Cardpool: Amending Claims in Reexam after Court Judgment of Invalidity

by Dennis Crouch

The timing of a settlement is sometimes really important for patentees — especially if a court is about to find your patent invalid.

Slightly complex story: In Cardpool v. Plastic Jungle, the district court ruled on summary judgment that Cardpool’s gift-card-exchange patent claims invalid under 35 U.S.C. 101 and dismissed the case with prejudice. U.S. Patent No. 7,494,048.  That decision was initially affirmed by the Federal Circuit in a R.36 Judgment Without Opinion. Shortly thereafter, however, the USPTO issued a reexamination certificate finding the claims (as amended in reexam) patentable (of course, the PTO did not consider eligibility but only novelty and nonobviousness).

The timing of the reexamination certificate gave Cardpool the opportunity to request rehearing from the Federal Circuit. The appellate court agreed and vacated its prior summary affirmance (although not the district court’s opinion) and remanded to the district court to consider the impact of the reexamination changes.

The parties apparently came to some agreement and thus on remand the parties jointly moved for the district court to vacate its invalidity judgment since the claims had been amended and since the PTO certificate issued before the appellate mandate. See Fresenius USA, Inc. v. Baxter Int’l, Inc., 721 F.3d 1330, 1346 (Fed. Cir. 2013).

However, the district court rejected the plea for vacatur — finding that the PTO decision does not “displace a district court judgment” and that it would be “against the public interest” to allow a patentee to overcome an invalidity judgment simply by “amending its invalid claims.”

No Vacation: Now, on appeal again, the Federal Circuit has affirmed the lower court ruling that vacatur is not necessary or proper:

The Supreme Court counsels that “vacatur must be decreed for those judgments whose review is . . . ‘prevented through happenstance’—that is to say, where a controversy presented for review has ‘become moot due to circumstances unattributable to any of the parties.’” U.S. Bancorp Mortg. Co. v. Bonner Mall P’ship, 513 U.S. 18, 23 (1994).

Here, the mootness is due to amendments made by the patentee.  As such, the appellate court refused to vacate the district court judgment.

= = = = =

Res Judicata: What is unclear here is the level of claim & issue preclusion that will apply going forward when Cardpool asserts the patent against some third party.  Claim 1 was found invalid by a final judgment. However, Claim 1 has now been amended.   Could Cardpool sue Plastic Jungle (or its assigns) on the revised Claim 1?  Could Cardpool sue an unrelated alleged infringer? Writing for the majority, Judge Newman suggests (but does not hold) that Cardpool will be able to do so:

On the facts and procedures of this case, the issue of validity of the reexamined claims remains to be addressed in any future proceeding. In the initial proceeding the original claims were adjudicated only on the ground of subject matter eligibility under section 101. As in Aspex, the effect of a prior judgment rendered on specific issues as applied to the original claims, depends on the facts and issues of the reexamination, and invokes equity as well as law.

I pulled-up the reexamined claims and found that they were extensively amended to require that the method be computer-implemented using a processor, computer program, data requests, validation process by the processor, etc.  I would be truly surprised, if these amendments are sufficient to overcome the Alice Corp. test for eligibility (as implemented).

 

154 thoughts on “Cardpool: Amending Claims in Reexam after Court Judgment of Invalidity

  1. 10

    GENETIC TECHNOLOGIES LIMITED v. MERIAL L.L.C. (CAFC 2016)

    Hooray! GTG’s junk patent finally tanked as ineligible.

    Congrats to the Merial team for cutting through the incredible b.s. that GTG has been flinging at everyone for years. Virtually anyone who knows anything about patent law and genomics understood that this claim was pure unadulterated crxp. Good riddance.

    1. A method for detection of at least one coding region allele of a multi-allelic genetic locus comprising:

    a) amplifying genomic DNA with a primer pair that spans a non-coding region sequence, said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA
    sequence characteristic of said allele; and

    b) analyzing the amplified DNA sequence to detect the allele.

    1. 10.1

      Duck down—drive by!!!

      [85 year old hobo/clown slowly lurches by on rusted tricycle, impotently slinging mud]

      Everyone okay? No one got hit by the mud, did they?

      Who was that, why, the junki-est, tro-lliest creature you’ll ever see . . .

      1. 10.1.1

        the junki-est, tro-lliest creature you’ll ever see

        That would be GTL and their mascot.

        Good riddance! I wonder if the grifters will give the money back?

        LOLOLOLOLOLOL

        Just kidding.

      1. 10.2.1

        Ned,

        Legitimately valid (and not to mention eligible) claims can fully be made of elements, NONE of which are new in their own right.

        Why is this simple and fundamental understanding seemingly beyond your ken?

        Eligibility (even still) is NOT determined on a parsed element basis.

          1. 10.2.1.1.1

            Not at all, Ned.

            You do know the difference between a strawman, and the natural extension of your very own logic that shows just how faulty that logic is, right?

            You keep on posting as if some single part of a claim must be new.

            That is just not so.

            If you don’t like where the logic leads, I suggest that you change your logic.

    2. 10.3

      MM, I read the opinion, but it raises questions.

      Strike step B.

      We are left with Step A, and everything there seems to be a physical process, with some things functionally defined. For example, “which is in genetic linkage.” That certainly seems to define structure by its function.

      Dyk’s opinion skate right up to the problem with the claim and then just jumps over the problem to a conclusion.

      “The sole function of the
      “primer pair defining a DNA sequence which is in genetic
      linkage with [a multi-allelic] genetic locus” is to amplify a
      sequence of non-coding DNA in linkage disequilibrium
      with a sequence of coding DNA of interest. ’179 patent
      col. 59 ll. 60–62. “The method comprises amplifying
      genomic DNA with a primer pair that spans an intron
      sequence and defines a DNA sequence in genetic linkage
      with an allele to be detected.” Id. at col. 4 ll. 37–39. The
      claim is directed to a natural law—the principle that
      certain non-coding and coding sequences are in linkage
      disequilibrium with one another.”

      I think this might be an example where the breadth of the claim might be its problem, but I am not sure.

      I do think, however, that claim step A is new. Unless there is a functional claiming problem, I don’t see a 101 issue here.

      1. 10.3.1

        Ned, there are four important facts to understand here.

        1) The inventor of this junk did not discover “linkage disequilibrium” which is just a fancy way of saying that some pairs of DNA sequences located at distant positions on a chromosome are inherited at frequencies that differ from what would one predict mathematically.

        2) The inventor of this junk did not discover PCR.

        3) It was known that if a pair of sequences exhibit linkage disequilibrium that the knowledge could be used to determine the likelihood of one of those sequences from the presence (or absence) of the other.

        4) Nobody — absolutely nobody — ever taught or even suggested that PCR would not work on a sequence merely because that sequence is in linkage disequilibrium with another sequence. The method simply does not care about the abstract label people assign to it (just as it does not care if the sequence is “correlated with breast cancer” or “derived from a fetus”).

        Now, given those facts, do I need to walk you through the 101 analysis or can you handle it from here? Let me know. I’m happy to help out. I first analyzed this junk over a decade ago. The patentees are some genuine s-c-umbags. They’re also incredibly rich so nobody should feel sorry for them.

        Of course we know some people can’t help themselves when it comes to expressing their deep l0ve for the worst abusers in the system.

        1. 10.3.1.1

          Interesting post – let’s translate:

          1) protons exist.
          2) electrons exist
          3) protons exist (this point 3) is nothing more than point 1) restated)
          4) electrons exist (this point 4) is nothing more than point 2) restated)

          Now given those facts, does this mean that ALL configurations of protons and electrons must be INELIGIBLE?

          (and just for jakes – neutrons can be analogized to the ALLOWED optional ability to have parts of a claim written in language that is not “objective physical terms.”)

          Of course we know some people can’t help themselves when it comes to expressing their deep l0ve for the worst abusers in the system

          Funny how things that do not align with the desired Ends of Malcolm’s are portrayed simply as “aligning with worst abusers” when the TRUE worst abuser of ANY system is the one who vap1dly “advocates” with an “Ends justify the Means” mentality, and who simply refuses to even consider the means being used – which of course is paramount in an inte11ectually honest LEGAL discussion.

          Maybe that person should spend less time throwing out ad hominem and trying to diminish the FACT of his “ends justify the means” mantras, and spend more time actually addressing the substantive points of law….

