Patentlyo Bits and Bytes by Anthony McCain

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Anthony McCain

About Anthony McCain

Anthony McCain is a law student at Mizzou where he is focusing on intellectual property; He has a background in mechanical engineering. anthony.mccain@patentlyo.com

71 thoughts on “Patentlyo Bits and Bytes by Anthony McCain

  1. 6

    Dome v. Lee
    link to cafc.uscourts.gov

    Contact Lens patent issued in 1981, 4 306, 042. Litigation was suspended pending a reexamination filed in 1999. After losing on claim one, the patent owner appealed to the District Court and lost there too.

    What is significant here is that the Federal Circuit, in affirming the District Court, held that the standard of proof of “invalidity” in an appeal from a reexamination was “preponderance of evidence.”

  2. 5

    Pretty nice blog David Stein. Good to see you are online.

    OT: But, I was thinking that Alice and the line of reasoning that you can just look at something and classify it as an X is happening at the same time as racism is rising in this country. I think the two are related. Both are witch words and both are based on an irrational judgment by a person attributing another to a category.

    Like it or not, the two are related forms of thinking.

    1. 5.1

      Also, I think a rational person that respects reason finds both Alice and racism as abhorrent for the same reasons. Both are judgments being made independent of facts. Both are removing any respect for the judged thing.

      I think that enlightened judges would find Alice very troubling for how the conclusion is being made.

      We are going back to the dark ages. Thanks Obama.

  3. 4

    Given that the method of solving a mathematical equation may not be the subject of patent protection, it follows that the addition of the old and necessary antecedent steps of establishing values for the variables in the equation cannot convert the unpatentable method to patentable subject matter.

    In re Grams (CAFC 1989)

  4. 3

    A lot of assumptions there.

    First off, saying Jefferson wrote 101 is a bold assertion. I have never heard anyone say that before. If anything, I have heard the opposite about Jefferson and that he intended the patent power to be broad.

    Congress needs to clarify 101, not rewrite it. Or in the alternative, amend the other provisions (102, 103, 112) to achieve the policy goal of 101.

    1. 3.1

      “Although the Patent Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered clear of a statutory set of requirements other than the bare novelty and utility tests reformulated in Jefferson’s draft of the 1793 Patent Act.”

      Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 10, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966).

      link to scholar.google.com

      1. 3.1.1

        It’s more complex than that. (Just because a court says it, doesn’t mean it’s true.)

        “In 1966 and again in 1980 the Supreme Court stated unequivocally that Jefferson authored the Act of 1793.46 It cited no authority for this view but could have relied on such a renowned Jefferson scholar as Merrill Peterson.47 In 1989 the Court apparently decided that some equivocation was in order and now stated more cautiously that “Jefferson played a large role in the drafting of our Nation’s second Patent Act, which became law in 1793.”48 Cullen et al. are more circumspect, stating that “though there are few points of similarity between them, the revised patent law passed by Congress in February 1793 achieved the primary goals of TJ’s draft bill.”49”

        See link to essaysinhistory.com

        1. 3.1.1.1

          Yeah, complicated since no one kept copies of anything it appear. Maybe it was all burnt down in 1812. Perhaps Jefferson, being Sec. of State, decided to wipe his mail box clean, or take it home.

          It is interesting, though, to see the changes to “101.”

        2. 3.1.1.2

          Not only more complicated in that regard, but Ned has shown a consistent and rampant inability to be objective, and he only provides his “versions,” and leaves uninterested any (and all) counterpoints put on the table for dialogue.

          The Ned-IMHO “law” has little relation to the actual law that Congress has written.

          He only adores the Royal Nine when they align with his windmill chases. He “conveniently” forgets the rest (things like 3, the new 4, is not 5).

    2. 3.2

      achieve the policy goal of 101.

      While your discourse has been polite (and enjoyable on that accord), your rampant anti-patentism provides evidence that you do not understand what that policy is.

      All things being equal, more patents is always better.

  5. 2

    DS: the USPTO ventures a strong opinion in quite uncharted technical waters: indicating that a claim may be patent-eligible

    David Stein found a nut!

    This is what the PTO has done habitually for many years: if it can find some reason — no matter how weak — to limit a decision to its facts and keep the junk flowing out, then it will do that until the CAFC or the Supremes tell them not to in another case. Then that case will be limited to its facts. Of course, if a case finds that some claim is eligible, it will be applied broadly. Suddenly the PTO will rediscover its ability to make all kinds of leaps in logic.

    It’s a transparent pattern of willful ignorance, all in the service of its “clients.”

