Judge Dyk’s Concurrence in the Denial of Rehearing En Banc in Sequenom

By Jason Rantanen

In preparing for a talk on recent developments in patent law that I’m giving in a few days at the Salishan Patent Conference, I went back and reread Judge Dyk’s opinion concurring in the Federal Circuit’s denial of rehearing en banc in Sequenom v. Ariosa (available here: 14-1139.Order.11-30-2015.1).  In my view, he hits the nail on the head with this one, framing the patent eligible subject matter issue as an issue of claim breadth.  I find his discussion particularly appealing because unlike many conventional critiques of the Supreme Court’s Mayo/Alice framework, Judge Dyk acknowledges that patent law is not limitless, and that patentable subject matter should not be completely unbounded, subject only to the constraints of §§ 102, 103 & 112.  Accepting this proposition frees Judge Dyk to articulate a conceptually coherent approach to patentable subject matter in the context of discoveries of natural laws, one that allows for valid claims in this space but which still imposes limits on what can be claimed.  When discovery of a natural law supplies the innovative aspect of the invention, Judge Dyk writes, claims should be limited to what the inventor has actually done:

“In my view, the breadth of the claim should be critical. Even when a patent applicant has demonstrated some particular utility for a newly discovered law of nature and reduced it to practice, the claim should be invalid unless narrowly tailored to the particular application of the law that has been developed. Claims that extend far beyond the utility demonstrated by the patent applicant and reduced to practice should be invalid, as they “too broadly preempt the use” of the underlying idea by others. Mayo, 132 S.Ct. at 1294; see also Diamond v. Diehr, 450 U.S. 175, 191–92, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). But, so long as a claim is narrowly tailored to what the patent applicant has actually invented and reduced to practice, there is limited risk of undue preemption of the underlying idea. In Myriad the Court noted, 133 S.Ct. at 2120, that an example of a meritorious claim might be claim 21 of Myriad’s U.S. Patent No. 5,753,441 (“the ′441 patent”), which was not at issue in the case and which Judge Bryson discussed in his concurring opinion on our court’s decision below, Ass’n for Molecular Pathology, 689 F.3d at 1348 (Bryson, J., concurring). Claim 21 of the ′441 patent covers a method of detecting any of several specific mutations in the BRCA1 gene, newly discovered by the patent applicant and shown to increase a person’s risk of developing particular cancers, using conventional methods. See In re BRCA1 & BRCA2, 774 F.3d at 765.

This approach appears also to be supported by Morse. The Supreme Court established in Morse that the extent to which a patentee can claim is the extent to which he has actually made some concrete use of the discovery and reduced it to practice. “The specification of this patentee describes his invention or discovery, and the manner and process of constructing and using it; and his patent … covers nothing more.” Morse, 56 U.S. at 119. Limiting patentees to narrow applications they have actually developed and reduced to practice would be in keeping with Mayo ‘s commandment that “simply appending *1292 conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 132 S.Ct. at 1300 (emphasis added).

This proposed approach, limiting the scope of patents based on new discoveries to narrow claims covering applications actually reduced to practice, would allow the inventor to enjoy an exclusive right to what he himself has invented and put into practice, but not to prevent new applications of the natural law by others.5 This would ensure that the scope of the patent claims would not “foreclose[ ] more future invention than the underlying discovery could reasonably justify.” Id. at 1301. Limiting the scope of the patent also would avoid the problem that “the more abstractly [a process patent’s] claims are stated, the more difficult it is to determine precisely what they cover.” Mayo, 132 S.Ct. at 1302 (quoting Christina Bohannan & Herbert Hovenkamp, Creation without Restraint: Promoting Liberty and Rivalry in Innovation 112 (2012)).”

Ariosa Diagnostics, Inc. v. Sequenom, Inc., 809 F.3d 1282, 1291 (Fed. Cir. 2015).  Of course, I may be biased to agree with Judge Dyk here: I’ve long thought that Section 112(a) doesn’t do an adequate job, by itself, of limiting claim breadth. (And §112(b) only relates to claim clarity, a different issue than claim breadth.)  (c.f. fn 5 of Judge Dyk’s concurrence).

433 thoughts on “Judge Dyk’s Concurrence in the Denial of Rehearing En Banc in Sequenom

  1. 34

    Removing the tag that I place – taken directly from what you have allowed Malcolm to post – and leaving behind the items that the tag marks – the true blight – only ADDS to the perception of lack of objectivity and overt shaping of content on this blog.

    One set of rules – evenly and objectively applied.

    For some unknown reason, this seems impossible to enact here.

    WHY?

  2. 33

    Ned said ”

    6, “particularly point out.” See the cases I quoted.

    Functional claiming of the INVENTION as opposed to the prior art, does not “particularly point out.”

    Do not fall into the trap that 112(b) ONLY addresses clarity.”

    The Courts have said:

    “Applicant may use functional language, alternative expressions, negative limitations, or any style of expression or format of claim which makes clear the boundaries of the subject matter for which protection is sought. As noted by the court in In re Swinehart, 439 F.2d 210, 160 USPQ 226 (CCPA 1971), a claim may not be rejected solely because of the type of language used to define the subject matter for which patent protection is sought. ”

    So, when the boundaries of the subject matter for which protection is sought are functional….

    Capice?

    1. 33.1

      The vacuous passage you quoted, Les, doesn’t address the point that 6 was making. It’s addressing a strawman.

      Frankly, it’s not worth anyone’s time trying to explain the “nuances” to you but, in a nutshell, if you claim an apparatus using functional language at the point of novelty (hence the highlighting of the term “invention” by 6) your claim is very likely a pile of junk for any number of reasons. Now you can try to kick up some dust and pretend that judges and fact-finders are incapable of distinguishing between prior art elements and inventive subject matter recited in a claim. That effort will convince nobody except perhaps a naive client whose pocket you can continue picking.

        1. 33.1.1.1

          …and of course, it is his “opinion” that one optional claim format somehow is a de facto ONLY “legal” claim format…

          …because his feelings are comforted as he sits in his field of rye.

      1. 33.1.2

        And the passage I quoted is from the Manual of Patent Examination Procedure, and is to be adhered to by 6 et al. (section 2173.01).

      2. 33.1.3

        The vacuous passage you quoted, Les

        LOL – chose another passage in that decision then Malcolm. One that relates to the holding of that case.

        Oh wait, you don’t want to do that, do you? Your “precious” attempts to make one optional claim format be a de facto ONLY legal claim format might be shown for the chicanery that your efforts are.

        Oopsie for you.

    2. 33.2

      I can’t even tell what Les is responding to. But its nice to be the talk of PO even when I’m out.

      #datinfluence

        1. 33.2.1.1

          6 will always relish what Ned has to say (after all, Ned has the affliction of “6-must-be-an-Einstein-because-he-agrees-with-me.”

  3. 32

    Reposted to remain visible above the spamming of the MM. Rinse repeat.

    There has not been one substantive response to this post. Outrageous that a judge at the Fed. Cir. will just ignore our patent laws and fabricate his own nonsense that is not even law, but equity in the worse sense where a judge can just invalidate claims based on their feelings. (Note this is coming from a judge that never had any science training, never had any patent law experience outside of government, and has made poor use of his time to learn our laws. Impeachment is the right way to go.)

    No intellectual honest person can say that scope of enablement isn’t the right test.

    Just think about it:

    (a) Should something that is enabled by your patent be outside what you can claim? No way. Makes no sense. If you should be entitled to the breadth of what you disclosed and enabled.

    (b) Should you be allowed to claim something outside the scope of enablement? No. Obviously not as you didn’t enable it.

    (c) And, it is a simple matter as discussed in LizardTech to invalidate claims if a later arising invention is a non-obvious invention that falls within the scope of your claims.

    That is all that is needed and it is simple to enforce. Dyk’s nonsense is more judge invented nonsense where he wants to be able write down some psychotic nonsense and invalidate claims. Shameful. Dyk has no science background. Dyk is unqualified to sit on the Fed. Cir. Please resign.

    1. 32.1

      There was a substantiative response at 12.1, and also 12.1.2.1 where RandomGuy exposed your fundamental misunderstanding of relevant case law.

      1. 32.1.1

        Except not, “Bob,” as there was no “relevant case law,” and the flashlight example was itself debunked.

        1. 32.1.1.1

          The flashlight example wasn’t great, but you haven’t debunked the existance (or value) of a possession requirement.

          “The fact that you enable a genus does not mean that you have posited each point within the genus”.

    2. 32.2

      Regarding “(a)” can you just try to explain why you should be able to claim something that you enabled but didn’t possess?

      1. 32.2.1

        So Bob you sound like a troll, but I will answer anyway. 112 now requires that one skilled in the art would recognize the invention in the disclosure. You don’t consider that posses? That is a pretty tight requirement.

  4. 31

    link to arstechnica.com

    [T]he newest tree of life, published in Nature Microbiology, reveals that most of life’s diversity is bacterial and that much of it belongs to a recently discovered branch of especially tiny bacteria that no one has ever grown or seen under a microscope.

    All we have is their DNA, mixed in with the DNA of everything else that inhabits the same ecosystem.

    This is just one of the many basic facts about life that justify the decision to tank claims like those in Ariosa, Myriad and similar “I detected it first!” patents.

    It’s a feature of a sane patent system, not a bug.

    The patent maximalists, of course, will never understand any of this. But it’s fun to listen to them whine and cry. It’s all they know how to do, really.

    1. 31.1

      And still more diagnostic fun:

      link to arstechnica.com

      Holmes managed to build a $9 billion valuation for Theranos, promising it would revolutionize diagnostics and patient care with a newly developed device that could perform a wide range of medical tests on just a few drops of blood. But the company has failed to publish or release scientific data to back up their claims.

      But the PTO has really high standards when it comes to evaluating scientific claims. Even if Theranos is incompetent at the core, we can rest assured their patents are totally awesome and not the least bit junky. After all, investors happily poured billions of dollars into this enterprise. And they are the most important people ever! They are going to bring “personalized medicine” to everyone so that we’ll be able to better calculate how much bacon to eat! It’ll be a real revolution — we can trust them!

      Here’s a claim “invented” by the CEO (USPN 9,128,015):

      1. A sample processing device comprising:

      a programmable fluid handling system;

      a cartridge receiving location accessible by the programmable fluid handling system;

      at least one optical detector positioned at a location accessible by the programmable fluid handling system;

      a centrifuge positioned at a location accessible by the programmable fluid handling system, wherein the centrifuge comprises: a motor assembly comprising a rotor configured to rotate about a stator about an axis of rotation, wherein the motor assembly has a height that is oriented along the direction of the axis of rotation, wherein along said height said stator is circumscribed by said rotor; and a base affixed to the rotor, wherein the base rotates about the stator, wherein the base comprises at least one bucket that is characterized in that (a) the bucket comprises a cavity to receive a sample vessel and (b) the bucket is configured to pivot about a pivot axis to move the cavity from a first orientation when the base is at rest to a second orientation when the base is rotating, wherein the bucket at a fully extended orientation does not extend beyond a circumferential perimeter of the base, and wherein the centrifuge is capable of achieving a rotational speed of at least about 1,000 RPM and wherein an entire bottom surface of the centrifuge is about 200 cm2 or less.

      It’s a cute little automatic mini centrifuge, functionally claimed at the point of novelty. That’s some real fine scrivening. You gotta love the lack of a lower end on the size limit. Heckuva job, PTO!

      1. 31.1.1

        “and wherein the centrifuge is capable of achieving a rotational speed of at least about 1,000 RPM and wherein an entire bottom surface of the centrifuge is about 200 cm2 or less.”

        MM: “It’s a cute little automatic mini centrifuge, functionally claimed at the point of novelty.”

        What, MM, is the “point of novelty?” I don’t see anything new.

    2. 31.2

      MM: “The patent maximalists, of course, will never understand any of this. But it’s fun to listen to them whine and cry. It’s all they know how to do, really.”

      Maybe you should reread 31.1.

      Would you like a hankie?

    3. 31.3

      First, Malcolm what exactly is this ” just one of the many basic facts about life” that you want to showcase?

      Secondly, how would any such fact remotely and importantly legally “justify the decision to tank claims like those in Ariosa“…?

      You have strung together non sequiturs and proudly (but in error) exclaim some magical “logic” that you think supports your views.

      Then you v0mit your typical “patent maximalist” short script ad hominem – as if that means anything….

      1. 31.3.1

        It’s pretty simple, “anon”, but I’ll try to simplify it even further for you.

        what exactly is this ” just one of the many basic facts about life” that you want to showcase?

        Well, it’s right there in the passage I quoted. It’s the fact that life comprises nucleic acid and that there is an incredible amount of diversity out there, both in terms of discoverable life forms and discoverable variations in DNA sequence. Neither those life forms or the nucleic acid in those life forms is patentable (at least not as “discovered” compositions).

        1. 31.3.1.1

          how would any such fact remotely and importantly legally “justify the decision to tank claims like those in Ariosa“…?

          Those previously unknown microbial life forms and the nucleic acid polymers comprised by those life forms were detected using PCR in the same manner that the “previously unknown” fe tal DNA in maternal serum was detected. Should researchers be permitted to monopolize access and further research on those life forms and their DNA sequences because “they detected them first”? I’m not aware of anyone who thinks so other than you and your fellow patent maximalists. But that’s exactly what happens if you open the door to junky “I detected it first!” patents like those sought by Sequenom and Myriad.

          1. 31.3.1.1.1

            You falsely attribute my views on the situation that you outline here.

            Refresh what I tried to teach you on that subject “that you did not care that much about” – but v0mited out more than 30,000 words in the immediate aftermath – you know the one, the one where you waffled badly on understanding what the word “effectively” meant.