          1. 10.3.1.1.1

            Now given those facts, does this mean that ALL configurations of protons and electrons must be INELIGIBLE?

            Bold, caps, and italics! Wow. Deep, impressive stuff! All in service of a kindergarten-size strawman that makes most sense when you hum the l00ney t00ns theme while you read it.

            Even the professional shills at PatDocs are going to have to swallow hard to defend this junk. Thank goodness they’ve been practicing for years.

            1. 10.3.1.1.1.1

              Nice diversion and LACK of response with your (typical) focus on form instead of substance, with the meme of “defend claim” thrown in to boot for yet another different blog…

              How is your “transparency challenge” coming along with the good doctor over at PatentDocs?

              Yeah, thought so.

              And there is no strawman when I take your logic and show where it leads.

              And of course, you knew that too, eh pumpkin?

    3. 10.4

      Hooray! Far less money going into genetic research! Cancer will be with us for far longer! Yippee!

      1. 10.4.1

        Hooray! Far less money going into the pockets of this tr0ll whose ridiculous junk claims created needless liability for thousands of companies

        Fixed for accuracy.

        Maybe you want to say something deep about the Wright Brothers, Les? That’s usually a big winner for you.

        1. 10.4.1.1

          Hooray! It will be more difficult if not impossible for people to protect their investments in genetic and medical research! Investment in research will dry up. Cancer, diabetes, AIDs, Multiple Sclerosis, Muscular Dis-trophy, will be with us for far longer! Yippee!

          1. 10.4.1.1.1

            It will be more difficult

            Oh noes! Cry me a river for our poor, poor, tortured investor class. Whatever will they do???

          2. 10.4.1.1.2

            Investment in research will dry up

            LOL

            Sure it will.

            Just like “KSR killed patents.”

            You people never cease to amuse.

            1. 10.4.1.1.2.1

              KSR is only rarely applied/enforced.

              As you gleefully illustrate every day (even several times a day), Alice is being applied….

              Perhaps instead of rolling your eyes, you could explain why someone would now invest in genetic research, seeing as how the courts are ruling that the result of such research is not protect-able and can be practiced by all those that did not make the investment?

  2. 9

    REMBRANDT VISION TECHS., L.P. v. JOHNSON & JOHNSON VISION CARE
    link to cafc.uscourts.gov

    New trial ordered under Rule 60(b)(3) b/c of expert perjury applying the law of the 11th Circuit.

    Rule 60(b)(3):

    On motion and just terms, the court may relieve a party or its legal representative from a final judgment, order, or proceeding for the following reasons:

    (3) fraud (whether previously called intrinsic or extrinsic), misrepresentation, or misconduct by an opposing party;

    Dyk dissented, saying that the patent owner (movant) could not show the result would have been different but for the fraud. The reason the patent owner lost was it failed to produce evidence, other that the testimony of an expert witness who himself was guilty of perjury, on an issue of infringement unaffected by the fraud by the defense.

    Also, the rule literally requires fraud by the “party.” According to Judge Dyk, majority erred when it eliminated the requirement to show that a party or its counsel knew of the fraud.

  3. 8

    It’s unclear why this is such a difficult topic for so many patent attorneys but let’s refresh everybody’s memory: computers that store data, remotely or not, and that can generate (with a sensor), receive and send data, wirelessly or not, are really, really, really, really old. Since the beginning of digital computers, it’s been absolutely obvious as a conceptual matter that any object can be “computerized” to the extent that the object can be modified to comprise a computer that receives data into a digital form for storage (remotely or not), or modified to transmit data to such a computer.

    Historians can quibble about the exact dates but it’s safe to say all this was common knowledge at least a few years before 1980. The grown ups will remember that we sent people to outer space, even the moon. We sent robots to Mars. Yes, computers were involved. Pictures were taken. Audio was recorded. Communications were made, back and forth. Data was collected, classified and stored.

    And yet here we are in 2016 and the existence of a portable electronic box comprising a “phone” (basically an audio receiver and a transmitter) and a camera (WOW!) and a computer continues to be perceived as some kind of miraculous object that poofed into existence in 2000, absolutely shocking the scientific community who previously had never even contemplated such a thing. Civilized people simply didn’t contemplate such things. Civilized people never thought about a camera phone because they were too busy sending computerized robots to remotely photograph interesting stuff on Mars. But a camera *and* a phone *and* a computer? Please.

    The farcical adventure continued today at oral argument in TLI Communications LLC v. AV Automotive, L.L.C. The “innovation” in this case was classifying data for remote storage. Oh but wait! It was picture data. Totally different. Ok, not really. It’s just data. What was totally different is that it was picture data collected on a phone. That changes everything OMG!

    link to cafc.uscourts.gov

    Judge Hughes: “It does seem to me that the idea of … you have a camera phone and because it can’t store a lot of stuff and you can’t run to your computer in between storing 2 or 3 pictures the notion of being able to wirelessly transmit them without plugging it in may have been patent eligible.”

    As described, the “notion” would surely be unpatentable as obvious in view of the reams of prior art describing remote servers and their utility so it’s a rather pointless invocation. Storing data (or anything else) in some available alternative space when a shortage is perceived is, conceptually, older than the human race.

    More importantly, however, given the existence of wirelessly connected data storage/processing devices in the prior art, there is no eligible innovation to be made by limiting claims to the particular content of the stored data.

    Consider: How about a patent on a “A truck with more storage space than prior art trucks”. Is that claim eligible? Skilled artisans can build it. And if your “truck” is smaller than the trucks in the prior art than it’s clearly not my claimed truck. Can I haz patent now? Cuz who doesn’t want a bigger truck (besides the Amish)?

    Another exchange of note:

    Judge Hughes (at 16:30): “I don’t find the classification stuff particularly eligible …”

    Right. That’s because adding some “classification” scheme to old techn0logy is not patent eligible. Score one point for Judge Hughes! And watch a few thousand more “do it on a computer” patents flow down the junkhole. Buh-bye! And good riddance.

    The affirmance of ineligibility will likely show up as a Rule 36 opinion on the CAFC website tomorrow or early next week at the latest.

    1. 8.1

      MM, I wonder if you could post the claim under discussion so we might better understand the issues. I assume that the holding of the lower court was the claim was ineligible.

      1. 8.1.1

        6038295 (critical date 1996)
        link to google.com

        17. A method for recording and administering digital images, comprising the steps of:

        recording images using a digital pick up unit in a telephone unit,
        storing the images recorded by the digital pick up unit in a digital form as digital images,

        transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

        receiving the data by the server,

        extracting classification information which characterizes the digital images from the received data, and

        storing the digital images in the server, said step of storing taking into consideration the classification information.

        From the spec:

        The present invention addresses the problem of a communicating and administering digital images by providing for recording, administration and archiving of digital images simply, fast and in such way that the information therefor may be easily tracked.

        Yes, classifying stuff makes it easier to track the stuff. Wow.

        1. 8.1.1.1

          Fyi, these guys sued pretty much everybody who makes a cell phone with a camera and undoubtedly they asked for millions of dollars.

          Because “classify stuff.”

          What a joke of a patent system.

          1. 8.1.1.1.1

            MM, I agree, I have no idea how the PTO issues this kind of so-called improvement to technology that simply applies old and known techniques. This is where KSR would shine.

            1. 8.1.1.1.1.1

              Yes, because “good argument” always conflates 101 with 103, eh Ned?

              It’s almost like Congress never acted in 1952….

              (Once again, the Ends match for Ned, so there is no need to cast a critical eye towards exactly what Means were used to get to those Ends…)

              1. 8.1.1.1.1.1.1

                “good argument” always conflates 101 with 103

                A standard 103 analysis can certainly be a legitimate part of a 101 analysis.

                But it doesn’t always have to be. That’s particularly true where (1) the non-abstract elements in the claim are admitted to be in the prior art, exactly as set forth in the claim and/or (2) the non-abstract elements not admitted to be in the prior art are known by eight year olds to be in the prior art and function in the claim exactly as they were designed to function in the prior art (e.g., remote servers for storing data).

                Judges don’t need to act like f00ls just because patentees are acting like f00ls.

                1. Can certainly be a part…?

                  Maybe you missed the point (not sure how) about conflating 103 and 101…

                  This might be where you should pay attention to what I actually write regarding the historical perspective of what (and why) Congress did what they did in 1952

                2. Maybe you missed the point (not sure how) about conflating 103 and 101…

                  Maybe nobody cares what you think about anything?

