartoons for them.

        I doubt your orientation explanation. I mean, my chances of getting elected pope are better than my chances of ever passing another physics exam, but the way I see it is that even if you repeatedly determine “orientation,” and even if it repeatedly changes, all you get is determination of rotation about a point. You still won’t be determining a change in position (i.e. motion) of that point w/ respect to the reference frame, relatively speaking.

        I think it must have taken intervention by the Pope (or the Mafia) to get these two independent claims through examination.

      2. 3.1.2

        But people do not say the Pope is an intangible mental construct.

        The label “the Pope” is an ineligible abstraction.

        1. 3.1.2.1

          ALL of science and engineering is nothing but an “abstraction” as you are using that term.

    2. 3.2

      “Likewise, “directing” a claim to an abstract idea does not in and of itself render the claim ineligible. Not even sure I know what “directed” means in this context — just another CAFC wobble-word these CFC folks appropriated, like the rest of us.”

      Actually that is exactly what, in and of itself, renders the claim ineligible. But you’re right that you don’t understand what they’re talking about.

      1. 3.2.1

        ALL claims are “directed to” something ineligible as you are using those terms.

        There is no limit to the “Gist/Abstract” sword.

        None.

  26. 2

    While Alice may have rendered the value of patents abstract for an indefinite interval, in this case the author picked a great example of Alice’s utility as an mathematical blanket of allowance and was a slam dunk for clarity. I beg to differ with the “Der Schrei der Natur” (The Scream of Nature) by Edvard Munch reaction.

  27. 1

    It’s the “end of days”. Nothing is patentable – it’s either abstract under Alice or obvious under KSR. Give up and go home!

    1. 1.1

      Mr. I, full circle we go.

      What is happening now is a result of the CCPA and the Federal Circuit for so long ignoring the law regarding claiming results.

      Who was it that told us that Halliburton was abrogated? Who — Judge Rich? Well, sir, not so fast. You sir are not the Supreme Court.

      You want to claim a result, use means plus function as authorized by congress. You then get the novel structure, material and acts disclosed.

    2. 1.2

      It’s the “end of days”. Nothing is patentable

      Meanwhile back on planet earth the PTO continues to issue thousands of enforceable patents.

      But let’s all pause and listen to “i invented that” whine and cry. He’s very serious!

    3. 1.3

      What has been is what will be, and what has been done is what will be done; there is nothing new under the sun. Is there a thing of which it is said, ‘See, this is new’? It has already been, in the ages before us. Ecclesiastes 1:9-10

      Thales patent counsel appears to have done a poor job of claiming whatever might have been an invention in this case. They overreached and are now paying the price.

      1. 1.3.1

        “nothing new under the sun,” meet “patents are for anything under the sun made by the hand of man.”

      2. 1.3.2

        Then realize that if you partake of the “parse is OK” mindset, you quite literally have destroyed the patent system.

        The plain fact of the matter is that there is NO limit to the “Gist/Abstract” sword.

        Anyone can wield it to cleave anything.

        The problem with the anti-nominalist viewpoint is that once you allow the Court to have the power to make vanish something that both sides to an issue stipulate as meeting the requirement as captured in the words of Congress, you have necessarily had the Court remove a section of the law, rewriting the law.

        People retreating to the “it must be right because the Court said so” are sticking their heads into the sand and missing what the actual issue is.

        This is NOT a battle over “these claims” or “this patent.”
        This is a battle for the Rule of Law.

        The means very much matter – the ends may matter as well, but the ends (no matter how much dust is kicked up) are not the issue.

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