  6. 1

    David Stein and the stock quote claim:

    “2. A method of distributing stock quotes over a network to a remote subscriber computer, the method comprising:

    providing a stock viewer application to a subscriber for installation on the remote subscriber computer;

    receiving stock quotes at a transmission server sent from a data source over the Internet, the transmission server comprising a microprocessor and a memory that stores the remote subscriber’s preferences for information format, destination address, specified stock price values, and transmission schedule, wherein the microprocessor filters the received stock quotes by comparing the received stock quotes to the specified stock price values;

    generates a stock quote alert from the filtered stock quotes that contains a stock name, stock price and a universal resource locator (URL), which specifies the location of the data source;

    formats the stock quote alert into data blocks according to said information format; and

    transmits the formatted stock quote alert over a wireless communication channel to a wireless device associated with a subscriber based upon the destination address and transmission schedule,

    wherein the alert activates the stock viewer application to cause the stock quote alert to display on the remote subscriber computer and to enable connection via the URL to the data source over the Internet when the wireless device is locally connected to the remote subscriber computer and the remote subscriber computer comes online.”

    David quotes the PTO for, “The hypothetical characterizes this claim as patent-eligible because it provides “significantly more” than an abstract idea. In this example, the USPTO ventures a strong opinion in quite uncharted technical waters: indicating that a claim may be patent-eligible because of the manner in which information is presented on a display – that is, the behavior of the device.”

    Formatting a display according to user preferences?

    OK. But the problem is this, David. If we pass 101, the examining corps must not allow the claim past 102/103 UNLESS the formatting a display according to user preferences is new and non obvious.

    But, you and I both know what REALLY will happened when we get past 101.

    1. 1.1

      And, might I add that when the PTO’s eagerness to issue patents of dubious 101 validity has been a significant problem to this nation for 20 years, it is more that disturbing that the guidelines would advance the stock quote claim as potentially eligible. This reflects a profound misunderstanding of the law by the top executives in that organization, so much so that the O-Man himself should intervene and see that heads roll.

      1. 1.1.1

        It appears the “customers” are getting restless.

        Oprah is running the PTO “you get a patent…”

        1. 1.1.1.1

          But anybody saying that we need at least a modest reduction in the amount of issued patents is “anti-patent” now.

          1. 1.1.1.1.1

            Anyone who says “we need a reduction” without a principled reason under the law IS anti-patent.

            That is not an illogical conclusion, my friend.

            1. 1.1.1.1.1.1

              That’s fair. I think congress needs to change the law to make the necessary reforms.

              But there are ways to change things within the law as it stands.

              My issue is with the PTO and the Federal Circuit who seem to think they are above the law. Both constantly ignore how SCOTUS interprets the law in favor of patent holders.

              1. 1.1.1.1.1.1.1

                My issue is that people who are anti-patent see the Supremes as a way of changing statutory law as if it were common law in violation of the separation of powers and the explicit directions of the U.S. Constitution.

                Ned Heller was nice enough to provide a link to an article by Judge O’Malley that discussed this very dangerous (in a legal sense) trend.

                Madison (way back when) in the Federalist Papers also warned of this.

                1. There is a lot in that statement.. I agree in theory but only in theory.

                  Congress if anything, appears to be perfectly fine delegating authority to the Judicial Branches and the Administrative State.

                  As recent legislative trends have illustrated, Congress wants very little to do with substantive patent law.

                  Rather than targeting the judicial branch, the target should be Congress, who has neglected its responsibility under Article I to “promote the sciences and useful arts…”

                  Don’t blame the judiciary for the incompetence of congress.

                  What choice does the judiciary have other than to fill the massive gaps that Congress left in the 1952 Patent Act?

                  It’s absurd that we are relying on a law from 1952 still.

                2. topce, you do know that 101, in its present form, was written by Jefferson?

                  Asking Congress to rewrite the basic patent law, or even considering a draft from a bunch of self-interested advocates to do so, is asking a lot.

                  They know it too.

                  Relying on 101 is like relying on the Constitution. It is not something we change like a shirt.

                3. I agree with the separation of powers argument. When the SC brought down the Halliburton case, Congress overruled them by implementing 35 usc 112 sixth paragraph. With Alice, since no one understands what it says, the separation of powers does not work. Congress cannot overrule something no one understands.

                4. PatentBob, congress did not overturn the multitude of cases holding that one cannot claim a result.

                  It is THAT heresy that Rich promoted, and which his lapdog the CCPA and the Federal Circuit embraced.

                  Since the Supreme Court repeatedly cites to these cases that are allegedly overturned by Congress, I assume that someone will, sometime, get some balls and ask the Federal Circuit to consider the whole issue of claiming results.