                  The grown-ups know that there is a big difference between (1) this “conflation” silliness you spew on about and (2) the fact that an analysis of the prior art is absolutely essential for identifying eligibility problems in certain forms of claims (e.g., claims which recite non-abstract elements in addition to abstract elements).

                  Grow up, “anon.” When you grow up, we’ll let you sit at the big boys table. We might even give a crxp about what you think.

                  Or you can keep sxcking your thumb and mewling vapid slogans that demonstrate you’re just an ign0rant s chlub, stuck in the past.

                  Your choice.

                3. “anon: [Night Writer’s] approach is too nuanced

                  ROTFLMAO

                  I mean … LOLOLOLOLOLOLOLOL!!

                  Funniest. Comment. Ever.

                4. Admonishing me to “grow up” when you are the least grown up commentator on these boards is beyond ironic.

                  Malcolm being Malcolm…

        2. 8.1.1.2

          Well, MM, classifying information is as old as the hills. Other than that, there is nothing new.

    2. 8.2

      I just don’t understand why MM you don’t just post random letters for your pay.

      1. 8.2.1

        He does post random letters, in as much as no one reads what he says. When’s the last time you read something MM has said? Once you get the gist of what his argument is, that’s what his argument is every single time. It’s a broken record. You’ve seen one post, you’ve seen them all. And there’s no arguing against what he says, as he simply ignores you and/or deni grates you.

        1. 8.2.1.1

          Absolutely true PatentBob. Part of my point too was that if information processing is so meaningless why is he paid for it and why is the exact content of his processed information that he is paid for (his posts) so important.

        2. 8.2.1.2

          The other thing about MM’s posts is this objective structure nonsense. How does he suppose that his/her brain differs from other posters such as anon? Is not objective structure? Just bizarre. Is MM’s information processed in the ether by spirits or is it processed by a physical brain? If by a physical brain, then there must be objective physical differences between his/her brain and anon’s brain.

          1. 8.2.1.2.1

            That might be the dumbest analogy I’ve ever seen. My arm differs from your arm, but you don’t think they are identical for patent purposes?

            You think patents are appropriate for any immaterial differences that can be identified between two items?

            You are a card Night.

            1. 8.2.1.2.1.1

              Oh Martin. Exasperating is what you are. First, “immaterial differences” should be dealt with by 102/103/112 and not 101. Immaterial differences in patent law means that the two items do not have a different function and something has been added to the claim that does not change its functionality. For example, wherein the bike is red for a patent on a net set of gears.

              Second, you think that a brain that can fly an F-15 and a brain that can’t only have immaterial differences? Not true because the functionality of the brains is different. There is a functional difference.

              I strongly suggest you read a real patent law case book.

              1. 8.2.1.2.1.1.1

                You are exactly wrong Night. The brain that is “configured” to fly the F-15 does not differ from the brain that cannot fly an F-15.

                The configuring of those brains is beyond the scope of the patent system, and always should be. If it were not, the patent system would subsume virtually all other law- and I know patent maximalists may actually think all we need is patent law to govern ourselves anyway….

                1. Oops – Mr. Snyder engaged in anthropomorphication and did not realize that one of those two items was NOT human, but a machine that is expressly provided to be governed by patent law.

                  Silly Mr. Snyder.

                2. Sometimes I wonder if you can actually read anon.

                  Who wrote this?

                  “Second, you think that a brain that can fly an F-15 and a brain that can’t only have immaterial differences? Not true because the functionality of the brains is different. There is a functional difference.”

                  Its a multiple choice question. See if you can get it right.

                  a) night
                  b) night
                  c) night
                  d) night

                  Did you answer correctly?

                3. Mr. Snyder,

                  Your “wonderment” is misguided. You make the mistake in your way of thinking of Night Writer use of a human person brain example.

                  His sole purpose in using that example is to try to make the point that even for the realm of a person’s brain, there is underlying physical (real world) differences between different utilities.

                  I HAVE commented to him in the past that his approach is too nuanced for those that cannot be bothered with the basics of the patent terrain to begin with.

                  His point though is that there is NO “magic,” (quantum or otherwise) NO “witchcaraft,” NO “spirits from an ether world” that is the reason for different functionalities. Your sojourn over the side of a cliff with “First off, on a quantum level, there may not in fact *BE* a structural difference. Resonance or (mesomerism) means the only structural difference is the arrangement of the electrons, and since we cannot fix the location of an electron, only the probability of a location, we cannot say there is a “structural” difference between two states” is pure fantasy.

                  Your view is the view of the “logic” that ALL future inventions are somehow “magically” “already in there.”

                  There is a simple, simple example for you to grasp: three resistors.

                  Take three resistors.

                  Configure them in series.

                  Take the same three resistors.

                  Configure them in parallel.

                  Basic understanding of reality is that the first configuration IS a different structure from the second.

                  Your wanting to throw into the discussion the Heisenberg uncertainty principle of velocity/location is only evidence that you have NO C1UE of what you are talking about.

                  I am truly embarrassed FOR you.

                  But returning to Night Writer and his point: he is NOT making the classic mistake of anthropomorphication.

                  That mistake is to make NO difference between the human mind and the realms of what Congress has set up as statutory categories of patent eligibility.

                  Put simply, patent law as written by Congress fully embraces claims that may have elements that are themselves mental steps**. The prohibition is ONLY when you have a claim TOTALLY in the mind. I have pointed this out numerous times to those who wish to kick up dust and purposefully throw the discussion into obscurity. ANY attempt to move the goalposts and put claims TOTALLY in the human mind must be recognized as an inte11ectually dishonest tactic. Keep your eyes open and your wits about you. The mistake of anthropomorphication is related to the attempt to make the plainly patent eligible category into something TOTALLY in the human mind and thus – on that basis – not eligible.

                  Eligibility is simply something that is NOT rendered on a single claim element – ANY single claim element – divorced from the claim as a whole and taken ONLY as to that single claim element.

                  Just because there are others who so attempt to twist and manipulate law to their desired Ends, does NOT mean that you can be so cavalier about this basic patent foundation.

                  **I have also pointed out that the patent law doctrine of mental steps is being abused for these Ends-directed philosophical twistings, and invited the good professor Crouch to find an academic (even himself) to write a column on just what the patent law doctrine of mental steps is about, its historical generation and its lapse for being an incomplete and quite frankly LIMITED use doctrine.

                  He has steadfastly refused that invitation. Funny that, and how that refusal allows the continued MISrepresentations to be v0mited out again and again and again on these very pages. Once properly understood, the attempts to move claims TOTALLY in the mind can be seen for the mere propaganda that those truly vap1d posts that they are. Of course, that would mean that the good professor just might have to take steps to prevent (supposed) lawyers from using L 1 E S in their (continuous) advocacy efforts on this legal forum. Everyone know that THAT won’t happen. And that directly leads to the “pain” of innuendo and suppositions as to WHY that won’t happen. For ALL of the calls to make this forum a “better ecosystem,” Malcolm has run amuck for a full decade now.

                  Why is that?

                4. The issue isn’t whether the “configuring” of the brains is eligible for patentability, but is there a structural difference between the two brains that causes the different functionality.

                  And the answer is yes there is structural difference. And there is a structural difference between a computer configured to fly an F-15 and a computer that can’t fly an F-15. That is scientific reality.

                5. First off, on a quantum level, there may not in fact *BE* a structural difference. Resonance or (mesomerism) means the only structural difference is the arrangement of the electrons, and since we cannot fix the location of an electron, only the probability of a location, we cannot say there is a “structural” difference between two states. I know this stresses your mind, but relativity is real, and non structural.

                  But this is a patent blog, and the point that you are making is that a brain is an information processing machine, and the point you want to make is that when it’s doing its thing, there are physical changes QED patent eligibility.

                  Your point is wrong. It also leads to absurd results. Lets say I patent an F-15. You come along next week and patent the configuration of the machine needed to operate the F-15 and you won’t license it. You have just eliminated the value of my patent. That can’t be right.

                  The abstract ideas exception exists for a reason, and that reason is not that judges hate patents or software.

                6. Your patent on the F15 would block the second attempt (if your patent is enabled).

                  Your stay at the Holiday Inn last night won’t cut it, Mr. Snyder.

                7. Martin,

                  The point is that there is a structural difference between the two brains that produces the different functionality. The two computers also have structural differences that produce the different functionality.

                  Your response is off the wall.