            Then note the difference between actual claims to the items and claims to methods involving the items.

        2. 31.3.1.2

          In addition, the granting of endless reams of such claims (and endless reams is exactly what you’ll get) inevitably converts the act of further investigation of natural phenomena using the same public domain t0 0ls (e.g., using PCR to search for detectable nucleic acid sequences in a medium where such sequences may exist) into infringement liability. That’s the opposite of “promoting progress”, unless you believe that increasing costs and lawsuits is “progress”. There’s quite a few patent attorneys who apparently hold that belief but, thankfully, they are mostly sidelined these days, desperately repairing their tattered p0m-p0ms.

          1. 31.3.1.2.1

            ^^^ ? – your rant based solely on your short script does not make any actual point.

            But you already know that, eh pumpkin?

  5. 30

    If anyone is disturbed by the Ariosa opinion, try the recent CAFC decision in Genetic Technologies v Merial, which in some of its dicta is even worse. Another case for the Supreme Court, I think, following closely on the heels of Ariosa (en banc reconsideration on this topic is a dead letter).

    1. 30.1

      The big picture is that the SCOTUS has opened the door with Alice of lawlessness. Alice is basically if you don’t like the claims, you may invalidate them. The Fed. Cir. seems to want more case law that says if the judgey thinks the claims are too broad–just ’cause it does–then they can invalidate the claims as a matter of law.

      Disgusting. Please let’s reset our judicial system.

      1. 30.1.1

        You notice missing from Dyk’s filth too is that it doesn’t go through and even apply patent law to its analysis. It’s argument is basically I should get to invalidate if I don’t like it.

        1. 30.1.1.1

          Night, may I respectfully ask you to stop calling people names? There is a certain presidential candidate who does the same thing and you know what people think of him because of it.

          1. 30.1.1.1.1

            Lol – Ned’s “umbrage” takes its typical one-sidedness, as Malcolm is clearly the Trump of this board’s anti-patentists (and we should “enjoy his swagger and make up head up the PTO” according to Ned….

            1. 30.1.1.1.1.2

              Now, I agree that 6 used to get personal with individuals. Regarding MM, I know he get upset with you anon, and that has a lot to do with history. I can only ask that you take the first step in ending the long acrimony between you to by being as respectful to MM as you can. I would urge the same of MM to you.

              1. 30.1.1.1.1.2.1

                The first step Ned is that he needs to put away his short script of ad hominem and vap1d propaganda.

                He started LONG before me – celebrating a full Decade of Decadence now.

                1. anon, OK, then. MM sees a lot of patent holders and patent attorneys as rich, entitled whiners whose arguments are self-interested and disingenuous. Right? You see people who oppose business method patents as “anti-patent.” I see the patent bar being run by big companies for their benefit only, and that includes killing off the patent system for anybody but big companies. I think each of us is entitled to his view and entitled to say it.

                  What I don’t like is calling the likes of Judge Dyk some sort of name. He may not always get it right, but he seems to be asking the right questions and looks like he has an open mind. I got that sense at oral argument in our case. Had he not required two other votes, he may have been freer in discussing “public rights.”

                2. Ned, we are supposed to have our liberty, which means we form our own judgment and do not defer to J. Dyk. And go read what I wrote again. I called his work filth not him.

                  He is not qualified to sit on the Fed. Cir. and should resign.

                  Stop trying to get brownie points.

                3. Ned,

                  Malcolm’s cl@ss w@rfare meme cannot rise above the dichotomy that the very thing he despises is ALSO the route to innovation MOST accessible to the NON-rich.

                  It is assuredly NOT the “Big Companies” that Malcolm takes aim at – not at all.

                  There is NOTHING there that Malcolm “claims” is disingenuous – and quite the contrary, it is Malcolm (and to a large extent, YOU) that is disingenuous in these discussions.

                  There is NO entitlement to the twisting and prevarications that he constantly engages in – that you ever so politely call “his view.”

                  Lastly, you just do NOT have it right with Judge Dyk and the supposed “looks like he has an open mind” – see directly below at post 28.

                  That is the opposite of an open mind.

              2. 30.1.1.1.1.2.2

                … as far as 6 and “used to,” while he has toned down a bit, he too still launches into the vap1d “meds/cra zy” line of ad hominem, and still has tremendous trouble saying the simple things (like, anon was right all along).

          2. 30.1.1.1.2

            Ned, the vulgarity is in the behavior of the judges. No name I could call them would be as vulgar as their decisions. Reality. One of the problems with our society is that people are allowed to hid behind civility. Lemley is a prime example where he will not address any tough question and merely publishes in the vanity press and turns tail and runs when confronted.

            So, my I respectfully request that intellectual dishonesty and coward academics be treated as worse than vulgarity.

            1. 30.1.1.1.2.1

              Look, Night, I do not believe that Dyk decided our case, MCM, properly. But he did put a lot of effort into his opinion and I respect and thank him for that. Actually, I was quite impressed. The guy is obviously an intellectual leader on the court, if not THE leader.

                1. anon, to the extent that Dyk is trying to go to the fundamentals to get it right is something I really appreciate.

                2. That extent is nonexistent. What you have is an ignorant old man that never should have been appointed to the Fed. Cir. trying to fabricate new law to suit his fancy.

                3. Ned,

                  Again see 28 below – that you somehow think this is attempting to get to the fundamentals only shows your continuing affliction of the “6-is-a-genius-because-he-agrees-with-me” variety.

          3. 30.1.1.1.3

            Ned, MM calls me names all the time. Where are you then? The fact is that you have an agenda on these blogs and are not a neutral participant.

    2. 30.2

      PC: try the recent CAFC decision in Genetic Technologies v Merial

      There’s a whole thread on the case here:

      link to patentlyo.com

      Definitely the right decision … but about fifteen years too late. That was some of the worst junk out there.

      But don’t feel bad, Paul! GTG made lots of money threatening people. with that junk. Isn’t that wonderful? We all know that you think so.

  6. 29

    The problem with the approach of Judge Dyk is that equity demands that an inventor should receive protection commensurate with the contribution that he has made. If that contribution is in the nature of a fundamental advance, then the commensurate scope may be very broad, subject only to the overriding proviso that it should not extend what is scientifically predictable from the reported work.

    As readers may know, I have thought long and hard about the ISIS/Sequenom invention and my first impression, which persisted for a long time, resembled that of Judge Dyk. However, the better view is that the existence of cffDNA in maternal serum or plasma is a fundamental advance opening the way to earlier and less invasive testing with a reduced risk to the developing foetus. The scope of claim 1, which covers the generality of amplification and testing in my opinion represents a patent-eligible application of the discovery and is of scope commensurate with that discovery.

    If the Supreme Court fails to take up the present petition and to reverse the decision of the Federal Circuit, that marks the Sutterization (for derivation look up the biography of John Sutter) of the US patent system which at least in the life sciences will only protect second-rate or incremental inventions.

    1. 29.1

      Another way to say this is scope of enablement. Dyk wants a test where a judge gets to look at the claims and invalidate them ’cause they don’t like them.

    2. 29.2

      The notion of “scientificly predictable” is – at best – problematic, and leads to the logical extremes of Flash of Genius (explicitly rejected by Congress) OR pure “oops,” which has no “teaching” value when one considers the Quid Pro Quo aspect of patents.

      Sorry Paul, the mantra needs a bit more critical thinking.

    3. 29.4

      Paul, I do not fundamentally disagree. The problem usually comes in the claim. I think the claim must have some physically new process step, and not just claim old processes with new “considerations” or metal steps – the abstract principle of Morse.

      In my view, the ISIS/Sequenom satisfied this test. The claim covers looking for fetal DNA in maternal plasma. That literally was new.

    4. 29.5

      PC: the Sutterization (for derivation look up the biography of John Sutter) of the US patent system which at least in the life sciences will only protect second-rate or incremental inventions.

      Wait — the last time I checked you guys were telling me that all innovation is “incremental” and that’s why we need to grant all that “do it on a computer” junk.

      Time to tidy up that script, I guess. After all, you are super serious and very very important. We have to pay attention to you!

      1. 29.5.1

        Nice strawman – I don’t recall anyone EVER saying such a thing as ALL innovation is incremental….

        Your own script needs “tidying” Malcolm.

  7. 28

    Prof. Rantanen,

    Dyk is a hypocrite of the highest order and presents a level of inte11ectual dishonesty that is difficult to countenance.

    At the same time he pleads that he must hew to the writings of the Supreme Court, he advances ideas opposed to those very writings and would elevate dissents into controlling law based purely on his own ideological framework.

    Page 6 of his concurrence: “In my view,
    claims to business methods and other processes that
    merely organize human activity should not be patent
    eligible under any circumstances.

    So much for being “bound” – bound only when something is convenient and aligns with your own agenda is a travesty, that no matter the “bias because of agreeing that 112 is somehow not enough,” a law professor should be alarmed at and taking umbrage with.

    So instead of trying to push 112 even more into 101, maybe the dangers of this approach – and the outright chicanery of such “selective” choice of when to apply law and when NOT to – should be in focus.

    Yes, that is more than a bit inconvenient to perhaps realize that a different and more desired law needs to go through Congress to arrive at that level of desired control for “limiting claim breadth,” but ig noring the duplicity involved in arriving at that desired end through rather blatant judicial activism NOT supported by the words of Congress is an affront to the very law that you are supposed to be teaching.

    1. 28.1

      Let’s fact it. At this point we are dealing with Fed. Cir. judges that are little better than criminals. They think nothing of writing their own laws and invalidating any claim to suit their fancy. The worst part about it is they are ignorant people as a group of patent law, science, innovation, and the real world. Dyk is a prime example of the type of person that is unqualified to sit on the Fed. Cir. No science background. No real world patent law experience. No real world experience at all. But some how this boz0 just knows what right.

      We have entered the dark ages of the USA.

    2. 28.2

      “In my view, claims to business methods and other processes that
      merely organize human activity should not be patent
      eligible under any circumstances”

      What is Dyk’s basis for this view. What we see is the ignorant judges making these blanket statements with no empirical evidence and obviously absolutely no understanding of science and technology. Back up your statement Dyk. That is what is most frustrating is these ignorant judges just making these statements with no basis whatsoever. And really? “Merely.” So, hours of your time a day is a “merely.” What a joke the USA has become that such minds are in charge of our future.

      Anyone that has an education knows that “organize human activity” is one of the edges of technology that holds enormous promise. And anyone that knows anything about innovation knows that the information processing machines and humans are intertwined in innovation spiral. Dyk please do us all a favor and resign.

  8. 27

    In my opinion, one problem with recent Supreme Court patent eligibility decisions is that every patent ever written can be viewed as an attempt to monopolize certain laws of nature.

    Further, when broken down into individual clauses, every claim limitation can be viewed as being both “conventional” and “obvious” and being nothing more than merely an invitation to “apply” the law of nature in this regard. Indeed, if a given conventional limitation could not be understood as being obvious or conventional in the light of the specification, then most likely the limitation is unclear in any event. Put alternatively, can anyone cite a clear and unambiguous example of a non-obvious and unconventional claim limitation?

    Taken to their logical conclusions, these recent SCOTUS decisions have essence turned patent law into a subjective “mush”. There are no sharp boundaries or logical “cut-offs” anywhere in these decisions. Merely vague warnings such as “should not be interpreted too broadly lest it swallow all of patent law”, which can be viewed as an admission that the decisions are inadequate.

    I appreciate Judge Dyk’s valiant attempt to impose some sort of order into this mush by trying to apply the slogan, “narrowly tailored”. I am assuming that Judge Dyk intended to use a standard definition here, such as: “a law written to specifically fulfill only its intended goals.” This sounds nice on paper, but how would this actually be implemented in real life?

    The intended goal of essentially every applicant everywhere is to try to get claims as broad as possible that will also stand up to future challenge. So apparently the goals of the applicant would not figure into the definition of “narrowly tailored”.

    The goals of the USPTO are the reverse of the applicant’s goals. To narrow the claims down so that they are do not read on prior art, are not obvious, and are supported by the applicant’s specification. So either all USPTO approved patent claims are “narrowly tailored”, or alternatively the goals of the USPTO also do not figure into the definition of “narrowly tailored” either.

    Who determines the goal? The judge or the applicant’s business competitors? We are again in a subjective space here, but of course the business competitors will always carefully move the goalposts so that they don’t infringe.

    So it is “turtles all the way down”. We have simply exchanged one type of subjective “mush” for a different type of subjective mush.

    1. 27.1

      Taken to their logical conclusions, these recent SCOTUS decisions have essence turned patent law into a subjective “mush”. There are no sharp boundaries or logical “cut-offs” anywhere in these decisions.

      There are plenty of sharp boundaries.

      But, hey, patent lawz is teh hard! Be sure to keep telling your clients you have no idea what’s going on and “everything is subjective”. They’ll appreciate that. Plus you’ll have your behind covered when you screw up.

      Or can you start to teach yourself about what many of us reasonable people have been saying for years.

  9. 26

    Reposted to remain visible above the spamming of the MM.

    No intellectual honest person can say that scope of enablement isn’t the right test.

    Just think about it:

    (a) Should something that is enabled by your patent be outside what you can claim? No way. Makes no sense. If you should be entitled to the breadth of what you disclosed and enabled.

    (b) Should you be allowed to claim something outside the scope of enablement? No. Obviously not as you didn’t enable it.

    (c) And, it is a simple matter as discussed in LizardTech to invalidate claims if a later arising invention is a non-obvious invention that falls within the scope of your claims.