                  I do not agree that 112(f) applies when not intentionally invoked. If the claim claims a result, it is invalid.

                5. Mocking endearment is not allowed, but such descriptions as “heretic” and “lapdog” fly by.

                  If you are going to have a policy, then you really need to enforce it universally

                  As is, you only harm yourself and your own “reputation” for “objectivity” when the SAME people are given latitude that you deny others in such a one way fashion.

                  Do you really think that this is not noticed by the gen eral readership?

                  C’est la vie.

      2. 1.1.3

        The PTO’s eagerness to issue patents of dubious 101 validity has been a significant problem to this nation for 20 years…

        Are we talking about the USPTO? Because as best I can tell, the USPTO has spent most of the past 40+ years fighting against the patent-eligibility of computer-related inventions.

        For the entire history of 101 law up to State Street, the USPTO’s primary argument was: “We shouldn’t have to examine software patents, because we’re just not equipped for it. We don’t have an adequate prior art library, and we don’t have examiners who are trained in this area.” This started even before Gottschalk – as early as 1966, in the Presidential Commission on the Patent System:

        The Patent Office cannot now examine applications for programs because of a lack of classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated.

        A persuasive argument for 1966, certainly. However, the USPTO kept asserting this position for decades -and concomitantly b refusing to build such capacity! Note this coment from Software Protection: Practical and Legal Steps to Protect and Market Computer Programs (1985):

        The Patent Office and the CCPA, as the then principal court for patent appeals, engaged in a tug-of-war over software patentability. The Patent Office’s position was that it did not have the facilities to deal with software patents, so it did not want software to be patentable.

        And by the 1998 State Street decision, it was still trotting forth the same tired argument! 32 years of claiming “lack of capacity… probably why the CAFC finally said: enough is enough.

        Of course, State Street was followed by a flood of both poorly-written software patent applications (mainly because the patent bar had no CS practitioners, so software patents were being written by EEs and physicists who really didn’t understand software), and then allowed by poorly trained examiners – and this prompted the huge push-back of the Dudas era, just trying to flush bad applications and push down the allowance rate by any means necessary (including illegal means: see Tafas v. Dudas, as well as SAWS).

        Ned, the “eagerness” that you’ve seen probably begins with Kappos’s approach – but even that was not “eagerness” to issue software patents, but simply “eagerness” to reduce the PTO’s crippling inefficiency. I was in attendance at the AIPLA Annual Meeting where Kappos, giving the keynote introduction, said that the patent office should reach the right decisions: rejecting applications that should be rejected, and allowing applications that should be allowed. Such a simple statement – and yet, he received a standing ovation, from an audience sick of the “patent rejection office” attitude of the Dudas days.

        If you want to construe that statement – “allowing applications that should be allowed” – as “eagerness to issue patents of dubious 101 validity,” then I think there’s a problem of interpretation. The main thing that’s become “dubious” in the 49 years since the Presidential Report… is the courts’ interpretation of 35 USC 101.

        1. 1.1.3.1

          How does one determine what patents ought to be allowed? This is a matter of policy.

          The recent guidance shows that the USPTO wants to make it easier for applicants to get around 101. What is the motivation underlying such a policy?

          Perhaps it is the fact that “customers” are asking for “guidance” so that clients in certain technologies can continue to get patents. If the customers stopped filing how would the USPTO make fees?

          Kappos was great and fixed many problems but he put the USPTO on the path to being a fully captured agency. I am not sure history will be kind to him over the long run.

          1. 1.1.3.1.1

            There is a culture change coming regarding what the role of the PTO ought to be. The assumption had been for years that the USPTO existed to “promote innovation.” There are a growing number of individuals who believe that the USPTO should also be the guardian of the public domain.

            Those arguing the law (as in the 1952 patent act) are chasing ghosts. The law is toast. It’s all about policy now. At some point the new policy will become law but until then, expect more ‘rejections without evidence’ and ‘judicial activism.

            It is really absurd that we are relying on a law from 1952 to govern the modern patent system,. But lots of powerful people would lose money if we actually changed the law.

          2. 1.1.3.1.2

            The recent guidance shows that the USPTO wants to make it easier for applicants to get around 101.

            “Get around” is a rather loaded portrayal, isn’t it?

            A more accurate assessment is that the USPTO is showing applicants how to comply with 101. There’s a big difference between IRS coaching people on loopholes for circumventing substantive rules contrary to their intent, and just presenting some model tax returns that satisfy its rules.