                8. anon, would you change you mind about that stay at the Holiday Inn if the stay included, for example, dinner with Jennifer Lawrence.

                9. Ned,

                  The “Holiday Inn” is obviously a metaphor and a take-off of a series of commercials that the corporation ran a few years back.

                  It is abundantly clear that Mr. Snyder disregards key and basic understandings of patent law in order to promote his “alternative view.”

                  And it is just as clear that he simply does not care how off he is or why it is even important to know and understand these basic concepts.

                  He sees a different End and only wants to get to that End – no matter what Means are employed to get there. Even if that means that he personally will “write” patent law from scratch to fit his little world view – as if his (purposefully limited and biased) view is “good enough.”

                10. Martin, the fact that you do not acknowledge that structural differences in a brain are the reason for the functionally different abilities of the brains means you are intellectually dishonest. This puts you in a category of an unethical person that is not worth my time.

                11. NW is there a structural difference between the two brains that causes the different functionality.

                  Kinda irrelevant if you’re not claiming the novel structure.

                  But keep talking Mr. Brain Expert! I see your little lab helper “anon” is helping you out. I can’t wait to learn more about the structure of the human brain and how it relates to your views about subject matter eligibility, not to mention other areas of the law — because you’re totally consistent people, very serious, and not at all hypocritical.

                  LOLOLOLOLOLOL

                12. Kinda irrelevant if you’re not claiming the novel structure.

                  Malcolm is once again trying to make an issue the optional claim format – as opposed to what claims – in the various optional forms actually cover..

                  Something about “grow up” would be particularly apt for someone who insists on subterfuge and obfuscation and attempts to portray an optional claim format as somehow being the only de facto legal claim format….

    3. 8.3

      Here is a lovely one. How can the patent office put this stuff out and not face any sanction themselves?

      How can a set of laws be so manipulated as to allow self-evident absurdity to occur?

      Real people have to hire lawyers at ungodly expense to defend themselves from stuff like this, which is virtually indefensible because what human being could even understand what is “infringing”?

      It appears to cover any networked server connecting to any network using the Internet. Or maybe not, who could tell?

      US 8,694,657 B1 In the office 5,314 days, issued 2014.

      671 claims, 188 independent.

      1. A method of communicating via an Internet network by using a computer system including a controller computer and a database which serves as a repository of tokens for other programs to access, thereby affording information to each of a plurality of participator computers which are otherwise independent of each other, the method including:
      affording some of the information to a first of the participator computers via the Internet network, responsive to an authenticated first user identity; and

      affording some of the information to a second of the participator computers via the Internet network, responsive to an authenticated second user identity; and

      determining whether the first user identity and the second user identity are able to form a group to send and to receive real-time communications; and

      determining whether the first user identity is individually censored from receiving data in the communications, the data presenting at least one of a pointer, video, audio, a graphic, and multimedia by determining whether a respective at least one parameter corresponding to the first user identity has been determined by an other of the user identities;

      if the user identities are able to form the group, forming the group and facilitating receiving the communications that are sent and not censored from the second participator computer to the first participator computer, wherein the receiving is in real time and via the Internet network, and wherein, for the communications which are received and which present an Internet URL, facilitating handling the Internet URL via the computer system so as to find content specified by the Internet URL and presenting the content at an output device of the first participator computer, and if the first user identity is censored from the receiving of the data, not allowing the data that is censored to be presented from the second participator computer to the output device.

  4. 6

    Is it possible for you (Professor Couch) to set up an “All MM” section of this board? This way, MM might cease to post so many off-topic posts. Basically, every single blog entry has one or more posts from MM, which have nothing to do with the topic in the blog entry. Further, when there is a topic related to patents and software, MM obliterates the board with what is basically sp am. There is no “discussion” that occurs when one person can dominate so much.

    Personally, I’d give up and get rid of the comment section. I see maybe one or two comments every few days that actually have good content. Otherwise, it’s MM (or fights between him/her/it and many others) and the comments are lacking in content.

    1. 6.2

      > Personally, I’d give up and get rid of the comment section.

      The latest Bits ‘n’ Bytes has eleven comments. Seven of them are MM.

      I think the patent community has taken matters into its own hands here.

      1. 6.2.1

        I disagree David.

        There are still plenty of people only too eager to quaff the Kool-aid and attempt to give credence to a L I E repeated often enough. This is not about facts, law or actual history with those seeking to spew their rhetoric. This is about mere appearance of such. I would put to you that to do nothing is exactly what Malcolm would prefer.

        NOT engaging and pointing out these fallacies and noting when propaganda is just that: propaganda, is like the adage of just a few good men remaining quiet, and allowing such pus to fester.

  5. 5

    On res judicata, what is to prevent the patent owner from suing the same defendant on the same products with these new claims that did not exist at the time of the judgment?

    I assume that res judicata does not apply to different patents not in suit against different products. But does res judicata not apply to the same products but different patents? Does one have to bring in the lawsuit all patents that might cover the products in suit lest one might be barred by res judicata?

    Also, res judicata does not apply to the “same” products that were first manufactured after suit was filed. Certainly the same patent owner could sue the same defendant with respect to these same but later-manufactured products with respect to a patent that has new claims. Not only is validity different, but infringement is different.

    Then we have Kessler.

    1. 5.1

      If I were the patentee, I would simply file suit against the same defendant against all the products that might infringe.

    2. 5.2

      I have trouble understanding how either branch of res judicata applies here.

      For claim preclusion to apply, the Court has to conclude that you should have brought the new claims in the prior suit, and your failure to do so precludes them. But if for some reason you could not bring in the prior suit, then they cannot be precluded. Usually this occurs where one of the elements of the claim was not yet present. But here the new (amended) claims did not even exist at the time. So how could the patentee have brought them in the first suit?

      For issue preclusion, the issue has to be exactly the same in both suits. In this case, the Court ruled one version of Claim 1 invalid. Then it was amended. Hard to see how the validity of Amended Claim 1 is exactly the same issue.

      1. 5.2.1

        Agreed.

        But as Dennis said, adding “do it on a computer” does not change the essence of ineligible subject matter that is otherwise ineligible. It would be nice if we actually could see the claims before and after the amendments.

        1. 5.2.1.1

          His comment does NOT say that, Ned.

          His comment addresses the application of the Supreme Court “Gist/Abstract” sword.

          He makes NO comment on the parsing and attempting to find eligibility on a strictly element by element basis. He does not partake in your “essence” views. He does not – as you imply – state that the application is de facto correct.

          There is NO “essence” to be had with the direct words and actions of Congress per the Act of 1952. Leastwise, the attempt to find “essence” in a single claim element and pronounce “eligibility” based on that distillation of essence of merely part of the claim.

  6. 4

    Prof Crouch – do you need one of those “a-hole” tags for every time Malcolm descends into his “deep thinker / so important” meme?

    Such C R P from Malcplm is just not necessary and the only purpose that Malcolm’s meme serves is to point out what an arse he is.

    Yay Decade of Decadence!

    1. 4.1

      an arse he is

      Truly independent and super civilized thinkers like you come along only once every two thousand years or so, “anon.”

      That’s how we all knew it was you behind all those s0ckpuppets. There couldn’t possibly be so many brilliant people in one place.

      1. 4.1.1

        Non-responsive Malcolm (and lovely how you engage in sock puppets yourself at PatentDocs, thus you appear to yet again engage in your number one rhetoric of AccuseOthersOfThatWhichMalcolmDoes…

        How did your “transparency” challenge from Doctor Noonan go?

        Yeah – thought so.

        What a schmuck.

  7. 3

    Three things to note here. The amended patent claims are subject to “intervening rights,” this was an ex parte reexamination which has no estoppel to preclude new prior art or arguments in any later proceeding, and it could not consider 101 issues anyway.

    1. 3.1

      How are any of those three things important to the eligibility question, Paul (which is what the end driver is going to be)?

    2. 3.2

      Paul, agreed. The PTO could not consider 101, so there is no PTO guarantee that the amended claims were even directed to patentable subject matter.

      I wonder why the PTO wants to keep 101 out of reexaminations and IPRs? That really never made sense to me.

  8. 2

    Robinson in Delaware has much to say about Alice and just issued a string of opinions upholding claims under 101. DDR immediately undermined the Alice doctrine and now the forces of counter revolution are back in full power. There is no way to predict how any judge on any case will rule on an Alice motion at this time, despite what MM asserts.