    That is all that is needed and it is simple to enforce. Dyk’s nonsense is more judge invented nonsense where he wants to be able write down some psychotic nonsense and invalidate claims. Shameful. Dyk has no science background. Dyk is unqualified to sit on the Fed. Cir. Please resign.

    1. 26.1

      “And, it is a simple matter as discussed in LizardTech to invalidate claims if a later arising invention is a non-obvious invention that falls within the scope of your claims.”

      That is a “simply matter”? Please do tell what section under which you plead this defense, and tell me if you can do it in an IPR.

      1. 26.1.1

        It goes to enablement. The claims are covering a scope that they did not enable.

        You know, 6, what amazes me is that none of you seemed to have learned how to claim and how to police claims and then we get boz0 like Dyk come out with psychotic musings with no relationship to real patent law, and the group that never learned real patent law nod as if this is wisdom. Just strange.

        Claims and patent law is really quite easy if you don’t want laws in there for the witch hunters to burn down whatever they don’t like.

        1. 26.1.1.1

          Alright it’s enablement then, do you have to go to the DC to get this done or IPR it up?

          Because this chap that this actually happened to irl didn’t manage to do it “simply”.

  10. 25

    Heckuva job, PTO. This is unreal.

    link to arstechnica.com

    A New Jersey man named Michael Garofalo had a patent he claimed covered online contests, and used it to demand money from other small businesses. But when the Electronic Frontier Foundation came to the defense of a photographer targeted by Garofalo last year, Garofalo quickly dropped his case. Last month, he and his lawyers were ordered to pay $29,000 in legal fees.

    Now Garofalo, who owns the website Garfum.com, is asking for the fee smackdown to be reconsidered. His reasoning: since the US Patent and Trademark Office recently agreed to grant him another patent, nearly identical to the first, his case couldn’t possibly be considered “exceptional.”

    …[T]he original patent describes “a method for sharing multi-media content… in a computer network consisting of” of various traits. Meanwhile, the continuation application claims “a method for sharing multi-media content… in a computer network comprising” those same traits.

    Another section of the original patent’s main claim describes “establishing a hierarchy for the uploaded multi-media content within the competitive format by implementing a competitive measurement system.” In the newer application, the claim describes “establishing a hierarchy for the uploaded multi-media content within the competitive format as a function of a competitive measurement system.”

    The original patent describes “enabling each user to designate a single point… for each one of a plurality of competitive rounds.” The new application describes “enabling the users, over a first time period, to designate a single point… for each one of a plurality of competitive rounds.”

    The US patent system is a joke.

    1. 25.1

      MM, the sanctions are for asserting a patent against a defenseless business and then dropping the lawsuit when confronted. Classic abuse of process.

      Obviously, people should not enforce their patents first against the weak lest this happen to them.

      1. 25.1.1

        That would be fine with me as it’s the same standard we apply to ALL civil litigation in ALL areas of law.

        Regarding this patent, the linked article seems to fail to realize that there is a big difference legally between the words “consisting” and “comprising” – and perhaps ironically, the latter makes it much broader, which if anything would have only *helped* the article’s argument to point out.

        1. 25.1.1.1

          Ken, I don’t think validity or infringement should have anything to do with the sanctions. People should not file lawsuits against small fry who have very little at stake and cannot afford a defense.

          1. 25.1.1.1.1

            Ned – I take exception to your line of thought here. You just go too far and read a law that does not exist.

            IF the law had some form of “efficient breach” for individuals, such that “little at stake” or “cannot afford a defense” were legitimate excuses from infringement, I might believe enough in your desired ends to be in accord with you.

            The law has NO such forms.

            You are only mucking things up with parading around a “B-b-but look at how good this End would be” without the proper means to getting there.

            Go back and read your Thomas More – what “sounds good” will leave you defenseless in the end.

            1. 25.1.1.1.1.1

              There is such a concept as de minimus infringement in the copyright context (de minimis non curat lex –> the law does not concern itself with trifles)

              Would a federal district court really sit in judgment if I created a single patented hammer (lost profits of $3 dollars and, failing that, reasonable royalty of $0.5)?

              Surely, you will respond that that has no place in our law and I would disagree and agree, all at the same time.

              1. 25.1.1.1.1.1.1

                alex,

                I am glad that you brought up copyright – as copyright is explicitly different than patent when it comes to infringement.

                You may want something different for patent law – but the proper means to that end is with Congress.

            2. 25.1.1.1.1.2

              “anon” You are only mucking things up with parading around a “B-b-but look at how good this End would be” without the proper means to getting there.

              But “anon” never does that! He’s totally not a hypocrite!

              LOL

        2. 25.1.1.2

          Ken, I think it is a shame that ambulance chaser lawyers have entered the ranks of attorneys representing patent owners. They are bringing the system in to disrepute.

        3. 25.1.1.3

          Ken: the linked article seems to fail to realize that there is a big difference legally between the words “consisting” and “comprising” – and perhaps ironically, the latter makes it much broader

          I’m pretty sure that “the article” “realizes” that the changes made by the patentee amount to a rearrangement of the deck chairs and nothing more. The patent is still a pile of junk. And the patentee knows that. Sanction-w0rthy behavior here? Of course it is.

          In any event, it’s refreshing to learn that the patentee’s games aren’t f00ling you, Ken. Very impressive!

    2. 25.2

      Malcolm,

      Your latest rant at 25 meanders without making a point.

      Brushing aside the typical mantra of “this example is bad, so we need any means”…

      Not sure I get your “point”

      Are you really saying that there is no difference between the language of “consisting of” and “comprising”…?

      Your other point merely is a gag reflex concerning “objective physical structure” and we both know that your mantra wanting to make something optional be NOT optional is a simply fallacy.

      1. 25.2.1

        his point anon is that the first patent was pure abstract rent-seeeking rubbish that no sane patent system would allow, and then the travesty is compounded by the allowance of a second patent (more government granted monopoly for nothing) that for all practical and meaningful purposes is identical to the first grant. His point is that in such a system, the process of ‘examination’ is less than notional, thus a “joke”. But joke is the wrong word. The right word is “crime”.

        1. 25.2.1.1

          the process of ‘examination’ is less than notional

          I don’t think that such is accurate, Mr. Snyder.

          I don’t see anywhere where he comments on the examiners not doing their Fn job – and he spews way too much vile at the applicants.

          His “point” is simply far too obfuscated by the notion of his self-appointed guarding of the fields of rye, and his lack of actually being ON point.

          1. 25.2.1.1.1

            ps – ALL people seeking patents are to use your incorrect phraseology: “seeking rent

            Maybe you too should try for less emotive choice of words, as that reveals more animus than you might realize.

            1. 25.2.1.1.1.1

              No anon, rents are status that offer no economic benefit. Patents for actual inventions do not generate rents, they are a form of compensation in a reasonable economic exchange. your anti patent strawman is sooo tired…

              1. 25.2.1.1.1.1.1

                Except not, Mr. Snyder.

                The strawman here is yours.

                You mindlessly call those things that do not fit your perception of worth as illicit, instead of understanding and applying the terrain of law as written by Congress. The “reasonable economic exchange” is the Quid Pro Quo of the patent system. What happens after that with the negative right that is the property right and the larger economy is a different animal than what patent law pertains to. You seem unable to grasp this contextual and conceptual difference.

                As I indicate, it is your use of the emotive phrase that is just not correct.

                Instead of the emotive phrase, aim better.

                1. My aim is adequate anon; your concern with everyone’s motivations and modalities uses a ton of text and moves precisely nobody. On that score, as you deduce, I can’t speak about our settlement, but rest assured there would have been no deal if we were not satisfied. You can read the docket on RPX if you wish, and see for yourself how things were going. As to your whole dearly held separation of powers ideal; it fits with your overall pedantry and is equally removed from reality. In reality, legislatures fall behind or fall into dysfunction or make mistakes, and it becomes the responsibility of the judiciary to correct course. All of the branches operate with the consent of the governed and all represent the interests of the people, and the mediation of their conflicts does not follow a set order of precedence or preference, despite your endless dradeling otherwise. PS you have no monopoly or advantage in understanding the political terrain, also endlessly demonstrated….

                2. Your aim is most definitely NOT adequate, Mr. Snyder.

                  You are the one on a self-appointed Quixote curse-ade based on your own emotional “bad experience” all the while you refuse to understand the terrain of the law.

                  Separation of Powers is most definitely not “pedantic” and “removed from reality.”

                  Maybe you should appreciate history a bit more and understand the formation of this country and its basis of law before you declare things “pedantic” and “removed from reality.”

                  I do not preach that I have a monopoly in such (nice strawman) – but it is beyond clear that you are out of touch and simply do not care that you are out of touch.

                  As to advantage – it is very much clear that I have a far superior advantage over you. Your not realizing this speaks volumes to that very fact.

                  Separation of powers goes hand in hand with checks and balances – the very thing you want to reference with your “correct[ing] course” – but there very much is a proper means to that end.

                  As for the Congress being out of line, clearly here too you are not paying attention. If you were paying attention you would have noted that I have said as much on a particular topic involving property and protection of property that even Congress is not free to write a law however they feel. That topic IS exactly a point in which the proper course of action will be for the courts to declare something something unconstitutional.

                3. “anon” Separation of Powers is most definitely not “pedantic” and “removed from reality.

                  Translation: “Pay attention to meeeeeeeeee and my tired script! I’m super dooper important and very serious! Pay attentiont to meeeeeeeee!”

                  Cookies and milk to follow, “anon.” But first you have to take your nappy nap. We all really love you!

                4. “anon” it is very much clear that I have a far superior advantage over you. Your not realizing this speaks volumes to that very fact.

                  But “anon” isn’t suffering from clinical narcissism, folks.

                  Nope. He’s a very serious person! And sooper dooper smart. Sure he is.

        2. 25.2.1.2

          for all practical and meaningful purposes is identical to the first grant.

          So, Mr. Snyder, it is your learned and legally sound opinion that there is no legal difference for claims to use “consisting” as opposed to “comprising”….?

          (I suggest again that you seek a refund from your “school” of the Holiday Inn)

          1. 25.2.1.2.1

            “anon” it is your learned and legally sound opinion that there is no legal difference for claims to use “consisting” as opposed to “comprising”….?

            It seems that Billy has lost his bearings. Nobody could have predicted!

          2. 25.2.1.2.2

            It’s my learned opinion that the two terms may be construed to have no difference, or to have a material difference, based on the facts at hand, as multiple authorities are cited below in support of that position. In the instant example of a junk patent, they make no difference whatsoever.

            It’s also my learned opinion that the Constitution is open to interpretation, and does not establish foolproof checks and balances each time there is conflict among the branches or levels of government.

            And also its my careful opinion that you have made quite a display of yourself today.

            Dictionary.com

            comprise
            [kuh m-prahyz]
            Spell Syllables
            Synonyms Examples Word Origin
            verb (used with object), comprised, comprising.
            1.
            to include or contain:
            The Soviet Union comprised several socialist republics.
            2.
            to consist of; be composed of:
            The advisory board comprises six members.
            3.
            to form or constitute:

            Or Merriam Webster:

            comprise
            verb com·prise \kəm-ˈprīz\
            Simple Definition of comprise
            : to be made up of (something) : to include or consist of (something)
            : to make up or form (something)

            Or MPEP 2111.03:

            The transitional phrases “comprising”, “consisting essentially of” and “consisting of” define the scope of a claim with respect to what unrecited additional components or steps, if any, are excluded from the scope of the claim. The determination of what is or is not excluded by a transitional phrase must be made on a case-by-case basis in light of the facts of each case.

            1. 25.2.1.2.2.1

              Kudos to you for finding and reading the first paragraph of MPEP 2111.03.

              Now continue reading the next two paragraphs and note the distinctions that are common knowledge.

              …and you talk about being pedantic…?

              1. 25.2.1.2.2.1.1

                1) in the patent at hand, the terms are interchangeable

                2) so although terms of art, in SOME CASES, they are meaningless here

                2) the second and third paragraphs are limited by the first, which says its always case by case as to the usage as terms of art of those words.

                So yes, you are being a pedant about the use of those words to reflect meaningful changes in the two patents in question.

                Lucky nobody is paying you to advocate around here…

                1. 1) you have ASSumed your own conclusion

                  2) the limit of the first paragraph is explained in the second and third – you seek to ig nore this on its face in order to simply ASSume the conclusion you want to ASSume

                  So yes, YOU are being the pedant in order to arrive at your conclusion as a starting point, and without more.

                  The old rules about posting strictly prohibited being paid to advocate here – MAYBE you should try to realize exactly why that was a good rule to have.

                2. Martin, your views are nearly psychotic. You just sell the propaganda that K street pushes. Yes there are some problems, but not the ones you spout off about. There is not a run away problem with trolls. Whatever a troll is.

                3. 1) Night any comparison on this board of the actual content of our respective writings would clearly show that one of us is reasonable and the other not so much. Psychological projection much?

                  2) How about you read the RPX digest of filed cases for the next 60 days or so, and get back to me on how many appear to be legit, and how many are clearly rackets? I’d estimate about 50/50 over the last 2 years. Is that “some problems” enough?

                4. Martin,

                  You don’t understand the law. That is why you are lost on this blog and in patent law. I will tell you again start from the elements and build up. Your top down approach is not the law.

                  To your 2), those are asserted claims? No.

                5. He woke up from his nap at the Holiday Inn, after dreaming of the concept of “equity” and thinks that such IS the law and the be-all of things legal.

                  He does not get – nor does he even bother to care to get – the difference between common law and statutory law, nor the separation of powers and the limitations of the judicial branch when it comes to statutory law.