            Construing the PTO’s suggestions as “getting around” 101 presumes that Alice, etc. are expressly intended to severely curtail the realm of patent-eligible inventions. That would be a troubling result, since the judiciary does not have that power: it cannot legally set or alter the policy decisions behind 35 USC – it only has the power to interpret the intent of the legislature as faithfully as possible. And the courts, even the Court, have been extremely careful to state that that’s what they’re doing.

            1. 1.1.3.1.2.1

              “A more accurate assessment is that the USPTO is showing applicants how to comply with 101. ”

              In other words how to redraft claims on the same invention. The underlying tech is still the same, Aka- get around 101.

              The PTO’s guidance on 101 has been nothing short of inconsistent. Certain claims they say are eligible can easily be shown to be ineligible and vice versa.

              Most technologies do not run into 101 issues. Only two areas–biotech and computing–are plagued with these issues.

              Again, this is policy masquerading as law.

              “That would be a troubling result, since the judiciary does not have that power: it cannot legally set or alter the policy decisions behind 35 USC – it only has the power to interpret the intent of the legislature as faithfully as possible. And the courts, even the Court, have been extremely careful to state that that’s what they’re doing.”

              Therein lies the problem–the lack of intellectual honesty among judges issuing 101 decisions. 101 jurisprudence really has little basis outside of judge made policy that certain things are not eligible for patenting because of the effects that issuing patents on those things would have.

              1. 1.1.3.1.2.1.1

                The PTO’s guidance on 101 has been nothing short of inconsistent. Certain claims they say are eligible can easily be shown to be ineligible and vice versa.

                I totally agree (and you might appreciate my write-up of how Diehr’s claims could easily be invalidated today).

                But this is the result of Alice and Mayo – creations of the Supreme Court, not the USPTO.

                The USPTO hates this situation. Examiners frequently tell me how much they loathe the nonsense happening with 101 law (and various sections of 112), because it creates all of this shifting, flowery nonsense that interferes with their jobs.

                Most technologies do not run into 101 issues. Only two areas–biotech and computing–are plagued with these issues.

                That’s solely because the rationale of Alice is only being selectively enforced in these areas. In more conventional areas (mechanical, chemical, and electrical), the claims aren’t any better – in fact, they’re often worse, in terms of using broad functional language and claiming results – but everyone is just pretending that Alice doesn’t apply there. There is no technical or logical distinction for this boundary.

                Therein lies the problem–the lack of intellectual honesty among judges issuing 101 decisions. 101 jurisprudence really has little basis outside of judge made policy that certain things are not eligible for patenting because of the effects that issuing patents on those things would have.

                I couldn’t possibly agree more with you here. Unelected and unaccountable judges – with no constituency, no business experience, and often no technical background – are critically altering the law of the business of technology. Why is this not cause for great alarm?

              2. 1.1.3.1.2.1.2

                You keep on using that word “policy,” but you have not seemed to grasp who by our constitution gets to set that policy (hint: it is only one branch of the government).

                That branch is not the Executive.

                That branch is not the Judicial.

                I hope that you can figure it out.

                …and yes, with certain well-established limitations under the law, Congress CAN delegate its authority.

                I have in the past given examples in patent law of such a purposeful delegation.

                101 is NOT such a delegation.

        2. 1.1.3.2

          David, the last 20 years, save for Dudas, was different. The PTO lead the way, discarding the business method exception and the reference to Hotel Security. This from State Street,

          In view of this background, it comes as no surprise that in the most recent edition of the Manual of Patent Examining Procedures (MPEP) (1996), a paragraph of § 706.03(a) was deleted. In past editions it read:

          Though seemingly within the category of process or method, a method of doing business can be rejected as not being within the statutory classes. See Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2nd Cir.1908) and In re Wait, 24 USPQ 88, 22 C.C.P.A. 822, 73 F.2d 982 (1934).

          MPEP § 706.03(a) (1994). This acknowledgment is buttressed by the U.S. Patent and Trademark 1996 Examination Guidelines for Computer Related Inventions which now read:

          Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead such claims should be treated like any other process claims.

          Examination Guidelines, 61 Fed.Reg. 7478, 7479 (1996). We agree that this is precisely the manner in which this type of claim should be treated. Whether the claims are directed to subject matter within § 101 should not turn on whether the claimed subject matter does “business” instead of something else.

          We all know that the PTO caved on B-claims, and after Alappat, the also caved on its dicta that if a programmed computer was recited, that was enough.

          1. 1.1.3.2.2

            Ned, neither of those examples shows the courts “leading the way.”

            The “business method exception” was removed from the MPEP because – surprise! – it had no basis in law.