    1. 2.1

      There is no way to predict how any judge on any case will rule on an Alice motion at this time

      LOLOLOLOL

      Because “some guy in Delaware.”

      You guys never cease to amuse. You need an accurate prediction? Just ask.

      1. 2.1.1

        That he is a she. And please tell us MM, how would these three patents fare under Alice?

        US6,604,101
        Method and system for translingual translation of query and search and retrieval of multilingual information on a computer network

        1. A method for performing a contextual search and retrieval of documents in a computer network, comprising:

        receiving through an input device, a query in a first language;

        processing said query to extract at least one content word from the query;

        performing dialectal standardization of the at least one content word extracted from the query;

        translating the at least one dialectally standardized content word into a second language through a translator;

        performing a contextual search in the second language based on the at least one translated content word, using a search engine in the second language; and

        obtaining the search results in the second language in the form of at least one of site names (URLs) and documents, satisfying a search criteria.

        US 7,516,154
        Cross language advertising

        1. A method for providing cross language advertising for a user while the user is performing a contextual search and retrieval of documents in a computer network, the method comprising the steps of:
        receiving from the user through an input device a query in a first language;

        processing the query to extract at least one content word from the query;

        performing dialectal standardization of the content word extracted from the query;

        translating the dialectally standardized content word into a second language through a translator;

        performing a contextual search in the second language based on the translated content word, using a search engine in the second language;

        returning to the user the search results in the second language in the form of at least one of site names (URLs) and documents;

        searching a database of advertising cues; and

        returning to the user one or more of the advertising cues relevant to the content word.

        US 6,826,620

        Network congestion control system and method

        1. A method for alleviating congestion in a communication network, the communication network enabling the flow of data to and from a plurality of end user devices that are connected to the network through a plurality of communication devices, the method comprising the steps of:

        monitoring data flows to and from the plurality of end user devices for indications of congestion; and

        controlling the data rate of at least one end user device in response to said congestion indications.

        1. 2.1.1.1

          US6,604,101

          Wowee zowee. Search a database comprising language X using a search term translated into language X. Automatically! On a computer.

          7,516,154
          Same as above except you shove an ad in the searcher’s face. Whooohoo! Deep deep techn0 there. It’s like Ultramercial … except “foreign language” which makes it, like, totally different.

          US 6,826,620
          LOLOLOLOLOLOLOLOL This can’t actually be a granted patent claim. Even the incredibly incompetent PTO isn’t that incompetent. Is it?

          None of these claims have a chance of surviving a well-presented ineligibility argument. As with every case, if the attorney stinks then all bets are off.

          1. 2.1.1.1.1

            Yea, well all three were found eligible by Judge Robinson and I find it kind of hard to believe that all of the defense lawyers were incompetent. I think your ability to predict Alice cases is no better than random, just like everyone else’s.

            In fact, I think she did what she wanted to do and no amount of lawyering was going to change her mind. In further fact, I think there are a lot of judges just like that, and they can do it because you can drive a truck through the essentially subjective Alice doctrine.

            In four years or so, when the Fed Circuit gets thru with these same patents, we can see how that worked all out. Assuming of course that the defendants want to spend millions in fees to get there rather than just paying up.

            1. 2.1.1.1.1.1

              In four years or so, when the Fed Circuit gets thru with these same patents, we can see how that worked all out.

              If the defendants hire competent attorneys they’ll be just fine.

              Judge Robinson is free to stick her head in the sand if she likes. She’s not the first judge to make a f00l out of herself, and she won’t be the last.

              Speaking of Delaware, oral arguments were heard by the CAFC this morning in Inventor Holdings, LLC v. Bed Bath & Beyond, Inc. .

              link to cafc.uscourts.gov

              In that case, the defendants claims were tanked under 101 by Delware Judge Sleet. The CAFC is going to affirm that correct decision, most likely in a Rule 36 opinion.

              Here’s the claim:

              6381582

              8. A method of processing a payment for a purchase of goods, comprising the steps of:

              receiving at a point-of-sale system a code relating to a purchase of goods;

              determining if said code relates to a local order or to a remote order from a remote seller;

              if said code relates to a remote order, then determining a price for said remote order, receiving a payment for said remote order, and transmitting to said remote seller data indicating that said payment has been received for said remote order.

              So there’s at least one Delaware judge who isn’t clueless. I bet I can find others.

              1. 2.1.1.1.1.1.1

                Your faith that good lawyering will change a judge’s mind about how they interpret Alice is touching, really.

                Robinson is far from clueless- you would be lucky to get a district judge almost anywhere in the United States as experienced as she is with patent law.

                Until the Supreme Court recognizes that abstract ideas at eligibility are a different animal than abstract ideas at patentability, we will have the same confused mess about software, biotech, and business methods that result in some kind of information when the steps are performed.

                All information is abstract, but policy desire and the economics of IP apparently demand that some information results be patent eligible. Until that knot can be split, its going to be a crapshoot.

                1. Your faith that good lawyering will change a judge’s mind about how they interpret Alice is touching

                  Good lawyering has already changed the way that nearly every judge looks at eligibility.

                  This is an ongoing education process, Martin. There are always going to be claims on the margins that are more difficult to evaluate than others. But there’s so many that fall squarely into the “do it on computer” junkh0le that running around shouting “Nobody understands this!” just makes you look silly.

                2. I don’t feel silly, but everyone is entitled to their perception. It’s a strawman that I think “nobody understands this” I think judges and lawyers understand it just fine in many instances. I think they disagree about it and they can read Alice to support their different positions.

                  Stark and Robinson have different tendencies- I assume some wiseguy analytics people will soon be able to tell you which judges bite on which arguments.

                  And I think the “technical solutions to technical problems” approach is just as malleable as Alice- but that’s what DDR has ushered and I think that’s what prevails in Europe.

                3. Martin: I think judges and lawyers understand it just fine in many instances.

                  That’s what I’m saying. You were saying something different earlier. Clearly if judges and lawyers “understand [Alice] just fine in many instances” then it is possible to accurately predict the eligibility of claims “in many instances.”

                  I think they disagree about it and they can read Alice to support their different positions.

                  That’s what lawyers are paid to do. The patentee’s attorney is always going to argue “look at all this new technology! and no fundamental practice is pre-empted! structure!” even when the arguments have no legs. And defendants are going to try to stretch the case law in the other direction.

                  The elephant in the room is still the ineligiblity of logic generally, and how in the world the recitation of “new logic” can impart eligibility to an otherwise unpatentable claim.

                4. Martin, I would prefer a good argument rather than that the Judge is a nutter, or the the lawyer for the defendant stank.

                5. How about simple set theory Ned…?

                  As opposed to your treatment of Malcolm with your usual “6-is-an-Einstein-because-he-agrees-with-me” set of blinders.

              2. 2.1.1.1.1.1.2

                Ah, that didn’t take long. In the case Intellectual Ventures I LLC v. Symantec Corp, Judge Stark (Delaware) correctly found Intellectual Ventures’ incredibly junky claims ineligible.

                link to law360.com

                Oral arguments were this morning. Judge Stark’s decision will be affirmed by the CAFC, most likely in a Rule 36 opinion.

                6,460,050

                9. A method for identifying characteristics of data files, comprising:

                receiving, on a processing system, file content identifiers for data files from a plurality of file content identifier generator agents, each agent provided on a source system and creating file content IDs using a mathematical algorithm, via a network;

                determining, on the processing system, whether each received content identifier matches a characteristic of other identifiers; and

                outputting, to at least one of the source systems responsive to a request from said source system, an indication of the characteristic of the data file based on said step of determining

                The patentee’s attorney engages in the usual chucklew0rthy game of pretending that these “file content IDs” have a super special “structure.” In fact, the specification states “The digital ID is not required to be of fixed length” and “any hashing algorithm can be utilized” to generate the ID <–LOL Some "structure"!

                There were other patents at issue. The claims in those patents are even worse than this one. "Detect bad stuff in phone line, using the usual detection methods! And a computer!" Super techn0! After all, the patent says that it's solving a "technological problem" … so there! <– actual argument made by patentee

              3. 2.1.1.1.1.1.3

                MM want to make your prediction on these?