                  The sad thing is, he is not alone and even some supposed attorneys (and even academics) like to pretend that it is entirely “proper” to have all law written from the bench.

                  The likening of judges (and Justices) to kings (replete with resplendent wardrobes) is not an unduly stretched comparison given this particular mindset.

        3. 25.2.1.3

          MS: his point anon is that the first patent was pure abstract rent-seeeking rubbish that no sane patent system would allow, and then the travesty is compounded by the allowance of a second patent (more government granted monopoly for nothing) that for all practical and meaningful purposes is identical to the first grant. His point is that in such a system, the process of ‘examination’ is less than notional, thus a “joke”. But joke is the wrong word. The right word is “crime”.

          Indeed. It’s pretty easy to follow for most reasonable people.

          On the other hand, if you’re a patent-worshipping n-tcase that was driven across the bend by Prometheus v. Mayo, then all bets are off.

        4. 25.2.1.4

          Martin, if that is true then patent law has much to police claim scope. You act as if someone can just claim anything and there is no consequence to it. Ridiculous.

          1. 25.2.1.4.1

            Consequences? Oh that’s funny. Even after Octane, you nearly have to be a mass-lawsuit troll sending $3K settlement letters to catch a fee, and that assumes you are not an asset-free shell company anyway.

            Why don’t you do us a favor Night and read the daily RPX digest of filings. You will find about half are real companies with real inventions, and the other half are straight shakedowns.

            I saw some condo association sued the other day for having a video conference room on the property. You think those people are going to support the patent system ever again, in any way? There are hundreds or thousands of cases like that a year filed.

            Yea, you can claim anything and there are essentially no consequences. Duh.

            1. 25.2.1.4.1.1

              Once again, there is some mistaken notion out there that patent infringement has some “de facto” escape clause for end users or “small entities.”

              That’s just not in the law.

              Please stop merely assuming that such enforcement actions “must be bad.”

                1. are we ready for the other aspects of copyright law, like terms of life+ and criminal provisions…?

                  Are we ready to ig more the basis of why patent and copyright are treated differently (expression versus utility)…?

                  This is not the first time that the “academic” desire seems to outpace the understanding of the basic differences between parents and copyrights….

                  To answer your question directly though, I would say no.

                2. Dennis, most judges will all but disbar a lawyer who signs a complaint against a defenseless infringer. I know, I was in court representing a group of homeowners who had been sued. After dismissing the suit on my motion, the Chief Judge read the attorneys the riot act, literally.

                  We need to consider increasing the amount in controversy requirement for patent suits to at least a million before anyone has access to the courts in the first place. Couple that with a per se rule that any lawyer who signs a letter accusing anyone of patent infringement where the amount in controversy is not at least 1million, has committed an ethical violation requiring suspension from Federal Practice.

                3. Patent law ain’t the only law, hard as it is to believe. Court systems have small claims divisions for a reason.

                  Proportionality is a core tenet of justice, justice is a core tenet of equity, and regardless of the fusion between equity and law in the United States, equity still trumps law.

                  A million seems high, but $250K surely does not. Or a small patent claim statute in that neighborhood.

                4. Hawk Technology Systems, LLC v. Bellini Condominium Association, Inc. et al

                  Hawk Technology Systems, LLC v. Hollywood Beach Resort Rental Program, LLC

                  Hawk Technology Systems, LLC v. 1720 S. Michigan Condominium Association

                  The latest priority date is 23 years ago. Lots of “innovation” being protected here.

                  And now several hundred more everyday people who will prefer forever more that their politicians trash the patent system.

                5. Mr.
                  Snyder, pushing “equity” to change statutory law wherein the authority for writing that statutory law is directly found in the Constitution only highlights your lack of understanding of the terrain of US law.

                  First step for you is to realize just how off the path you are. Your passion is NO substitute for understanding.

      2. 25.2.2

        Are you really saying that there is no difference between the language of “consisting of” and “comprising”…?

        “anon”, are you really saying that you’re an antis0cial tr0ll who needs to get his medication prescription adjusted?

        LOL

        Go right ahead and defend this claim, “anon”. These are your people, after all. Give them all your love. The rest of us will sit back and watch. Because you’re very serious and important! Just like these b0tt0m-feeding l 0 s ers.

        1. 25.2.2.1

          S I G H

          defend this claim….

          Nice “game” Bri’er rabbit – maybe you have not noticed (don’t know how many times I need to point this out to you), but I talk about the law – and don’t waste my time playing the silly “defend the claim” game.

          Maybe (just maybe) you can up your game and talk about the law too.

          (I won’t hold my breath)

          1. 25.2.2.1.1

            I talk about the law – and don’t waste my time playing the silly “defend the claim” game.

            Yes, it’s super “silly” to discuss the invalidity or ineligibility of all the junk patent claims that are the primary reason for the systemic corections that “anon” spends all his time here complaining about!

            LOLOLOLOLOLOLOL!

            talk about the law

            Ok. If you have an invalid or ineligible claim that recites “consisting of”, then changing that language to “comprising” is pretty much a non-starter as corrective amendments go.

            I know: this is super nuanced stuff for a super d00per serious guy like you. But at least you’re not trying to defend this junk claim! That would be silly, as you’ve already admitted.

            LOLOLOLOL

            1. 25.2.2.1.1.1

              You miss the point of the statement there Malcolm – and badly so.

              Try to read what the question actually was.

          2. 25.2.2.1.2

            I don’t understand why you post on MM’s posts about this sort of thing if you don’t think the claims are worth defending anon.

            1. 25.2.2.1.2.1

              Malcolm’s v0mits forth pr0paganda that is not law – Stuffing his nose in his own wretchedness when he wants an ends without the proper means is just a fun thing to do.

              1. 25.2.2.1.2.1.1

                he wants an ends without the proper means

                There was nothing improper about the means used to tank this patentee’s junk claim. What was improper is the means that the junk patentee used to get around the fact that his claims are pure junk.

                But go ahead, “anon”, and pretend that the patentee isn’t a b0tt0m-feeding grifter of the lowest calibre! It’s what people like you do and by “people like you” I mean people who are an embarassment to the legal profession and who have been making laughingstocks out of themselves for years. You people just can’t help yourselves.

                So … are there any other random subjects you want to cry about, big crybaby? Do you want to work your magical box of protons and neutrons into this discussion, too? It’s not too late!

                And you’re a super serious person so we can’t wait to hear about that wonderful box of protons again.

                1. LOL – you still do not seem to realize that that wonderful Big Box of protons, neutrons, and electrons is a S L A P at your very own “logic”…

                  “Go figure Folks”

              2. 25.2.2.1.2.1.2

                “anon” pr0paganda that is not law

                So says the s0ckpuppet who spent years here using hundreds of different pseudonyms spreading the myth0l0gy that you can’t look at the prior art when doing an analysis under 101.

                But he’s a very serious person! Super important. We all need to pay attention to him!

                1. It always makes me chuckle when you of all people fall back to the “sockpuppets” accusation, Malcolm.

                  You whined like forever, and yet, YOU have engaged in more sockpuppetry in the last several years than anyone else.

                  How is your transparency challenge with Dr. Noonan coming along…?

                  Oopsie for you.

  11. 24

    Junk patent wielding tr0ll and professional crybaby J. Carl “I Really Love Junk Patents!” Cooper got smacked down by the CAFC yesterday with a Rule 36 opinion (Cooper v. Square).

    Some background on this b0ttom-feeder might be helpful. After all, he mewls in much the same way as the oh-so-aggrieved patent maximalists (the most persecuted people in America!) who cry their crocodile tears here day after day.

    link to law360.com

    Days after Square filed inter partes review petitions challenging eCharge’s patents last year, eCharge sued the U.S. Patent and Trademark Office, alleging that the AIA review process is unconstitutional. It lost the suit in district court earlier this year, but the case is now on appeal….

    The eCharge patent describes a “universal credit card” apparatus that allows access to numerous accounts with one card “thereby eliminating the need to carry, store or retain numerous cards,” according to the patent.

    LOL! Good riddance to another ridiculous pile of junk. Has the Supreme Court already wiped its collective behind with Cooper’s petition for cert? No doubt that’ll happen momentarily if it hasn’t happened already.

    Also, if you want additional chuckles at Cooper’s expense (and who wouldn’t?) you can check out the oral argument here: link to cafc.uscourts.gov Unfortunately for Cooper, his entire appeal was predicated on misrepresenting both the testimony of Square’s expert and the Board’s decision. Oops. No doubt that made the decision to issue a Rule 36 opinion in Square’s favor even easier than it otherwise would be.

    1. 24.1

      “Good riddance to another ridiculous pile of junk. Has the Supreme Court already wiped its collective behind with Cooper’s petition for cert?”

      I think the Supreme Court can and will separate between the merits of (any of) Cooper’s patents versus the issue of whether IPRs are a constitutional way to invalidate patents.

      1. 24.1.1

        Malcolm’s diatribes are not meant to get to any such separation.

        They are an ad nauseum “look this is bad – let’s get to a desired ends by any means” spiel.

        Let’s focus on the means people – they really do matter.

      2. 24.1.2

        I think the Supreme Court can and will separate between the merits of (any of) Cooper’s patents versus the issue of whether IPRs are a constitutional way to invalidate patents.

        I think the fact that Cooper’s patents are ridiculous irredeemable junk is just one of many reasons that the the Supreme Court is going to laugh these Constitutional challenges away.

        And that means that the patent maximalists are going to be crying an even bigger river than the one they’re crying now. Is there enough kleenex in the world for them? I’m skeptical.

    2. 24.2

      From my understanding of the oral argument, there was a dispute over whether the evidence demonstrated all the elements of the claims. The patent owner relied on testimony of an expert that admitted that the references did not disclose certain elements. The infringer argued that the board’s decision was supported by substantial evidence and demonstrated how.

      On this record, I do not see how the Federal Circuit could do anything other than give a rule 36 affirmance because of the “substantial evidence rule” which records deference to the findings of an administrative agency on the level of that of a jury.

      As an aside, since this is a trial between two private parties regarding a patent, the substantial evidence rule should not apply because there is no jury involved and this is not an expert agency finding facts within its expertise. This is a court where the judges have certain legal expertise, as opposed to technical competence within the field of the invention. The evidence should be reviewable for error. This is one more reason why IPRs are killing the patent system.

      1. 24.2.1

        the “substantial evidence rule” which records deference to the findings of an administrative agency on the level of that of a jury.

        I don’t think “deference” had anything to do with the result. The claims are junk and to the extent that there was any remotely compelling argument that they weren’t anticipated (which there wasn’t) they were obvious. This is how the CAFC saves everybody a lot of time.

  12. 23

    No intellectual honest person can say that scope of enablement isn’t the right test.

    Just think about it:

    (a) Should something that is enabled by your patent be outside what you can claim? No way. Makes no sense. If you should be entitled to the breadth of what you disclosed and enabled.

    (b) Should you be allowed to claim something outside the scope of enablement? No. Obviously not as you didn’t enable it.

    (c) And, it is a simple matter as discussed in LizardTech to invalidate claims if a later arising invention is a non-obvious invention that falls within the scope of your claims.

    That is all that is needed and it is simple to enforce. Dyk’s nonsense is more judge invented nonsense where he wants to be able write down some psychotic nonsense and invalidate claims. Shameful. Dyk has no science background. Dyk is unqualified to sit on the Fed. Cir. Please resign.

    1. 23.1

      Thanks to peripheral claiming (not to mention functional claiming) we already give people claims routinely to things outside the scope of what they enabled or were enabled at time of filing.

      It wasn’t but a few years ago when someone with a patent from the 80’s was trying to accuse someone that made an iphone app of infringement. Iphone apps like his were blatantly not enabled as of the 80’s. Yet, the claim near surely covered the activity.

      1. 23.1.1

        What you see 6, is the unintended consequence of making PHOSITA stronger.

        Applications just do not need to cover PHOSITA, so what you see (and claim) to be “unmanly” is nothing more than the consequence of courts attempting to meddle with the law as written by Congress.

        1. 23.1.1.1

          So you’re saying that the “strong phosita” was enabled to make iPhone apps in the 80s?

          1. 23.1.1.1.1

            So I am saying what I said.

            Think larger scale law instead of individual examples (which of course may vary).

          2. 23.1.1.1.2

            anon has some ridiculous idea that because KSR made it easier to make a 103 that therefore it made it tougher for there to be a 112a, as if WD had no subjective component. anon likes to misread the law like that.

            1. 23.1.1.1.2.1

              There is NO misreading on my part, Random.

              I have no idea what you are referring to with “as if WD had no subjective component” and you quite ig nore the plain fact that making PHOSITA stronger necessarily carries over into what is NOT required to be included in an application because an applicant is not required to show what a PHOSITA already knows.

              Once again, you seem to want to only react to “anon” without taking the time to realize that I am correct.

              1. 23.1.1.1.2.1.1

                Yes, but they didn’t really make him “stronger” they just said that for the purposes of adjudging what is obvious to him we cannot set to the side things well known to him, things that are common sense, etc. The imaginary man is still the same, they just made sure courts weren’t ignoring certain aspects about him.

                1. LOL – you are afraid to admit it, but even you are starting to come around – witness your attempted expose on Judge Rich.

                2. “witness your attempted expose on Judge Rich.”

                  “expose”? Nothing about his work is hidden, his work is published for all to see, and has been for decades. Prior to his, you know, death from old age.

                3. And prior to my repeated advice to you to read his work, to you it might as well as been “hidden.”

                  The appropriate response from you 6 is “Thank you.”

              2. 23.1.1.1.2.1.2

                “anon” I am correct.