            Here’s the portion of State Street, summarizing Hotel Security, that you noticeably did not quote:

            Even the case frequently cited as establishing the business method exception to statutory subject matter, Hotel Security v. Lorraine, did not rely on the exception to strike the patent. In that case, the patent was found invalid for lack of novelty and “invention,” not because it was improper subject matter for a patent. The court stated “the fundamental principle of the system is as old as the art of bookkeeping, i.e., charging the goods of the employer to the agent who takes them.” …

            This case is no exception. The district court announced the precepts of the business method exception as set forth in several treatises, but noted as its primary reason for finding the patent invalid under the business method exception as follows: … “The ‘056 Patent is claimed sufficiently broadly to foreclose virtually any computer-implemented accounting method necessary to manage this type of financial structure.”

            Whether the patent’s claims are too broad to be patentable is not to be judged under 101, but rather under 102, 103 and 112. Assuming the above statement to be correct, it has nothing to do with whether what is claimed is statutory subject matter.

            The CAFC then notes that the USPTO deleted this section of the MPEP in view of this background.

            It’s clear that the USPTO was following, rather than leading, on this understanding of 101. Even though the rationale around 101 has shifted strongly in the other direction, the USPTO cannot be said to have led on 101 in the late 90’s.

            Even you seem to acknowledge this, since you note, above, that the PTO “caved” on 101 after Alappat. Your point about the PTO seems to be lost here.

            1. 1.1.3.2.2.1

              This has only been pointed out to him like a bajazillion times David.

              How much do you want to bet that your one more time won’t change anything?

              The Merry Go Round will continue, because that is what Ned does.

            2. 1.1.3.2.2.2

              Yeah, David, alternative holdings, one that that Rich did not like.

              Holding 1, business methods are not an Art, and the means employed were not novel.

              Holding 2, as quoted.

              Holding 1 widely followed. But Rich did not like it. Many cases held that business methods were not eligible.

              Rich’s methods were, let us say, abominable. He did what he did time and time and time and time again. Did you see where he questioned the “source” of Hotel Security? He had no intention whatsoever of being honest here. None at all. Rich was the opposite of Learned Hand.

              You must take care when citing Rich. He was as slick as they come.

              1. 1.1.3.2.2.2.1

                Yeah, David, alternative holdings, one that that Rich did not like.

                LOL – what hypocrisy.

                Coming from Ned Heller, the King of the “6-is-a-genius-if-he-aligns-with-me” windmill chasing logic….

                Something abominable alright (just not what Ned Heller thinks).

                But hey, denigrations of individuals who best knew the law are permitted in this ec(h)system….

    2. 1.2

      Certainly Ned Heller you are NOT advocating a misapplication of law on purpose are you….?

      It “sounds” like you want an ends even when told that the means is improper.
      What kind of self-respecting attorney opts for that path?

      /off sardonic bemusement

    3. 1.3

      Formatting a display according to user preferences?

      You and I both know what REALLY will happened when we get past 101.

      First – no, it’s not really “formatting a display according to user preferences.” It’s configuring the device to turn on the display and show the information when it receives the notification, when the display is off when the notification is received. Still very low chance of an allowance, but not quite as ridiculous as that summary.

      Second – I’d have absolutely no problem with this invention being rejected under 102/103 -0 presuming the references are fairly close, and not unreasonably “stretched” using BRI (e.g.: “Reference A shows a display with a user-operable power button; PHOSITA would find this analogous to the device automatically turning the display on…”)

      But that is exactly my point – and probably the USPTO’s point, too: Why bother with evidence-free opinions of “abstractness” under 101, if the claim can also be rejected under 102/1o3 based on objective evidence?

      Virtually every claim that’s been rejected under 101 or 112 could also be rejected under 102/103. It’s especially true, and especially easy, where the 101 issue is overbreadth: overbroad claims should also ensnare a vast library of prior art.

      If that’s the case – then we really need to step back and ask: what is the point of all this?! Are we fundamentally altering bedrock principles of patent law, just to give examiners a rejection “shortcut” around 102/103 – alleviating them of the onerous burden of a proper search and claim mapping? Does that seem even remotely justifiable?

      1. 1.3.1

        Virtually every claim that’s been rejected under 101 or 112 could also be rejected under 102/103. It’s especially true, and especially easy, where the 101 issue is overbreadth: overbroad claims should also ensnare a vast library of prior art.