                U.S. Patent No. 8,755,666, Interactive television program guide with remote access

                U.S. Patent No. 7,996,864, Method and apparatus for displaying television programs and related text

                U.S. Patent No. 9,172,987 Methods and systems for updating functionality of a set-top box using markup language

                U.S. Patent No. 7,895,218 Method and system for performing searches for television content using reduced text input

                U.S. Patent No. 8,122,034 Method and system for incremental search with reduced text entry where the relevance of results is a dynamically computed function of user input search string character count

                U.S. Patent No. 8,433,696 Method and system for processing ambiguous multiterm searches queries

                U.S. Patent No. 6,725,281 Synchronization of controlled device state using state table and eventing in data-driven remote device control model

                Rovi sued Comcast on this set after Comcast decided not to renew a licensing agreement, perhaps because they think these patents are going out on Alice grounds.

                We can check your results in a year or so when the order(s) come down. I think we can assume the best lawyers money can buy will be advocating on both sides.

                1. MS: MM want to make your prediction on these?

                  Maybe you can start paying me?

                  Just based on the titles it’s safe to presume the first four are massive piles of ineligible crxp. The rest look highly suspect.

                  As I’ve said before, Martin, every claim directed to information processing logic has a lurking eligibility issue. That’s the just the way it is. It’s a feature of a sane patent system, not a bug.

                2. Sure, if you want to pay me when you are wrong. Maybe setup a “fantasy league” for some good clean wagering fun.

                  I would be OK with zero patent protection on software because copyright is available, and if Oracle v. Google proceeds as expected, will probably be the more viable way to protect software from direct copying.

                  But there are a large number of patent stakeholders who are not OK with zero patent protection for software- hence  my proposed compromise

                  The controversy is far, far from settled…

                3. there are a large number of patent stakeholders who are not OK with zero patent protection for software

                  And most of those people are clueless hacks concerned about one thing and one thing only. Ask me how I know that.

                  my proposed compromise

                  I congratulate you for at least attempting to come up with a fallback position, Martin. It’s more than I can say for most of the defenders of the worst patents ever granted by any patent system in the history of the earth. Most of your peers have simply refused to engage and, as a result (at least partly), their feet were crushed under the steamroller of justice (with more to come).

                  But your compromise has some major problems. And when those were pointed out to you, you didn’t have much luck (or skill) defending them.

                  Resorting to “the shareholders demand it!!” is a l0ser’s game. You should understand that by now.

                4. MS: I would be OK with zero patent protection on software because copyright is available

                  Good for you.

                  Why bother with this silly unworkable “compromise” then? What’s the point?

                5. Ok then, just starting with the first one, what is the abstract idea here and why doesn’t the claim recite “significantly more” than that abstract idea…. or is it a law of nature?

                  10. A method for selecting videos over a remote access link comprising an Internet communications path for recording, the method comprising:
                  receiving, at a mobile device, first data including information corresponding to a first plurality of sequences of video frames, wherein the first data are processed by control circuitry of the mobile device to identify content of the first plurality of sequences of video frames to generate a first graphical user interface;
                  processing the first data to generate, based on the processed first data, the first graphical user interface of a first plurality of identifiers of content, each of the first plurality of identifiers of content corresponding to respective ones of a second plurality of sequences of video frames of the first plurality of sequences of video frames, the first plurality of identifiers of content for display on the mobile device using a remote access interactive program guide implemented on the mobile device, the mobile device being capable of displaying the first plurality of identifiers of content concurrently with a local interactive program guide equipment displaying a second plurality of identifiers of content, wherein:
                  the local interactive program guide equipment receives, from a source, second data including information corresponding to a third plurality of sequences of video frames, wherein the second data are processed by control circuitry of the local interactive program guide equipment to identify content of the third plurality of sequences of video frames to generate a second graphical user interface, and
                  the second data are processed to generate, based on the processed second data, the second graphical user interface of the second plurality of identifiers of content, each of the second plurality of identifiers of content corresponding to respective ones of a fourth plurality of sequences of video frames of the third plurality of sequences of video frames, each of the sequences of video frames in the third plurality of sequences of video frames scheduled for transmission to a plurality of users at a first scheduled time, the third plurality of sequences of video frames being transmitted over a plurality of content sources to the plurality of users while the second plurality of identifiers of content is being presented using the second graphical user interface, the second plurality of identifiers of content for display on a display device using a local interactive program guide, wherein the local interactive program guide is implemented on the local interactive program guide equipment, and wherein each of the respective ones of the third plurality of sequences of video frames corresponding to the second plurality of identifiers of content is formatted based on a characteristic of the display device;
                  detecting an input, at the remote access interactive program guide, indicating a user selection of an identifier of content of the first plurality of identifiers of content, wherein the identifier of content is selected by the user while the local interactive program guide equipment receives one of the third plurality of sequences of video frames over a first of the plurality of content sources from the source;
                  identifying for recording based on the detecting, a first sequence of video frames of the second plurality of sequences of video frames corresponding to the identifier of content selected by the user based on the input;
                  generating an electrical signal corresponding to the first sequence of video frames; and
                  transmitting the electrical signal to the local interactive program guide over the Internet communications path, wherein the first sequence of video frames corresponding to the selected identifier of content is stored, responsive to processing the electrical signal at the local interactive program guide, using the local interactive program guide equipment, when the first sequence of video frames is received over a second of the content sources at a second scheduled time.

                6. MM a good number of experienced lawyers and law profs have told me that my ideas are not silly, and not unworkable.

                  I don’t recall your saying what is silly or unworkable beyond the fact that you don’t think any algorithms should be patent eligible.

                  Maybe your absolutist position is silly and unworkable. It’s possible. I would prefer no software patents. That may not be possible.

                7. Maybe your absolutist position is silly and unworkable.

                  There’s nothing “silly” or “unworkable” about my “absolutist” position. The patent system worked for most of its existence without patents on logic, algorithms or other abstractions.

                  The massive bubble of ridiculous junk and the rushing in of attorneys (!) trying to secure massive windfalls from junky, virtually unexamined (and unexaminable) information processing patents was a recent phenomenon created by a string of awful cases.

                  It’s the legal equivalent of the government handing out crack. Oh my goodness! People got really addicted to it and all kinds of bad stuff happened! Nobody could have predicted! But now you’ve got all these addicts who feel entitled to their crack. Some of them have made hundreds of millions already but they’re not satisfied because their golf buddy owns three islands and they only own one. Boo hoo.

              4. 2.1.1.1.1.1.4

                Fyi, the CAFC issued its Rule 36 judgment in Inventor Holdings, LLC today, as I predicted.

              5. 2.1.1.1.1.1.5

                That claim may have 103 issues (but with a 1997 filing date, I’m not sure about that).

                I see absolutely no 101 issue. What do you see, a natural law? Preemption of all ordering at a point of sale? What is the abstract idea? Selling? Ordering? Ordering at a point of sale? Ordering at a point of sale including the entering of a code? Ordering at a point of sale including the entering and analysis of a code? Ordering at a point of sale including the entering and analysis of a code and further processing of the order/sale based on the analysis of the code?

                please.

                1. And that is an abstract idea rather than a tangible activity that someone or some people actually participate in, why?

                2. a tangible activity that someone or some people actually participate in

                  Reading a book to a kid is a “tangible activity that some people actually participate in”.

                  But it’s not eligible for patenting.

                  Likewise, creating an obligation between two people (“you are obligated to send me this”) is also not “tangible” in the sense required by the patent system. It’s the creation of an abstraction, not a change in the structure of physical matter.

                3. A process for reading a book would be eligible, especially if it is carried out by a machine…. likewise with your obligation creation.

                  A method comprising:
                  sensing a page of a children’s book with an image sensor;
                  decoding a digital watermark from image data produced by the image sensor; and
                  triggering an action associated with said page, said action comprising generating audible sounds corresponding to reading of words on said book page.
                  3. The method of claim 2 wherein said sounds are assembled from component phonemes or common words previously recorded by a person.
                  4. The method of claim 3 wherein said component phonemes or common words are stored locally, and correspond to a child or a child’s family member.
                  5. The method of claim 3 wherein said component phonemes or common words are stored remotely, and correspond to a celebrity voice.
                  6. The method of claim 2 that further comprises starting playback of a video at a point corresponding to said page.

                  link to patents.google.com

            2. 2.1.1.1.1.2

              In fact, I think she did what she wanted to do and no amount of lawyering was going to change her mind. In further fact, I think there are a lot of judges just like that,

              There’s nothing Alice-specific about this situation. All three of them are clearly abstract ideas, and if a judge doesn’t want to apply the law the judge doesn’t have to apply the law. That’s what appellate courts are for.

              they can do it because you can drive a truck through the essentially subjective Alice doctrine.