                Sure you are! After all, you used bold, caps and italics in your comment! So it must be true. And you’re a super serious person.

                an applicant is not required to show what a PHOSITA already knows

                Yay! So many “options”!

                Meanwhile the junky patents beloved by you and your cohorts keep getting hammered.

                But … “options”! Because “anon” said so! And he’s super serious and important. So don’t forget all them “options”, folks.

              3. 23.1.1.1.2.1.3

                making PHOSITA stronger necessarily carries over into what is NOT required to be included in an application because an applicant is not required to show what a PHOSITA already knows.

                If a claim is directed to ABC, and the inventor admits that AB is old, but asserts the addition of C, the inventor has to describe C (and its connection to AB) with particularity. The inventor has to do that even if ABC is, in fact, obvious. The inventor has to do it even if ABC is anticipated. It is entirely possible for an AB reference and a C reference to render ABC obvious, or for an ABC reference to render ABC antipated, and yet for the claim to ABC to be undescribed. That’s because WD has a subjective component – it’s not a question of what a PHOSITA knows, it’s a question of what a PHOSITA would believe the applicant possesses.

                Obviousness is what a person of ordinary skill can do. Description is what this person actually did. By definition, not all people qualify to the level of ‘ordinary’ and even if they did they do not necessarily employ the full range of what their skill allowed. The remedial children don’t get to escape the WD requirement just because the rest of the kids are so far ahead of them. Not everyone passes the standardized test. That’s the main thing that separates WD from enablement.

                1. Great – but this has nothing to do with my point, which still stands.

                  Unless you still think that an applicant must include everything – especially that which PHOSITA knows in every single application (of course you don’t, right?)

                2. “anon” you still think that an applicant must include everything in every single application

                  LOLOLOL

                  Lookie! “anon” is arguing with the voices in his fillings again! Fun!

      2. 23.1.2

        I think that people are also misconstruing what “enable” means.

        It does not mean to have an engineering, ready for production, blueprint.

        Be aware (and beware) of those who would want to obfuscate on that point.

        (6, you might recognize your tendency to not want to give full weight to the proper value of equivalents)

      3. 23.1.3

        6, 112 now requires that a person of ordinary skill would recognize the invention. That is the test. You nonsense is just that. Functional claiming has nothing to do with it and is a necessary part of the patent system (Lemley is fabricates nonsense in his judicial activist anti-patent rants that he publishes in the vanity press). Moreover, peripheral claiming is the problem? How so?

        Moreover, how ironic that you anti-patent nonsensical people would find it terrible that a claim reads on something 20 years later, but then claim there is no prior art for any of these new inventions.

        Plus, maybe what the person did was essentially the apps that Apple uses now. I wish the PTO would spend more time educating you people.

        The fact is that much of what people do now was invented back in the early to mid-1980’s prior to the Internet. Lisp machines notably had many of the features that Windows now does.

        Anyway, another ridiculous response from you.

        1. 23.1.3.1

          The fact is that much of what people do now was invented back in the early to mid-1980’s prior to the Internet.

          You gotta love it when the truth leaks out, even if it’s a partial truth.

          Most of the logic we see recited in computer-implemented junk these days is even older than the “mid-80s.”

          1. 23.1.3.1.1

            Great – software is not logic.

            Can you obtain a copyright on logic?

            You have something “leaking,” alright, but from you, that is not truth. It is rather the opposite thing.

        2. 23.1.3.2

          “would recognize the invention”

          ????

          What? Where are you getting that from? And what is “the invention” here? The claim? The disclosed embodiments? Something imaginary you’re making up?

          “You nonsense is just that”

          What nonsense? That our system is allowing people to claim things that blatantly were not enabled at the time of filing?

          “Moreover, peripheral claiming is the problem? How so?”

          That style of claiming makes it wayyyy easier to cover things that aren’t enabled as of the filing date around “the periphery” , so to speak, of the claim while also getting that claim to actually issue from the office. When I say the periphery I’m talking about things that are the more far flung embodiments that are covered by the language of the claim but which nobody would even think of, much less truly possess, as of the filing date, which are also often not enabled, but whose non-enablement we routinely overlook in the name of being “reasonable” in the granting of scope. For instance, an iphone app is a great example of a peripheral embodiment that was covered by a claim to some caller id device from the 80’s. Where, obviously, in the 80’s nobody would have foreseen using an app to do what this app did on a mobile phone, nor would doing so have been enabled by the computing power in phones that were mobile at the time. But, they got the claim since during examination the embodiment they disclosed was enabled as of the filing date (it used simple everyday phones and some extra devices) and, as of the time of examination all the reasonably FORESEEABLE embodiments that were covered would have been enabled, and thus under the “issue claims that are “reasonably” enabled” standard that is in place the patent issues.

          This is a failing in the enforcement of 112 enablement req.

            1. 23.1.3.2.1.1

              What are you talking about re re? That’s the way the law is “supposed” to be being applied according to the courts. Though it then turns right around and leads to an improper result in some instances.

              1. 23.1.3.2.1.1.1

                LOL- you are confusing yourself – the (obvious) problem that you want to point to (in the courts) is directly linked to you not doing your Fn job during prosecution.

                1. How’s that re re? We are barred, BY THE COURTS, from rejecting all claims under the enablement req for being in peripheral claim format that inevitably leads to embodiments that are not enabled being claimed in every other application. There’s nothing more we can do if the courts decide to block us.

                2. 6, “particularly point out.” See the cases I quoted.

                  Functional claiming of the INVENTION as opposed to the prior art, does not “particularly point out.”

                  Do not fall into the trap that 112(b) ONLY addresses clarity.

                3. Ned,

                  You must be careful there – as you “avoid the supposed trap and fall right into a different one:

                  Your views run into the “claims must be Jepson format” fallacy.

                  That is simply not the law.

                4. “That is just not true 6 – your job is to follow the law – do your Fn job.”

                  Um yes it is true. Doesn’t matter how many rejections I send out or want to send out, some “appeals guy” will inevitably follow the federal circuit.

                5. Again you are in error – the court does not bar you from rejecting all claims – they bar improper rejections.

                  There is a huge difference.

                6. “improper rejections.”

                  Improper according to them re re. Not according to me. They are the ones that are in control of that situation. Talk to them if you want it to be rectified.

                7. Gee 6, for all of your posturing about me having some type of illness, it turns out that YOU want the law to revolve about you….

                  That is just not how it works, friend.

        3. 23.1.3.3

          “but then claim there is no prior art for any of these new inventions.”

          Remember, it is the office that MM routinely accuses of finding there to be no prior art for when it is a “do in on a computer/do it in an app” claim. I don’t generally say there is always no prior art. Usually, like in this case, someone invented a not-automated (or not-computer automated) system to do the same thing the app/program does.

      4. 23.1.4

        One cannot claim an ap. One can claim a method. One could have claimed a method in the 80’s which is infringed by an ap running on an Iphone.

        Why do you think this is odd or problematic? That is the purpose of patents. They protect inventions made today from being copied in the future.

        1. 23.1.4.1

          “Why do you think this is odd or problematic?”

          In this case it was a device claim iirc. And it was problematic because they blatantly did nothing to enable that embodiment, and further it was not enabled as of the time of filing. All the “after-arising” covered tech should be reasonably enabled at time of filing if our enablement req is to have any teeth.

          1. 23.1.4.1.1

            LOL – tell me how you feel about pharma patents and the FACT that many many many claimed items do NOT have their utility at time of filling – based on the FACT of the fallout rate of FDA mandated clinical trials.

            Are you in for making Big Pharma FIRST have and possess actual utility prior to filing?

          2. 23.1.4.1.2

            “All the ‘after-arising’ covered tech should be reasonably enabled at time of filing…”

            I don’t think I follow this – do you allow any room for claims to legitimately cover subsequent improvements? (I thought it was black letter law that this is at least possible.)

            1. 23.1.4.1.2.1

              …and don’t even get me started on the “proper” way to read a very certain comment in the KSR decision – which also seeks to GIVE more power to things already patented (which can only be read as giving MORE teeth to the doctrine of equivalents, which 6 already refuses to abide by properly)

            2. 23.1.4.1.2.2

              “do you allow any room for claims to legitimately cover subsequent improvements?”

              I do, because the courts do. But that is a big ol grey area. How far is too far to give people? We have to do it case by case because the courts made a big huge mess of things allowing for peripheral claiming.

                1. “Your job 6 is to follow the law.”

                  According to the way the courts interpretate upon it or how I personally interpretate upon it? I’m certainly not going to take a stand against the courts, the entire PTO, and the entirety of the patent system and the federal gov who are all on board with peripheral claiming.

                2. Anon it might be difficult for you to understand, since you don’t work in gubmit and aren’t a lawlyer, but every gubmit worker that has to use the law from po po up to the president has to intpretate upon the law on a day to day basis.

                3. You are confusing “applying the law” with “interpreting the law.”

                  Maybe you need to go back to fourth grade civics class to learn again the distinction…

                4. Now you are confusing “knowing” and “interpreting.”

                  Things are known without being interpreted….

                  You are using terms of art incorrectly 6 – time for you to just stop.

                5. “anon” Things are known without being interpreted….

                  Deep stuff, folks!

                  He’s a very serious person!

              1. 23.1.4.1.2.2.2

                “I do, because the courts do. But that is a big ol grey area. How far is too far to give people?”

                Well, some cases are easier than others…like when the original invention is “still there” but just has stuff added, or is used as part of something bigger (unless “consisting of” was used in the transitional phrase, perhaps), or is put to a new use.

                I suppose it could get trickier when certain elements themselves are *replaced* by things that didn’t exist at the time, but nevertheless still fall within the literal claim language. (This may be where it’s best to avoid MPF language, at least given the current caselaw interpreting that.)

                At the very least, it only seems fair that the whole “gisting” thing should go both ways. If the “essence” of my invention is to insert something that does X between parts A and B, and there are 100 things that do X as of my filing date, the fact that somebody invents the 101st and inserts it between parts A and B shouldn’t mean my patent doesn’t cover it.

                1. Ken – again that passage from KSR has ONLY been read in an anti-patent sense.

                  I see you are noting that “one-way” treatment and (legitimately) questioning it.

                  The problem that you will run into on this blog is that there will be NO true dialogue with the anti’s who will only run with their script and not engage in any such fault of a “one-way” reading.

                  This “ecosystem” does not seem geared to promoting actual discussion of such nature.

                2. “Well, some cases are easier than others…like when the original invention is “still there” but just has stuff added, or is used as part of something bigger (unless “consisting of” was used in the transitional phrase, perhaps), or is put to a new use.”

                  Absolutely agreed.

                  “I suppose it could get trickier when certain elements themselves are *replaced* by things that didn’t exist at the time, ”

                  Or when all elements are replaced, and yet still the newly created thing infringes.

                  “At the very least, it only seems fair that the whole “gisting” thing should go both ways. If the “essence” of my invention is to insert something that does X between parts A and B, and there are 100 things that do X as of my filing date, the fact that somebody invents the 101st and inserts it between parts A and B shouldn’t mean my patent doesn’t cover it.”

                  Perhaps.

    2. 23.2

      So you are limiting applicant to picture claims?

      Picture claims are too easy to work around. No one will apply for patents and progress wont be promoted.

      1. 23.2.2

        Picture claims are a
        – get ready –

        optional

        claim format.

        Nothing wrong with choosing that option when that option is the best move for the client.

        I do “get” your point though, Les: anyone trying to force one optional claim format to be something other than an option is a miscreant.

    3. 23.3

      What a joke this country has become.

      Are you ready to vote for Hillary or Bernie, or are you going to switch parties and vote for Trump?

      1. 23.3.1

        Hillary is more of the same – surely you are aware of that and aware of who her backers are…

      2. 23.3.2

        We covered this many times and I don’t mind telling you my favorite candidate is Bernie. You know, MM, I have an extensive practice of prosecution work and see nothing but engineers and scientist working very hard and the patent system integrated into their work and an essential part of the process of innovation.

        1. 23.3.2.2

          “You know, MM, I have an extensive practice of prosecution work”

          And yet, as a sworn loyal attorney, loyal to the courts, he constantly berates the judges that sit on those very courts. Shameful brosefus.

          1. 23.3.2.2.1

            loyal to the courts, he constantly berates the judges

            I invite you to pull out ANY state oath that an attorney may take, 6.

            The allegiance first and foremost is to the Constitution.

            In fact, we have a duty to berate the courts when they step out of line.

            1. 23.3.2.2.1.1

              “The allegiance first and foremost is to the Constitution.”

              So what? That means attorneys (not you) have to fabricate a “constitutional” issue so they can sit around and berate courts? I don’t even remember NWPA having a constitutional issue with the courts. That’s just you making up the “constitutional” issue.

              “In fact, we have a duty to berate the courts when they step out of line.”

              I doubt very much that spewing nonsense on the interbuts to put down judges publicly is how that “duty” if it exists, is to be fulfilled. Though I see no such duty anywhere set forth officially.

              1. 23.3.2.2.1.1.1

                So what?

                So your argument just does not work.

                (and pssst – to your comment of “ That’s just you making up the “constitutional” issue.” – you need to pay attention to what the Constitutional issues are – they have been clearly denoted, and (again) just because you do not grasp them does not mean that they are not there).

                I doubt very much that…

                If you “don’t see the “interbuts” wortking, why are YOU getting all in a lather about what someone is doing in the first place?

                Though I see no such duty anywhere set forth officially.

                You need to unclench your eyes.