        This is unfortunately false. There is a level of abstraction where search and claim mapping become nearly impossible. I will use the claims from Alice as an example

        “A method of exchanging an obligation between parties, wherein an exchange obligation is administered by a supervisory institution, and wherein at least one credit record and one debit record is maintained with an exchange institution, the method comprising:
        (a) maintaining a shadow credit record and a shadow debit record for a party to be held independently by the supervisory institution from the exchange institution;
        (b) for every transaction resulting in an exchange obligation, the supervisory institution electronically adjusting said shadow credit record and/or shadow debit record, allowing only those transactions that do not result in a value of said shadow debit record being less than a value of said shadow credit record; and
        (c) at the end of a period of time, the supervisory institution providing an instruction to the exchange institution to credit and/or debit in accordance with said adjustments of said allowed transactions, wherein said instruction being an irrevocable, time invariant obligation placed on the exchange institution.”

        This is something that any set of servers is probably capable of doing but how would the examiner go about proving this?

        The method itself is probably “novel” under 102 due to the lack of a written reference but it could be commonly practiced in financial circles (which of course it was).

        Sometimes it is just not feasible to find objective evidence. This does not justify patentability.

        1. 1.3.1.1

          It isn’t as much about giving examiners a short cut. It’s more about not giving attorneys a loophole.

        2. 1.3.1.2

          Claims that are this hyper-specific are “picture claims.” And frankly, they aren’t worth the trouble of ruling them valid or invalid, because no one on the planet infringes them. Often, not even the patentee is using the claimed invention; they have made a minor adjustment to the end product that takes it out of the realm of equivalents of the patent.

          Consider the same argument regarding U.S. Patent No. 8,676,045 – Amazon’s “Studio Arrangement” patent – which prompted the usual frothing-at-the-mouth internet response over patent on “white-background photography.” Go look at the broadest claim, and then tell me why anyone should ever be concerned about a patent so hyper-specific that no one ever has or ever will infringe it.

          So again, I ask: Is this why we’re distorting the foundations of patent law? To invalidate a bunch of hyper-specific claims that will never be infringed anyway?

          1. 1.3.1.2.1

            David,

            Setting aside your presumption that “no one on the planet infringes them” (which is dubious, at best, given the breadth of many claims struck down under Alice), how can you say that they “aren’t worth the trouble of ruling them valid or invalid”?

            These claims went to the Supreme Court precisely because someone said they were infringed and someone else said they were invalid.

            topce is correct: it is often difficult with these abstract patents to find the evidence of what everyone has been doing for years. The Federal Circuit has not helped by limiting KSR (see, e.g., K/S HIMPP) — these are the patents that we need 101 for. The patents that claim what everyone knows and naturally does, but would never actually write down and describe because that would be pointless.

            1. 1.3.1.2.1.1

              Setting aside your presumption that “no one on the planet infringes them” (which is dubious, at best, given the breadth of many claims struck down under Alice)…

              To be sure, I’m not talking about all of the patents invalidated under Alice. I agree that many of them are extremely overbroad; note this article I wrote about many of them.

              Here, I’m talking specifically about a subset of them that are hyper-specific – such as Alice’s patent above, and the Amazon one that I noted.

              And in the case of Alice and others, I believe that 101 is being used as a litigation shortcut. Rather than proving the patent invalid (by finding new art) or non-infringed (by finding a technical difference), accused infringers are just tossing out an opinion that the patented invention is abstract – and the courts are swallowing it, hook line and sinker.

              topce is correct: it is often difficult with these abstract patents to find the evidence of what everyone has been doing for years.

              Really? Given the breadth of open-source, and Stack Overflow, and Dr. Dobbs’ Journal, and the O’Reilly Zoo, and the entire contents of decades of newsgroups, and hundreds of annual presentations at tech conferences… etc.? Let alone, thousands of previously filed patent applications?

              The field of public disclosure for software is rich and plentiful. If someone can’t find invalidating prior art for a software invention in that rich set of disclosure – then maybe, just maybe, it’s actually novel.

              1. 1.3.1.2.1.1.1

                David,

                Have you ever tried to authenticate any of that information in an adversarial court, given the ever-changing nature of the internet and the difficulty in proving what existed at a particular point in time?

                From your bio, I’m going to say you’re not a litigator, so I will assume that you’re probably not aware of these issues.

                The tldr: they are significant and make reliance on that sort of prior art much more difficult than your post suggests.

                1. So we’re distorting foundational principles of patent law, in order to avoid updating the law of evidence to the 21st century? Does that seem like a good idea?

                2. “foundational principles of patent law”

                  David, you make it seem like Alice is something new. It’s not. The principles behind Alice go back to Morse at least.