              Most ultimate questions have sub-questions which have a subjective component to it. If a judge wants to make an outcome happen, they can always make an outcome happen.

              1. 2.1.1.1.1.2.1

                True enough Random, but also true there is that there is a continuum as to the importance and intensity of controversial points of law, and they don’t come much bigger than basic eligibility and the historical problems around information based inventions.

                1. There wasn’t much “controversy” about any of this until the CAFC opened the floodgates.

                  The only real “controversy” now is how much money are we going to let the grifters take before we return to a sane patent system.

                2. Isn’t the problem here that the Supremes, as they Bryer suggested in oral argument, only sought to sketch a shell of the analysis because they aren’t experts, and they are counting on the Fed Cir to fill it in, which they are slowly doing?

                  The issue is just that there is a lot of jungle and we’re just starting to draw a map. That doesn’t mean there is an ultimate flaw in the system.

                3. Here is the whole Alice argument recording, helpfully acted out by canine jurist avatars.

                  Very amusing how they picked dogs that matched the justice’s miens. No way is Phillips as handsome as the Weimaraner who plays him….I like Ginsburg’s glasses…

                  link to youtube.com

          2. 2.1.1.1.2

            US6,604,101

            1. A method for performing a contextual search and retrieval of documents in a computer network, comprising:
            receiving through an input device, a query in a first language;
            processing said query to extract at least one content word from the query;
            performing dialectal standardization of the at least one content word extracted from the query;
            translating the at least one dialectally standardized content word into a second language through a translator;
            performing a contextual search in the second language based on the at least one translated content word, using a search engine in the second language; and
            obtaining the search results in the second language in the form of at least one of site names (URLs) and documents, satisfying a search criteria.

            MM: Wowee zowee. Search a database comprising language X using a search term translated into language X. Automatically! On a computer.

            MM, what exactly is your complaint here? That this this is old an obvious? If 101 is the problem, why is it a problem? Please elaborate just a bit.

            Personally, I would say the technique is notoriously old, and using computers to automate it is not new. All 102/103.

            1. 2.1.1.1.2.1

              I would say the technique is notoriously old

              I would agree. “Look for a matching term in a list” is also an ineligible abstraction, as is “translate a term from one language to another.”

              using computers to automate it is not new.

              I don’t know if it is “new” or not but that’s beside the point. You can’t get a patent by taking some old information processing scheme and sprinkling “do it on a computer” over the top. It’s not just a question of obviousness, of course, because the claim can’t be rescued by, e.g., reciting a specific “content word” that nobody in the prior art ever translated or searched for before.

              Note that a new machine that performs these tasks, where that new machine is claimed using objective structural terms that distinguish it from prior art machines, is totally eligible. Functionally claimed nonsense like “foreign language searching module” isn’t going to cut the mustard, of course.

              1. 2.1.1.1.2.1.1

                And yet again…

                Note that a new machine that performs these tasks, where that new machine is claimed using objective structural terms that distinguish it…

                is WRONG for the reasons already shared.

            2. 2.1.1.1.2.2

              Personally, I would say the technique is notoriously old, and using computers to automate it is not new. All 102/103.

              Performing an old information processing technique on a computer is exactly what the Alice case was about. It’s like you gave a definition of a 101 issue and then said it was a 102/103 issue…

              The complaint, of course, is that the claim is directed to translating language followed by insignificant post-solution activity of performing a conventional google search with the translated term. Translation of language is ancient, and the only “invention” here is that it is “applied on a computer.”

        2. 2.1.1.2

          Clueless.

          Delaware is probably THE most important place where patent decisions are coming from now that EDTX is now winding down. These decisions matter and are shaping the contours of Alice going forward.

          I expect Stark to follow suit along with Robinson.

          1. 2.1.1.2.1

            Bluto, yeah, Delaware is where most big companies are incorporated. If the patent venue statute is reimposed by case or by statute, that is where 95% of future patent litigation is going to find itself. That might explain why the Federal Circuit held the way it did back in the day when it allowed patents suits to be filed against corporations anywhere they were doing business – they just want to spread patent cases around to as many different district courts as possible.

            (Which demonstrates to me that the movers and shakers have no serious complaints about forum shopping, or a single court having most of the cases. They just do not like the ED Tex.)

  9. 1

    What – if anything – overcomes AliceAS IMPLEMENTED…

    ;-)

    (I note that Paul Cole has a few choice words for the implementation over at PatentDocs….)

    1. 1.1

      That’s easy: the recitation of novel structure, using objective structural terms, that distinguishes the claim from the prior art.

      But go ahead and pretend otherwise! That’s the kind of behavior that makes deep thinkers like you and Paul Cole so very, very serious. We must pay attention to you!

      1. 1.1.1

        So, basically, nothing performed using a “processor”* will ever again be patentable?

        I would prefer if the Supreme Court would hold this, also (that is, come right out and say this). This way, Congress can choose to overrule them. As it is, no one understands Alice and one cannot overrule what one does not understand.

        * And these are everywhere, such as engine control units in cars, fly-by-wire systems in cars, airplanes, helicopters, the list goes on and on and on…

        1. 1.1.1.1

          no one understands Alice

          How much do you charge your clients for awesome insights like that?

        2. 1.1.1.2

          PatentBob, “using a processor?”

          I assume everything in the claim is otherwise directed to ineligible subject matter.

          Well, anyone who was honest should have known that “using a processor” was not enough since Benson.

          Which brings us to the PTO. Why in the fricken world did they issue patents to ineligible subject matter only because the recited using a processor. They should have known that what they were doing was in violation of the law regardless of the opinions of Judge Rich and others on the Federal Circuit. They should have rejected such claims based on 101, and should have taken the issue to the Supreme Court at the earliest opportunity. Instead they rolled over backwards issuing patents for decades which were obviously in violation 101. The people in charge of the PTO more than anybody else are responsible for the mess that patent law found itself in regarding patentable subject matter.

          1. 1.1.1.2.1

            Except NOT – but hey, Ned’s running away from the exceptions to the judicial doctrine of printed matter has “no impact” to the 101 discussion, right Malcolm?

            Frick and Frack tag teaming their misapplications of law yet again…

            (And not like I have not presented a VERY simple “set theory” explanation of all of this several times now…)

          2. 1.1.1.2.3

            “They should have known that what they were doing was in violation of the law regardless of the opinions of Judge Rich and others on the Federal Circuit.”

            Give me a break ned, ordinary examiners have enough on their plates than to have to fight management’s wishes for “policy”.

            1. 1.1.1.2.3.1

              6, you guys in the trenches are saints. I meant no aspersions.

              I fault PTO management starting at the top.

          3. 1.1.1.2.4

            “Which brings us to the PTO. Why in the fricken world did they issue patents to ineligible subject matter only because the recited using a processor. ”

            Because you are wrong and machines and methods (even those that require the use of machines) are eligible subject matter.

            “They should have known that what they were doing was in violation of the law regardless of the opinions of Judge Rich and others on the Federal Circuit.”

            No they shouldn’t have. You are mistaken.

            “They should have rejected such claims based on 101, and should have taken the issue to the Supreme Court at the earliest opportunity. Instead they rolled over backwards issuing patents for decades which were obviously in violation 101.”

            No. The Courts did not so hold. You are mistaken. Processes are eligible. In fact, they are listed first.

            1. 1.1.1.2.4.1

              Les, the PTO took the lead on issuing patents on business methods.

              That is a fact.

                1. 101 says processes are patentable subject matter.

                  100 says process means process art, or method….

                  shrug…. i don’t see any limiting qualifications or quibbles there…. do you?

                2. Les, the founders put Art in the first 101. 101 in ’52 did not intend to change the law by substituting Process.

                  Now, today process has come to mean any series of steps. But not all series of steps are an Art.

                  Get it?

                3. Maybe you should read: The ART of the deal.

                  I understand the author has become quite popular in some circles.

                4. Les, I never followed Trump until recently. My wife always had negative remarks, but I wasn’t really interested. I must say that I was surprised by the real Trump and just how he comes across as a bully, especially the way he treats women. I am appalled.

                5. Les,

                  I have several times in the past attempted to get Ned to discuss the law as written in 35 USC 100.

                  He has never stepped up to the plate for those discussions.