  13. 21

    Antoinette Konski gets it:

    link to personalizedmedicinebulletin.com

    [T]he court’s opinion does provide several useful tips for determining if a diagnostic method claim could pass the Alice two-part test. The court is more likely to find a method patent eligible if the claim recites the use of a “new” technology, not merely the application of a known technique to a newly discovered natural phenomenon. The court also suggests that if the method requires the modification or creation of a new naturally-derived product, the claim also may be patent eligible.

    Nobody could have predicted!

  14. 20

    Charles Bieneman gets it:

    link to swipreport.com

    [C]ases such as Genetic Technologies, while providing little specific guidance, do serve as a strong guidepost illustrating the susceptibility of broad and seemingly abstract claims under the patent-eligibility rubric of Mayo and Alice. And if you are looking for specific practice tips, this case illustrates the importance of prior art in the patent-eligibility analysis, and, if you are patent applicant or owner, the importance of distinctions from the prior art being something that cannot be characterized as a “mental step.”….

    Some district courts have recently found patent-eligibility of claims that were directed to data processing, i.e., analyzing and/or providing information. Without saying that these decisions are outliers, one can point to Genetic Technologies has an exemplar of the trend to find patent-ineligibility of claims whose only purported novelty lies in analyzing data. One has to doubt that Genetic Technologies would have come out differently in the data analysis been in a computer as opposed to “mental steps.”

    Mental step = logic

    The path forward and the final outcome for software patents is plain as paint. The only question is how long will it take for all the air to flow out of the balloon.

    1. 20.1

      Charles Bieneman also stressed ” the importance of prior art in the patent-eligibility analysis”

        1. 20.1.1.1

          I’m not sure what Fish Sticks meant, but I’d say that makes everything else Mr. Bieneman suggests suspect.

          1. 20.1.1.1.1

            Interesting background for Mr. Bieneman:

            Charles Bieneman is a member of the firm. Prior to forming Bejin Bieneman PLC, Charlie was a partner in a Michigan intellectual property firm. Previously, he was a patent examiner with the U.S. Patent and Trademark office, where he examined claimed inventions in the areas of computer software, databases, and the World Wide Web. He also held management positions with two computer software companies and has significant real world experience as a software developer, consultant, and project manager. Charlie gained experience as an attorney with the U.S. Securities and Exchange Commission and the Washington, D.C. office of a national law firm. Charlie has served as an adjunct professor of Computer Law at the Thomas M. Cooley Law School.
            Charlie was 2011-2012 Chair of the State Bar of Michigan Information Technology Law Section.

    2. 20.2

      As far as Mr. Bieneman “getting it” – two days after Malcolm’s linked article, Mr. Bieneman reports:

      Some people – including many patent examiners – will tell you that a claim cannot be patent-eligible where it recites monitoring and analyzing, i.e., merely “processing,” data without any physical structure. Judge Robinson disagreed. Whether she was right or wrong, this decision is yet another example of today’s highly subjective Section 101 jurisprudence.”

      Wait – that’s opposite of what you been preaching, Malcolm.

      Does Mr. Bieneman now “all of a sudden” NOT “get it?” Or is this just classic Malcolm picking out only those things that he finds “convenient?”

      1. 20.2.1

        Does Mr. Bieneman now “all of a sudden” NOT “get it?”

        As if that’s never happened before!

        Keep the laughs coming, “anon.” You’re a very serious person!

        As for this:

        Judge Robinson disagreed. Whether she was right or wrong, this decision is yet another example of today’s highly subjective Section 101 jurisprudence.”

        it’s just the usual hooey. “Whether she was right or wrong”? What?

        Please do keep me updated on her “counter-revolution”!

        LOLOLOLOLOL

        The chances of rolling Alice and Mayo back are exactly zero. It’s only going to get worse for you and your grifting ign0ramus cohorts.

    3. 20.3

      Whatever his end views on software eligibility, on another related post, Mr. Bienaman states:

      Editorial comment: had I realized, four years ago, how much of this blog would be devoted to 35 U.S.C. § 101 and patent-eligibility, I might have considered calling it the “Nose of Wax” blog. See White v. Dunbar, 119 US 47, 51 (1886); Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., 431 F. 2d 539, 546 (5th Cir. 1970). In reading my discussion of the present court’s analysis, one might sense a certain frustration, and even pejorative tone. And while I do think that, whatever one thinks of Alice, the court misapplied its teachings here (most blatantly, saying a claim is not directed to an abstract idea because it is broader than the abstract idea seems just crazy). But that is not the source of the frustration. Instead, the difficulty lies with the loose definition of the patent-eligibility test itself, and the sense that, as time goes on, the test is becoming less, rather that more clear.

  15. 19

    Look—scope of the enablement is the gold standard. Dyk is a joke and should be removed.

  16. 18

    He’s just referring to the difference between what the invention is compared to what the claimed invention is. And there is a difference. And the actual invention is near always clearly set forth in the spec.

      1. 18.1.1

        What’s particularly “funny” about this is that 6 is the same person who used to claim that he did not need to even bother reading the specification and was fully justified in just doing a claim key word search.

      2. 18.1.2

        Lulz, the only one “confused” is you brosefus. I see what a cluster f you and yours have made around a word, and I laugh at you for not being able to be real men.

        1. 18.1.2.2

          Right. Never had a WD rejection that I couldn’t smack down with my usual form paragraph response to that weak a$$ sh!t from examiners, but I’m the one who’s confused.

          Again, you funny. But unintentionally.

          1. 18.1.2.2.1

            “Right. Never had a WD rejection that I couldn’t smack down with my usual form paragraph response to that weak a$$ sh!t from examiners, but I’m the one who’s confused.”

            If that is so then you already know that the invention is what is in your spec, you just choose to not use “the word” because your forebears managed to create a cluster f around it and now all of you are scared shtless.

              1. 18.1.2.2.1.1.1

                Read judge rich’s summary of how it happened in his old school paper from the 60’s. It’s quite a tale. From best I can tell from his story, which seems all too plausible, the patent system started off innocently enough with people having invented things (inventions), in real life, and wanting legal protection therefor from other people making practically the same thing. All while there was the statute o monopolies etc. and eventually that morphed into them only wanting to protect inventions. The American revolution happened and we started our own gov up, putting “Inventors” in the constitution. Of course the enforcement was a sht show compared to our modern system with judges having to work out what was the “invention” from the prior art literally at trial since there were no claims. And that’s even after Tommy J or whoever did an examination. Over the years the judges started to develop a “requirement for/of invention” for patents to be valid. This is where the sht show began in earnest. Because different judges all had different opinions as to what characterized the requirement of invention, which obviously boils down to what you the judge more, or less subjectively, want to call an “invention”. And it also somewhat depends on what the applicant is trying to claim (though not using what we now call an actual claim in the patent document) is his invention from that which he described in his patent (that remember, doesn’t have claims inside) being accepted by the court as an invention. Eventually the practice of actually putting claims in the patent catches on. However, in the 40’s the requirement for invention is still alive and well, and eventually the flash of genius test gets floated by some random judge and “sticks” more or less such that judges all over started looking for the flash of genius to be convinced the requirement for invention was satisfied. Rich later claims in the 60’s that in the 40’s and 50’s the language being used to describe things had not developed very well and that this was causing a huge problem because of conflations of meaning. And so, when he and his bro(s) were drafting up the 1952 act and they, whooopsie, titled it something involving “invention” even though the statute was worded the way it is today and he would later explain that the act was not well named as they were trying to get rid of “invention” from the criteria for a valid patent (though they didn’t even have the capability to think at that time that this was what they were doing, according to him, because their language was literally not well developed enough for them to think in that manner). In the immediately ensuing years however patent attorneys convinced courts that the new section 103 didn’t change anything and was just a “mere codification” of the previous “requirement for invention”. Thus in 1964 Rich wrote a paper and started blabbering about how big of a change the act really was, and how, in 1952 the people that drafted it didn’t even realize what a big deal and a big change it was. He says this is because language had not yet evolved enough in 1952 for people (himself included) to literally understand this had happened and the magnitude of what happened. But he says that the “requirement of invention” is now gone thanks to 103, thus freeing the patent system from what he saw as a nebulous word “invention” that had been plaguing it because people were using that word as the criteria for a valid patent, instead of just using “invention” to simply describe those three things I listed above (things found out, discovered, etc.). Eventually, since the requirement of invention was dispelled through judge rich’s work on the bench, and through patent attorneys getting on board, eventually people started getting dinged for having said the word “invention” in their application at all because the judges would rightly read the document to be describing “the invention” when the document literally says it is. In any event, as the years went by, obviously the requirement to reduce to practice was excised back in the day, and the cult of the claim grew, and grew, so much so that now they began to believe that whatever they pooped out on the page in a claim was “the invention”. And that’s where we are today. People scared shtless because of the massive sht show that happened back in the day and speaking like crazy people as a result.

                And to be clear anon, this “wrong speak” so to speak has real life consequences that affect examination to this day. When me as a young examiner, and many many other examiners are taught that the “claim is the invention”, and immediately also told to try to “understand the invention” before doing the search, then blatantly we will simply think we need to understand the claim only, as opposed to the whole disclosure. Because hey, the claim is the invention. Of course, if the claim is not the invention, and the whole disclosure is the invention, then you have to understand the whole disclosure before commencing the search and trying to search for the whole disclosure (like you profess to want). You will be glad to know though that the PTO has finally gotten away from considering the claim to be the invention in its training depts and thus now teaches people to understand the spec as a whole before doing the search. No thanks to the cult of the claim i di ots.

                1. 900+ wall of words – with you attempting to teach me what Judge Rich taught – that’s pretty rich (pardon the pun).

                  Seeing as I am the one that has often directed you to the writings of Rich, you might start by thanking me for doing so.

                  Then the (very) least that you could do here 6, is admit that I was in fact right when we used to tussle about what you were required to exam and you swore up and down (much as you do yet today on other matters) that there was no way that you were supposed to do anything except claim key word search (something about that’s what your SPE said and that was that).

                  Next up, you are STILL getting things wrong here about roles of the claims and the specification, not to mention the history involved (the excising the reduction to practice bit is pure fallacy on your part).

                  (you need to let go of that 0bsession of yours with “cult of the claim”)

                2. “Then the (very) least that you could do here 6, is admit that I was in fact right when we used to tussle about what you were required to exam and you swore up and down (much as you do yet today on other matters) that there was no way that you were supposed to do anything except claim key word search (something about that’s what your SPE said and that was that).”

                  Yes anon, I already said that many years ago that such may technically be so, though I noted that even if that be the case, it doesn’t matter all that much in practical reality because the disclosures are too large to practically speaking “fully” examine the entire spec way you would like, in most areas these days. And I also more recently informed you that doing so would encourage/cause so much outright waste that it would be a gigantic waste of resources because so much time would be spent searching for things that would never make it into the claims. Thus I do feel that the way the office teaches examiners to try to examine everything in the specification that could be reasonably expected to make its way into the claims is more or less a pretty good balance between horrendous waste of valuable resources and technically going through every last detail (and worse, possible combination of every last detail with every other last detail).

                  And yes, sorry about the wall of text, it happened initially because I was in a hurry.

                3. That’s a downright p@thetic “You were right.”

                  Technically so…?
                  even if that be the case…?

                  Try the simple version:

                  “anon, you were right.”

                  ‘Nuff said.

                4. 6, there were claims in patents even from the 1600’s. There was just no examination system ’til 1836.

                  Regarding the level of invention, Lord Coke in 1610 was not to keen on repatenting the coat because of a new button. Get it, if the invention is in the button, point that out.

                  That is what we are missing from today’s examination where we let patent attorneys reclaim the car with an improvement in a carburetor. Now why would they do that?

                  Money.

                  The car sells for thousands. The carb for pennies.

                5. Ned,

                  Contrary (quite contrary) to your views, this graph showing the decline of Jepson claims coincides with innovation accelerating.

                  link to patentlyo.com

                  How unfortunate for you that reality just does not jibe with your desired ends.

                6. The chart is even more “funny” when Jepson claims are viewed as a percentage of all allowed claims…

                7. “6, there were claims in patents even from the 1600’s.”

                  Yes ned, in some there were, but not modern claims.

                  Putting: “I claim the device as substantially disclosed herein” down as a “claim” isn’t exactly what I refer to as a claim in the modern parlance.

            1. 18.1.2.2.1.2

              Lordy you are clueless.

              Nobody, I repeat, nobody, knows what “the invention” is until the application is written, searched, and examined. That’s because “the invention” is whatever is particularly pointed out and distinctly claimed, supported and enabled by the description, and novel and non-obvious over the prior art. I’ve written hundreds of applications and had plenty of inventors tell me what “the invention” is. And sometimes they’re close. Other times they’re so far off base it’s laughable. What claims eventually get allowed are “the invention.”

              Scared? You’re the one been on this site for 10 years now telling all of us practitioners how you could do our jobs so much better than us. Yet you’re still hiding under your rock at the Patent Office. Why’s that? Because you don’t have the b#lls to come out here and actually try it. Because you know that for all the bluster and nonsense you’ve been polluting this site with for years, you really don’t have a clue how to do it.

              If you ever grow a pair and crawl out from your hiding place, let us know. Until then, k!ss my a$$.

              1. 18.1.2.2.1.2.1

                “Nobody, I repeat, nobody, knows what “the invention” is ”

                Tell it to judge rich’s ghost. The invention is just what he was saying it is. There are no if, and’s, buts, maybes or nu uh’s about it. You make/design a new engine(s), it has a hundred parts. The invention is the engine with all hundred parts. The claimed invention might be any number of thousands of different things. The same goes for all inventions. Period. The end. Just accept the language ya cul tist.

                “Because you don’t have the b#lls to come out here and actually try it”

                Actually not, it is that it sounds like an even shi tti er job than the one I have. Tell me, you were an examiner for awhile, do you even recommend it to people? What are the only reasons to go out and be a patent attorney instead?