                  So perhaps the question to you is: you’d propose distorting foundational principles of patent law in order to avoid invalidating patents? Does that seem like a good idea?

                3. If you’re taking the position that Alice hasn’t radically changed the principles of 101 law… you’re going to receive some disagreement. That’s really all I can say.

                4. David I have no doubt many patent practitioners, and many members of the Federal Circuit (past and present) would disagree with me. I would doubt, however, that the Supreme Court would. As it recently said: “We have interpreted § 101 and its predecessors in light of this exception for more than 150 years.”

                  Despite what some Federal Circuit judges and some patent practitioners might think, the Supreme Court law controls. I would not rest easy on Federal Circuit precedent and draft my claims to meet that when the Supreme Court has said otherwise. Others can do so, and claim that the law has “radically changed,” to their clients’ peril.

                5. Jane – you are expressly missing the point that the Supreme Court has boffed the law.

                  Aligning with that – and failing to account for any new actual legal reasoning – merely places you in the category of the mindless lemmings.

                  Great – if that is what you want.

                  Not so great if you are trying to hold an inte11igent conversation.

              2. 1.3.1.2.1.1.2

                If you’re taking the position that Alice hasn’t radically changed the principles of 101 law… you’re going to receive some disagreement.

                Right. The same “disagreement” we heard in the run-up to Prometheus, expressing the ridiculous view that of course any claim with an eligible element in it (e.g., a transforming step or a machine) was necessarily eligible. It just had to be the case! After all, look at all the claims that the PTO granted.

          2. 1.3.1.2.2

            The problem isn’t claims that are hyper specific. It’s those that are hyper-general. While we’re talking about amazon, Lets take a look at Amazon’s “one click” patent

            “1. A method of placing an order for an item comprising:

            under control of a client system,

            displaying information identifying the item; and

            in response to only a single action being performed, sending a request to order the item along with an identifier of a purchaser of the item to a server system;

            under control of a single-action ordering component of the server system,

            receiving the request;

            retrieving additional information previously stored for the purchaser identified by the identifier in the received request; and

            generating an order to purchase the requested item for the purchaser identified by the identifier in the received request using the retrieved additional information; and

            fulfilling the generated order to complete purchase of the item

            whereby the item is ordered without using a shopping cart ordering model. ”

            This is an extremely simple claim/application of existing technology. But the examiner was unable to find art for it. It issued. 102 and 103 failed here and there are countless examples where this occurred.

            1. 1.3.1.2.2.1

              This is an extremely simple claim/application of existing technology.

              Okay, look at these patents:

              U.S. Patent No. 8,409,038: Baseball bat

              A bat comprising an elongate wooden structure having a substantially uniform cross-section over its entire length, said structure comprising: (a) a first wooden batten having a first end; (b) a second wooden batten having a second end; and (c) a mating section wherein said first end and said second end overlap in a longitudinal direction; (d) wherein said substantially uniform cross-section is triangular.

              It’s a baseball bat, where the handle and the barrel are made out of different kinds of wood.

              U.S. Patent No. 8,991,687: Mailbox indicator

              A mailbox indicator system comprising an indicator flag that is constructed and arranged for attachment to a container of a mailbox, a cable that interconnects the indicator flag and container lid, a plate secured to an outer surface of the mailbox container, and a guide secured to the plate, said cable rides over the guide.

              It’s a flag for a mailbox, controllable by a cable.

              U.S. Patent No. 9,118,057: Battery pack attached to a cable

              An article comprising: i. a handheld device including: (a) a housing; and (b) a powered element within the housing; ii. a battery pack; and iii. an external cable having: (a) a first segment containing battery lead wires and electrosurgical lead wires; and (b) a second segment containing the electrosurgical lead wires; wherein the handheld device is connected by the external cable to a functional system; wherein the housing is connected to the battery pack by the first segment of the external cable; wherein the battery pack is connected to the functional system by the second segment of the external cable; wherein the battery pack supplies power to the powered element; wherein the functional system includes a console which enables the handheld device; and wherein the console houses a generator which supplies electrical energy to the handheld device separate from the powered element.

              It’s… well, it’s a battery pack attached to a cable. I suppose the use of lead wires that are “electrosurgical” is somehow relevant.

              U.S. Patent No. 8,875,945: Toy water gun apparatus

              A toy water gun apparatus comprising: a nozzle; a gun housing having a water chamber for filling with a quantity of water, a first end connected to a water inlet for releasable connection to source of pressurized water, and a second end connected to a nozzle valve associated with said nozzle; a pressurizable air chamber in bidirectional fluid communication with said water chamber; and, a trigger mechanism connected to said nozzle valve to selectively open said nozzle valve to dispense a stream of water during play.