                6. Not all methods are patentable subject matter and never have been.

                  Faulty logic.

                  Not all compositions are patentable subject matter and never have been.

                  We’ve been over this a gazillion times in the wake of Bilski and Myraid discussions (also discussions involving Chakrabarty).

                  This is nothing more than your attempted obfuscation between “categorically” and “as a category” and your attempted MISreading of law and history against “business methods.”

                  The Merry-Go-Round from Ned starts up again…

                  Please stop.

          1. 1.1.1.3.1

            Everything performed by a processor is abstract. That seems to be the problem, no?

            Bingo [pun intended].

        3. 1.1.1.4

          So, basically, nothing performed using a “processor”* will ever again be patentable?

          Using a processor for the purpose of processing information does not inherently grant eligibility. If people keep trying to patent conventional methods simply performed by a computer processor instead of how they were normally performed those methods are going to be ineligible. If people are going to apply standard logic to solve logical problems, those results are going to be obvious. It shouldn’t be surprising that software patents will be few and far between.

          1. 1.1.1.4.1

            Picking seeds out of cotton by hand was conventional.

            A machine that picks seeds out of cotton was not conventional (even though the components of the machine were available off the shelf).

            Capice?

            1. 1.1.1.4.1.1

              “1. A machine, wherein the machine picks seeds out of cotton” is ineligible subject matter.

              Just because you make a machine doesn’t mean that any claim you dream up that encompasses that machine is valid. You routinely point to a technological advance and then say “see this situation is like that one.” Half of the times (like now) you’re wrong about the situations being similar, but even when you’re not the law doesn’t care if the situations are similar, it only cares about what the claims are.

              The act of writing software is most akin to translating something from english to spanish. The cotton gin was a new machine, most information processing claims aren’t inventing a new processor, they are the equivalent of telling a spanish speaker to perform the same method the english speakers have been performing for years, decades or centuries. Regardless, it is pointless to compare situations when it is claims that matter. If you get a particular enough claim it may reach the point where its a simple 103 rejection instead of a 101, but most software claimers, mindful of how easy the translation is, don’t want to get particular.

              1. 1.1.1.4.1.1.1

                “The act of writing software is most akin to translating something from english to spanish.”

                No. The act or writing software is most akin to selecting, designing and arranging gears, cams, levers and their supporting hardware to be the inner workings of a new machine.

                1. No. The act or writing software is most akin to selecting, designing and arranging gears, cams, levers and their supporting hardware to be the inner workings of a new machine.

                  No it is not. There is law on this. Writing code is non-inventive clerical work.

                2. Your response attempts too much Random.

                  It is you that needs to read – and this is critical: to understand what you read – in the law.

                  Les’s analogy still fits with the fact that “non-inventive clerical style work” can also be performed in the “gears, cams, levers and their supporting hardware world.

                  You attempt a distinction that does not support your view.

                  The bottom line that you simply need to accept (because it is reality) is that in the patent sense, software is equivalent** to hardware and is equivalent to firmware.

                  That is the point before you.

                  Maybe you should take LESS pride in not being an attorney, and more time in simply understanding how law works (since you, as an examiner, still must deal with attorneys and the law).

                  .

                  **and please, let’s not have any chicanery with attempts to use “exactly the same as” when that is NOT what equivalence is about.

              2. 1.1.1.4.1.1.2

                ” Half of the times (like now) you’re wrong about the situations being similar, but even when you’re not the law doesn’t care if the situations are similar, it only cares about what the claims are.”

                Yes they are similar and Huh?

                Who is claiming, wherein the machine picks seeds out of cotton or, for that matter a machine wherein the machine processes information? No one.

                One of the claims in question is:

                A method of exchanging a gift card, comprising:
                providing data associated with a first gift card;
                validating the data associated with the first gift card;
                selecting either a money rebate associated with the first gift card, or a second gift card;
                exchanging the first gift card for either a money rebate or the second gift card; and
                charging a first service fee for issuing the second gift card.

                It is a method or process. It is not a claims to the abstract idea of “picking seeds out of cotton” or a machine therefor. It is a series of specific steps. It passes 101. There might be 102 or 103 issues. If their are, so be it. The point is, it passes 101.

                1. 101 has three judicial exceptions, this does not pass the abstract idea exception. Like it or not.

                2. Why does it not pass the abstract idea exception? Providing, validating, exchanging, charging, these are all tangible real activities. Why are they more abstract than say: mixing, testing, filtering and pouring?

                3. Geez Les, “providing, validating, exchanging, charging” leave no trace in the world. They are not “tangible” activities. They are objects of information; incorporeal.

                  tan·gi·ble
                  ˈtanjəb(ə)l/
                  adjective
                  1.
                  perceptible by touch.
                  “the atmosphere of neglect and abandonment was almost tangible”
                  synonyms: touchable, palpable, material, physical, real, substantial, corporeal, solid, concrete; More
                  noun
                  1.
                  a thing that is perceptible by touch.

                  That’s why are they more abstract than say: mixing, testing, filtering and pouring.

                  But as you noted above with the child’s reading method, I am prepared to accept new, non obvious and fully described methods that result in abstract information enabling machines as patent eligible, but not information consumed by human beings. The latter is too dangerous for human freedom and impossible to fairly adjudicate.

                4. providing data associated with a first gift card can mean handing someone the gift card. That’s tangible.

                  providing data associated with a first gift card can mean writing down an account number and handing it to someone. That’s tangible.

                  The fact that two liquids have been mixed together is not “perceptible by touch”.

              3. 1.1.1.4.1.1.3

                The act of writing software is most akin to translating something from english to spanish

                One of the worst “theories” of what software is that I have ever heard.

                1. That is NOT the law – YOU need to read and understand your cases.

                  Oh wait, you take pride in not being an attorney…

                  Too bad.

                  For you, and for us.

        4. 1.1.1.5

          “I would prefer if the Supreme Court would hold this, also (that is, come right out and say this). This way, Congress can choose to overrule them. As it is, no one understands Alice and one cannot overrule what one does not understand.”

          I somewhat agree to the extent that the current law is probably too complex for simpletons. The whole “there is a prohibition against patenting x, y and z or anything that would effectively do so” is just too hard for many, they need a brighter line. The law needs to be written for the lowest amongst us to be able to use as well as those highest amongst us. And the congress are the ones to do so.

          1. 1.1.1.5.1

            I agree with that notion highly 6. Much of the racketeering is based on the fact that too few people can understand the relevant laws without a significant- and perhaps undue- effort to learn them.

          2. 1.1.1.5.2

            Compositions/apparati with novel objective physical structure. Processes that change the objective physical structure of matter in previously unknown or undescribed ways.

            I like to call it “keeping it real.”

            The patent system wasn’t designed to evaluate the non-obviousness of equations and information processing logic in view of prior art equations and prior art information processing logic. As a practical matter, I would predict that at the present rate of “evolution” the PTO will be capable of performing that task acceptably in no less than 50 years.

            Or we can just pull the plug on the nonsense and let the deep thinkers who really, really, really really need those informaiton processing patents come up with a newly designed system from scratch.

            1. 1.1.1.5.2.1

              MM, The patent system wasn’t designed to evaluate the non-obviousness of equations and information processing logic in view of prior art equations and prior art information processing logic.

              True.

              I recall however I figured out the mathematics of how a mechanical invention worked. I didn’t just claim the structure, but the mathematical relationship of one thing to another.

              Now, just how is an examiner going to search for that?

      2. 1.1.2

        Your “easy” is wrong / if for no other reason than it takes an optional claim format and would make that optional claim format somehow be a de facto ONLY legal claim format.

        Let’s see you “figure out” why that cannot happen as a matter of law.

        1. 1.1.2.1

          Your “easy” is wrong

          Nope. What’s “wrong” is you and your willfully clueless cohorts who like to pretend that “everything is abstract.”

          You really should try answering your own questions for a change. You might learn something about yourself.

          Or you can keep staring in the mirror and talk to those mysterious voices transmitted through your fillings. It’s up to you. Either way, you’re still a super serious person and we must pay attention to you.

          1. 1.1.2.1.1

            Oh Noes – he used the word “cohorts”…

            What a schmuck.

            Maybe you want o move the goalposts back to the fact of the matter that “optional” cannot be made to be NOT “optional,” which was the point you should be paying attention to instead of the vapid dust kicking ad hominem.

            Great job Prof. – happy Decade of Decadence.

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