                This ain’t even about “how to do your job”. You’re all the time thinking that this has to do with your job. It doesn’t. At all. Your job just happens to envelope this issue as a tangential issue. You can on and on about how you don’t want to use that word in your application all you like, but that has no bearing on whether the word actually means something else.

                ” I’ve written hundreds of applications and had plenty of inventors tell me what “the invention” is.”

                That’s their initial impression. And they’re using the word slightly wrong. Though just because a layman uses the word slightly differently than is completely proper on occasion doesn’t mean anything. Simply inform them that the whole kit kat and kaboodle is the “invention”.

                1. I see, anon. Invention is defined to mean: invention.

                  Let us construe, together, YYttahx, a term we might find in a patent claim. I say, YYttahx has a well understood meaning, defined in the spec. There the spec defines YYttahx to mean, drumroll please:

                  YYthahx.

                  Are you sure you know what a YYthahx is?

                  Now I say, all YYthahx’s that are new or improved, and useful, are patentable subject matter, subject to novelty considerations. Do we know any more?

                  Anyone who has actively litigated, anon, knows that one cannot define a term by using the term itself.

                2. You have a (very good) point Ned.

                  Like “technological”…

                  That being said, the definition does have its immediate impact that the word in use for the rest of the law is meant to include discoveries.

                  You further do not comment on the point made by AAA JJ (at least, comment in an inte11ectually honest manner).

                  You further still do not comment on the focus and the attempt by you to clench your eyes tight to that focus and want some other thing to be the focus.

                3. Well I’m sure anon will surely set us all straight that Judge Rich was explicitly lying when he said exactly what I just put down.

                4. “Just accept the language…”

                  I have. It’s written in the law what “the invention” is. It’s you, and not me, that needs to accept that.

                  “Actually not, it is that it sounds like an even shi tti er job than the one I have.”

                  It’s very rewarding. Working with clients to protect what technology they’ve worked hard to develop is challenging. A lot more challenging than “gittin’ counts.”

                  “Tell me, you were an examiner for awhile, do you even recommend it to people?”

                  If you’re the kind of person who wants to make a nice living doing the same thing day after day, and having no responsibility, accountability, or liability for anything you do, then patent examining is a great job. I’d had my fill of it. I wasn’t learning anything new. I was bored. And worried that the lack of a challenge was making my work product suffer. So I left.

                  “What are the only reasons to go out and be a patent attorney instead?”

                  It’s called practicing law. And it’s an opportunity to learn and do something new. The range of issues and problems I’ve faced, and solved, since leaving are much greater than what I would have faced if I stayed just “gittin’ counts.” Working with really smart people that are trying to solve problems, and run a business, is a lot more interesting and invigorating than “gittin’ counts” too. If you’re happy doing that, more power to you.

                  “That’s their initial impression. And they’re using the word slightly wrong. Though just because a layman uses the word slightly differently than is completely proper on occasion doesn’t mean anything.”

                  Inventors use the word “invention” as they understand it. For me, a practitioner, and you, an examiner, the word “invention” means what the laws says it means. Again, it’s you, not me, that needs to accept that.

                5. AAA JJ, there is no definition of “invention” per se. 101 does say that whoever invents or discovers … may obtain a patent therefor …

                  I think an invention has at least to do with creating something new, not previously existing, or can it be simply not known to to the inventor?

                  It has to be by a person — as opposed to a machine.

                  And it would have to be something not natural, as in creating a baby. Agree?

                  Is there anything else?

                6. Good gravy.

                  35 USC 112(b) tells us that applicants particularly point out and distinctly claim the subject matter they regard as their invention. What they particularly point out and distinctly claim is examined. If it is described in the application in a manner that would allow one of ordinary skill in the art to make and use it without undue experimentation, and it is novel and non-obvious over the prior art, and eligible subject matter, that’s “the invention.”

                  Do you really not get that? Do you really think there is some “invention” that exists separate and apart from what the applicant(s) claims?

                7. And good gracious, Ned, for Dyk to just say, “Well, I don’t care what the law says, I’m going to look at the application and figure out for myself what the patentee invented” is utter nonsense. What does he know that allows him to get away with such arrogance?

                8. AAA JJ, just because a claim specifies what one regards as an invention, that does not mean that what is claimed is.

                  Regarding Dyk, the claimed invention is construed in the context of the patent and prosecution history. Dyk is entitled to look at the whole, just as judges do when construing claims, and just as we do as patent attorneys when advising our clients on validity and infringement.

                9. Ned continues to disregard that which is simply inconvenient for him.

                  35 USC 100(a): The term “invention” means invention or discovery.

                  So you have that “per se“…

                  (But Ned has often avoided conversations around 35 USC 100).

                  Also, Ned does not want to give 112 its proper weight (and has butchered 112 in a number of different ways over the years).

                  Ned also will not address the untoward license that Dyk takes (and as I have pointed out).

                  As far as Contrusing anything – the thing being construed is the focal point, and yet, Ned wants to clench tight his eyes to that very focal point – as if those things that are not the focal point are (somehow) the “real invention.”

                  There is no doubt that Ned does this for his own agendas.

                10. Ned states “And it would have to be something not natural, as in creating a baby.

                  What if that were a baby seed (as in a plant seed)…

                  😉

                11. “AAA JJ, just because a claim specifies what one regards as an invention, that does not mean that what is claimed is.”

                  What are you talking about? If the applicant particularly points out and distinctly claims some subject matter, and that subject matter is described in the applicant’s application in such a manner that one of ordinary skill in the art, having read the application, could understand that applicant regarded that subject matter as applicant’s “invention,” and could make and use that subject matter without undue experimentation, and that subject matter is determined to be novel and non-obvious over the prior art, then that subject matter is “the invention.”

                  What do you not understand about that?

                  “Regarding Dyk, the claimed invention is construed in the context of the patent and prosecution history. Dyk is entitled to look at the whole, just as judges do when construing claims, and just as we do as patent attorneys when advising our clients on validity and infringement.”

                  Once again, what are you talking about? For J. Dyk to say that he doesn’t care what the claims, which are the invention, say and is going to look at the application to determine, for himself, what “the invention” is outrageous. He’s not following the law. Aren’t you the one on this site constantly bemoaning judges who refuse to follow the law? Why are you giving J. Dyk a pass? Because you think he’s “smart”? Because he went to Harvard? Are you kidding me?

                  “I see, anon. Invention is defined to mean: invention.”

                  No. The term “invention” is defined, by the law (see, e.g. 35 USC 112(b)) to be the subject matter that applicants particularly point out and distinctly claim that is supported and enabled by their application and is novel and non-obvious over the prior art, and that is eligible subject matter.

                  What are you not getting?

                  I can only assume that you’re being deliberately obtuse.

                12. “It’s written in the law what “the invention” is. It’s you, and not me, that needs to accept that.”

                  Nah bro, as judge rich has explicitly set forth about what he and his bros wrote in the law they were simply talking about what the law will regard as a patentably claimed invention, as in, it was a “policy for what the government will recognize as invention” where he was using the old school term “invention” in a way he did not yet understand would be our modern day “patentably claimed invention”. And he explicitly notes the difference. That is not, as he explicitly makes clear, “the invention”. Indeed, they just got through changing the wording in the actual statute in the AIA to “claimed invention”. But you appear to be too deeply in the cult at present. We’ll reconvene in 5 years or so. Perhaps someone will have talked sense to you irl by then.

                  “It’s very rewarding”

                  Well that’s a more resounding endorsement than many folks I’ve talked to give.

                  “A lot more challenging than “gittin’ counts.”

                  Mmm, yeah not really looking for more of a challenge. More rewarding/fulfilling sure thing. Challenge meh. Challenge doesn’t put more women on my arm, garner respect, or make home life any better. Indeed, it likely makes it worse.

                  “I wasn’t learning anything new.”

                  I learn new things about the bureaucracy every day. There’s a whole world of madness to discover! And I have to say, I’m kept very well abreast of all emerging tech in my area. I can’t imagine how you weren’t unless you were in some very traditional art like JD was: toiletpaper holders.

                  “35 USC 112(b) tells us that applicants particularly point out and distinctly claim the subject matter they regard as their invention.”

                  And what they regard as their invention is the “claimed invention”. Hooray for words!

                  “What does he know that allows him to get away with such arrogance?”

                  Dyk knows words. That’s what he knows.

                  “What do you not understand about that?”

                  Why you will not extract yourself from this cultist view. That’s what Ned doesn’t understand about it.

                  “For J. Dyk to say that he doesn’t care what the claims, which are the invention, say and is going to look at the application to determine, for himself, what “the invention” is outrageous. He’s not following the law.”

                  Dyk looks to the spec for the invention, and then looks to the claims for the claimed invention (aka the same thing you’re referring to as the “invention”). Dyk is doin it correctly.

                  “I can only assume that you’re being deliberately obtuse.”

                  Which is what we “assume” (or rather, “observe”) about people in your cult.

  17. 17

    “I’ve long thought that Section 112(a) doesn’t do an adequate job, by itself, of limiting claim breadth. ” Tell that to the Eli Lilly/Ariad graveyard of patents.

    1. 17.1

      Thanks sister anon, but I am not sure the possession discussion is in play here.

      (Although it could be)

      1. 17.1.1

        I mean, it’s sort of a two-for-one sometimes: if you don’t enable it, you probably don’t have written description; if you don’t have written description, you probably can’t enable it; (because enablement says POSITA look at document, can we get X; written description says POSITA says X within document such that Y).*

        But, I believe you meant the discussion was focused on enablement (e.g., Morse patents) and not the written description requirement as the Eli Lilly patents was struck down under?

        * Obvious exception: completely enabled (by POSITA) but not at all included in app as filed, but somehow claimed, e.g. well-known variation that couples with invention but not included in app but claimed, would not be supported by written description but would have been enabled by POSITA (using external information). I’m sure there are others.

  18. 16

    I think most judges would actually want to “construe” claims after knowing what the validity and infringement issues are. I think that is what Dyk really means.

    1. 16.1

      The bottom line is that Dyk is unqualified to sit on the Fed. Cir. We should disband the Fed. Cir. and try to re-build it with real judges. Dyk is a joke. Ignorance and arrogance are a toxic mix.

  19. 15

    Scope of enablement. What gets me is that this arrogant ignorant judge just pushes away patent law and science for his own psychotically created nonsense. What a joke this country has become.

  20. 14

    Night, Dyk is actually very smart and very well educated. He is one of the judges on that court that I respect and that could have been appointed to any Circuit Court in the US.

    1. 14.1

      But I agree the Federal Circuit monopoly on Patent Law needs to be removed because that Court behaves like a court captured by the PTO and by the patent bar.

    2. 14.2

      Ned, you comment is meaningless. Dyk has no science training. No real world experience. Is arrogant. Yeah, I get that he inherently is smart and if he had different training he might be a decent person. Stalin was a smart person.

      1. 14.2.1

        Night, guys like Stalin are usually pretty smart.

        Learned Hand was the best non Supreme Court judge in history in patent law. Harvard.

        Story, the absolute best judge on patent law in history and one of the best Justices in history to boot, was not technically educated. Graduated from Harvard.
        link to en.wikipedia.org

        Dyk: Harvard, and it shows.

        1. 14.2.1.1

          Your logic is faulty Ned.

          Just being smart alone does not mean the person will be smart when it comes to patents.

          Their is far too much hubris for you to just gloss over with some sort of “but-he’s-smart” remark and then clench tight your eyes when that “smart” person shows a lack of understanding of patent law.

          1. 14.2.1.1.1

            “anon” Just being smart alone does not mean the person will be smart when it comes to patents.

            On the other hand, being a complete ign0ramus about patents and pretending that you were born yesterday is a great way to win friends over at “anon” and NW’s favorite echo chambers.

            1. 14.2.1.1.1.1

              Not sure what your point is Malcolm. Another post from you with mindless ad hominem.

              (and your odd 0besssion)

    1. 13.1

      I read your comment.

      I don’t use the word “invention” when I write applications. The “invention” is whatever I particularly point out and distinctly claim that is enabled and supported by the specification and novel and non-obvious over the prior art.

      Trying to “figure out” the “gist” of the “invention” is what examiners, and dopey Federal Circuit judges, do. Not what competent practitioners do.

      1. 13.1.1

        “The “invention” is whatever I particularly point out and distinctly claim that is enabled and supported by the specification and novel and non-obvious over the prior art.”

        Nah bro, that’s just the claimed invention.

        1. 13.1.1.1

          Whatever is claimed is the invention. Has been since 1952. You might want to catch up with the law. You’re only like 70+ years behind.

          1. 13.1.1.1.1

            That’s just 6’s segue into his old mantra about “the cult of the claim.”

            The Merry Go Round starts up again…

          2. 13.1.1.1.2

            “Whatever is claimed is the invention.”

            You need to read Judge Rich’s OLD written works. He knew back in the 50’s and even 60’s that what was disclosed was the invention, not what was claimed. The whole “the claim is the invention” is a modern fallacy that took root sometime after the 50’s brosefus. And just because you personally, and a gaggle of your bros don’t use words right doesn’t mean that other people are obliged to use your wrong words. They’re free to use different words to say the same thing, or refer to different things by the same words.

            People in the old days had not yet dreamed up the mind control which you have been subjected to, and bow to even now.