              It’s a squirt gun that… okay, I have no idea what could possibly be new about this.

              U.S. Patent No. 9,084,472: Educational toothbrush

              An educational toothbrush, comprising: a head comprising a plurality of bristles; and a brush neck configured to connect the head with a body, wherein the body comprises a button configured to activate audio on the educational toothbrush when pressed a first time and deactivate audio on the educational toothbrush when pressed a second time, the body further comprises an audio device holder, and the audio device holder comprises an opening configured to allow liquid entering the body via an audio output section to exit from the body of the educational toothbrush.

              It’s a toothbrush with an integrated audio player.

              U.S. Patent No. 9,119,377: Pet toy containing a treat compartment

              A pet toy comprising: a body; a body opening in the body; and a flag comprising a treat pocket and a treat delivery opening, wherein the flag is coupled to the body.

              It’s… self-explanatory.

              All of these things are “extremely simple claims/applications of existing technology.” And yet, no one – no one – is protesting the issuance of patents for these inventions. Only when the invention involves software does the complexity of the invention suddenly seem to matter.

              Why is that?

              1. 1.3.1.2.2.1.1

                Not true

                link to law.depaul.edu

                Also see the comments he submitted to the USPTO regarding patents like those.

                Software and Biotech are extremely important parts of our economy and are going through periods of robust innovation. That’s why the patents in those areas are under scrutiny.

                I think this is misguided as well. We have too many patents in general. The patent document has been devalued to the point of meaningless. The only value inherent in a patent is the amount of money that can be extracted in litigation. Does nothing other then benefit big corporations and litigators.

                1. Okay, not “no one.”

                  But would you agree that the uproar over patents in software, on the basis that these inventions are “simple,” gigantically outweighs public protest over similarly “simple” patents in other areas of technology?

              2. 1.3.1.2.2.1.2

                Is this really a sincere argument? Would you happily accept Alice if the office applied it to other arts with the same vigor it applies Alice to bio and business methods?

                1. Of course not, because Alice is completely subjective.

                  My point is that I dispute the contention that Alice is mainly applied to the field of software because there’s some special problem in that area – either with the applied-for inventions, or the issued claims. The truth is that Alice is being selectively applied in these areas purely for policy reasons and business agendas – i.e., common perceptions that software inventions are, for some reason, not as worthy of patent protection as inventions in other areas. You see this in the common complaints (like topce’s) that software is “simple” or “obvious,” while tremendously simpler and more trivial inventions in other areas are given their full due, and patents issue without any fanfare or trouble.

                2. David Stein; Alice is being selectively applied in these areas purely for policy reasons and business agendas

                  Pretty sure it’s “selectively applied” to computer-implemented junk because the case was about computer-implemented junk and there is more computer-implemented junk out there than any other single kind of junk.

                3. It appears that a term of art that is in Supreme Court jurisprudence is not allowed here…

                  drawn to abstract ideas.

                  m1ndless g0bb1edyg00k

              3. 1.3.1.2.2.1.3

                no one – no one – is protesting the issuance of patents for these inventions.

                And David Stein has no idea why that might be the case? Really? Funny stuff.

                1. please tell me that you have more than just your optional claim format script or your b@nal “mere aggregation” script….

        3. 1.3.1.3

          tocpe, “exchange obligation is administered by a supervisory institution”

          That, sir, is non statutory.

          I have no clue as to why the likes of Judge Rich called business methods a judicial exception when in fact business methods are nonstatutory and were treated that way for nearly 100 years prior to State Street Bank. Clearly, Judge Rich was attempting to discard case law prior to 1952 with which he disagreed by calling things like business methods “the judicial exceptions” when that was not the basis for their being deemed unpatentable under section 101.

      2. 1.3.2

        “It’s configuring the device to turn on the display and show the information when it receives the notification, when the display is off when the notification is received.”

        This is not in the claim as far as I can see.

      3. 1.3.3

        David, my concern is that after passing the 101 filter, the PTO will have to give patentable weight to ineligible subject matter that has no functional relationship to any machine, etc.

        What do stock quotes have to do with turning on a display?

        As with the printed matter exception, the printed matter has no weight unless it imparts new functionality to the otherwise eligible subject matter.

        1. 1.3.3.1

          You should more concern yourself Ned with a better grasp of the exceptions to the judicial doctrine of printed matter.

          Hey – I laid out a very concise and simple set theory explanation for you, all polite and everything, and invited you to a dialogue on the matter, but – as typical –
          You
          Ran
          Away.

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