            See Judge Rich’s definition, circa 1964 “All an invention is, however, is something which has been found out, or devised, or discovered” (note judge rich, in that day, didn’t even bother to say “made/created” and was using the old school language). Clearly he didn’t not think it was whatever some random f face managed to scribble down as “the claim”. He goes on to note “Hundreds of “real” or “true” inventions, all resulting from “inventive acts” and the exercise of “inventive facilities” are held unpatentable for lack of novelty”. And then he prattles on about how the old use of language was the worst thing of the evars and how the cluster f around the use of the word was taking shape at that time. He notes a couple of big reasons, centuries of proper use of the word(s), and his and a few other people’s (including congress) having done a pis s poor job of legislating (huge surprise, but at least he cops to it).

            See also Walker on Patents, the definitive tome back in the day “invention is the result of an inventive act” (note not loldaclaimlolololol)

            Back in the day, men were men, not the pansies patent attorneys insist on being these days. Back in the day, they didn’t even have claims, and yet, bizarrely inventions still existed. And thus now we’re left with a bizarre mis-mash of people suffering from mind control (like yourself), and clear thinking people that know how to speak properly.

            1. 13.1.1.1.2.1

              6 takes a page from Malcolm and accuses other’s of not being able to think and to be under “mind control”…

              How is that Kool aid, 6?

                1. That automated software though does feed off of a list of George Carlin like “no-no” words that Prof. Crouch DOES set.

      2. 13.1.2

        “Not what competent practitioners do.”

        You better do it if you want to have any solid WD basis for any amendment you ever make.

      3. 13.1.3

        Agree. I stopped using the term “invention” years ago. Instead, I try to ensure the application is technically correct, with good explanations of how things work, and has a good amount of definitions for anything that I think could use them (which is usually a lot, even for those terms that are “known”).

        1. 13.1.3.1

          Anybody who is still writing “the invention” in their applications is doing it wrong.

  21. 12

    No intellectual honest person can say that scope of enablement isn’t the right test.

    Just think about it:

    (a) Should something that is enabled by your patent be outside what you can claim? No way. Makes no sense. If you should be entitled to the breadth of what you disclosed and enabled.

    (b) Should you be allowed to claim something outside the scope of enablement? No. Obviously not as you didn’t enable it.

    And, it is a simple matter as discussed in LizardTech to invalidate claims if an invention is a non-obvious invention that falls within the scope of your claims.

    That is all that is needed and it is simple to enforce. Dyk’s nonsense is another judge invented nonsense where he wants to be able write down some psychotic nonsense and invalidate claims. Shameful.

    1. 12.1

      (a) Should something that is enabled by your patent be outside what you can claim? No way. Makes no sense. If you should be entitled to the breadth of what you disclosed and enabled.

      Of course it makes sense. First, if someone else invents the flashlight, and you later invent the widget, you shouldn’t be able to claim “shining the flashlight on my widget” as that impinges upon what the flashlight person invented, even though the system or method was unenabled prior to your enablement of the widget. Second, the fact that you enable a genus does not mean you have posited each point within the genus, some of which may be better than your own. Person 1 might enable combining A with B-Z, but if Person 2 figures out that AJ is way better than all of the other ones then Person 2 has an invention that Person 1 didn’t have.

      And, it is a simple matter as discussed in LizardTech to invalidate claims if an invention is a non-obvious invention that falls within the scope of your claims.

      Lizardtech is not an enablement case. There’s no evidence that multiple types of seamless and non-seamless DWT weren’t enabled at the time of filing, there was only evidence that Lizardtech did not posit anything other than his single embodiment of seamless DWT.

      1. 12.1.1

        You are trying WAY too hard with your flashlight example.

        What exactly was not “enabled”…?

        1. 12.1.1.1

          You are trying WAY too hard with your flashlight example.

          Not at all. RG’s flashlight example is directly on point with this case and with Ariosa. Moreover, it shows why NW’s ridiculous “enablement is all you need” ranting is just that: ridiculous.

          I wonder why you find this straightforward stuff so difficult to follow? Just kidding – LOL – I don’t wonder about that all!

          1. 12.1.1.1.1

            Except not – I noticed you did not bother even trying to answer the question about what is stopping the flashlight from shining…

            Oops.

        2. 12.1.1.2

          There was no enabled widget before, therefore you could not complete a method of shining a flashlight on a widget, nor could you have a system that contained both a flashlight and the widget.

          1. 12.1.1.2.1

            The enablement does not depend on the widget…

            The enablement depends on the flashlight.

            Having a system later with the widget does not matter to the enablement of the flashlight.

            1. 12.1.1.2.1.1

              Having a system later with the widget does not matter to the enablement of the flashlight.

              Oh, I didn’t know you only had to enable part of the claim to enable the entire claim. This will do wonders for my system of room + lightsaber.

              1. 12.1.1.2.1.1.1

                I don’t think that you understand what a system is because your flash light example (shine a light on something new) is not a system.

                Your “logic” remains a fallacy.

                1. 112b (as currently conceived by the CAFC) does not require cooperation in all elements of the claim. In other words, it’s not wrong to have the widget just “sitting there” in the claim, nor is the subject matter of the claim *as a whole* obvious just because the art understood that you could shine the flashlight on whatever you wanted prior to the instant disclosure.

                2. Nor does it impact improvement patents which start with some first item and improve** in any number of different ways.

      2. 12.1.2

        LizardTech is about whether you something that falls within the scope of your claims can invalidate your claims because it is nonobvious and came after your claims.

        The rest of what you wrote is just silly nonsense.

        1. 12.1.2.1

          LizardTech is about whether you something that falls within the scope of your claims can invalidate your claims because it is nonobvious and came after your claims.

          The word “obvious” appears exactly three times in Lizardtech, and one of those times is the court specifically saying they are not reaching the question of obviousness.

          Lizardtech is about whether the applicant posited the full scope of his more-broad Claim 21 instead of simply his more-limited (and non-infringed) Claim 1. The fact that “something fell within the scope of the claims” (i.e. infringed Claim 21) helps with the proof of invalidation, but infringement and invalidation are different things. The relevant quality was not “non-obvious and came after” but “not posited by the Claim’s inventor.”

          You can fail WD with or without an example infringing device to point to. You fail WD by failing to posit something, not by having a non-obvious device come after it.

          You have absolutely zero grasp of this subject matter. You should quit while you’re behind.

  22. 11

    Quite frankly, this view of “put into practice” and “breadth” is NOT what Congress has written.

    Wanting this put into the law through the judicial branch is very much part of the larger problem here.

    1. 11.1

      Well you would have to agree that a claim to a wide scope with only a minimal amount of actual reduction raises enablement issues at a minimum right? You might have an underpinning theoretical basis that is true, and it may even work in the particular manner posited, and may even be true for a majority of means within the scope in total, but if some unforseen variable causes 5, 10, 20, 40% of the scope to have additional complications, some of which may be undue, there’s clearly a problem there.

      Isn’t Dyk just talking about what constitutes sufficient proof, and that once a scope gets large enough there is no such thing as sufficient proof, and it fails as a threshold matter? Put another way – once the disclosure is so small compared a claim so vast, isn’t it enough to just point to the magnitude of difference to meet the movant’s initial burden to show invalidity? How is that any different than Wands?

      In Morse (and I know you hate me bringing it up) the overbreadth worry of what is today 112, 1st and the judicial exception of 101 were intertwined.

      1. 11.1.1

        There seems to be a widespread ig norance of what happened in 1952, and how a single PRE-1952 paragraph became multiple DIFFERENT provisions of law.

        1. 11.1.1.1

          Anon. I have a genuine question for you. What in your opinion is not eligible for patenting?

          Thanks.

          1. 11.1.1.1.1

            Ryan,

            Something entirely in the mind.

            Something made by nature.

            A purely natural force.

            Does that help?

            1. 11.1.1.1.1.2

              Interesting that Ryan finally got anon to break his silence on his own 101 views. Perhaps anon will truly astound us and further elaborate on his own views as to whether or not folks should be able to go ahead and *effectively* own any of the three things he named even if they do not claim precisely any of those things.

              1. 11.1.1.1.1.2.1

                Not sure why you seem so amazed 6 – my position remains steadfast and consistent.

                In fact, you might recall my taking Malcolm to the woodshed on his own conveniently wildly varying “understanding” of the word “effectively” pertaining to the Myriad case.

                The implication that my posts are otherwise is rather bizarre.

                1. I do not so recall, as I skip some of your bickering with MM.

                  But come on, go ahead and regal us with your position on *effectively* claiming something not explicitly claimed, and maybe lay that position out as clearly as you stated your position above. If it be possible.

                2. Well go ahead and tell us about it. Shouldn’t take long. It’s not that complicated. Are ye fer it, or agin it?

              2. 11.1.1.1.1.2.2

                6 Perhaps anon will truly astound us and further elaborate on his own views as to whether or not folks should be able to go ahead and *effectively* own any of the three things he named even if they do not claim precisely any of those things.

                I’ll wait for a flock of monkeys to fly out of your butt before I look for that elaboration.

                1. Malcolm, that was the case that you “did not care about,” and yet spewed more than 30,000 words in the immediate aftermath of.

                  Go back and read the original archives for your own duplicity and squirming on what “effective” means.

                  Bring your own popcorn.

              1. 11.1.1.1.1.3.1

                You are not paying attention Mr. Snyder.

                I have discussed in great detail the Act of 1952, including how before that act Congress had shared its power with the judicial branch the ability to derive the meaning of the word “invention” through the power of the t001 of common law development.

                The items I mention are from that development.

                However – and this is a critical point seemingly lost on those for whom it is simply inconvenient, that power was stripped from the judicial branch in 1952 by Congress who deliberately chose to go a different route and inserted section 103 instead.

                Maybe if you did not have so much disdain for the terrain of patent law, you would appreciate that terrain and not run off of the path and over cliffs.

      2. 11.1.2

        “Well you must agree…”

        As a bystander, I would say this is the most inaccurate statement I’ve ever seen on the forum. And not just the person you replied to. Disagreement on everything seems to be rather indicative of the board…

      3. 11.1.3

        “Well you would have to agree that a claim to a wide scope with only a minimal amount of actual reduction raises enablement issues at a minimum right? You might have an underpinning theoretical basis that is true, and it may even work in the particular manner posited, and may even be true for a majority of means within the scope in total, but if some unforseen variable causes 5, 10, 20, 40% of the scope to have additional complications, some of which may be undue, there’s clearly a problem there.”

        Yeah but we let people get away with that all the time. It’s part of the “magic” that the cult of the peripherial claim peddled and sold to the patent system long ago.

        1. 11.1.3.1

          6 one does not normally get away with that in the chemical arts. That is, getting a broad generic chemical claim with only a single chemical species embodiment in the spec.

          1. 11.1.3.1.1

            Was it not a chemical arts invention that was featured on this board awhile back that had more listed permutations then all the seconds in the universe to date?

            Not sure what “point” you are trying to make there, Paul.

    2. 11.2

      I agree. The Courts don’t seem to understand what the term “abstract” means. They treat the term as analogous to “broad” but that is clearly incorrect. Breath or narrowness is not relevant to the determination of whether something something is tangible or abstract. Something can be both abstract and board, abstract and narrow, tangible and broad, or tangible and narrow.

      1. 11.2.1

        Throw in the “magical” Gist edge, and your limitless powerful “Gist/Abstract” sword will take you to whatever Ends you want to arrive at.

        Who cares about the means?

        (and yes, I am holding up the rather large sarcasm sign)

  23. 10

    RandomGuy and Martin Snyder did a pretty good job of summarizing the pros and cons of Dyk’s dissent at comments 2 and 2.1, below. In a nutshell, subject matter eligiblity issues come in different flavors and simply narrowing an otherwise ineligible claim, while certainly helpful or even sufficient in some cases, is not going to be the cure in every instance.

    One of the key things to come out of the Myriad litigation is that nucleic acids are different. More specifically, there is a cloud that hangs over “inventions” of new species of nucleic acids that are useful for hybridizing to their complements. That cloud is bigger, blacker and more deadly when those nucleic acids are claimed generically or in terms of function rather than specific structure (i.e., rather than limiting the claim to the order and identify of the nucleic acids). This cloud is neither arbitrary nor a pure creature of policy (“we don’t like it”). It’s a reflection of the facts that (1) the complementary nature of DNA strands has been understood for almost 75 years now; (2) the utility of hybridization for sequence detection and amplification is very well-understood; (3) the relationship between DNA sequence and phenotype/diagnosis is universally acknowledged; and (4) the sequence of the most valuable chromosome — the human chromosome — is known and in the public domain. Given those facts, it’s no wonder that reasonable people are disturbed by the prospect of being told that they can’t use common sense to study DNA using readily available tools designed for that purpose without risk of tripping on one of a zillion “determine and infer” patents or an “I saw the DNA first!” patent.

    Logic, whether “computational” or not, is similarly afflicted (arguably even more so because the tools are ubiquitous — more people have easy access to programmable computers than the reagents and equipment required to perform PCR or other sequencing methods).

    [Aside: I wish I could remember the name of the case that I wrote about in the comments last week; oral arguments about the eligibility of a claimed method of preparing a population of “more viable” frozen liver cells by removing the non-viable cells and re-freezing the viable ones, or something like that … it was interesting]

    1. 10.1

      Anyone else find that reading this site is so much nicer if you simply ignore what MM says?

      1. 10.1.1

        PatentBob, I almost wish that I could filter out comments from people who do not appreciate the contribution that Malcolm voluntarily makes to US patent law on a day to day basis. I read his posts with interest. They are the first posts I look for on any topic.

        On the contrary, I almost never read your posts, the posts of anon or of Night. They are mostly devoid of rational content, but are just whines of one kind or another. It is gets tiresome to constantly have to brush aside your and their detritus.

        1. 10.1.1.1

          He makes NO meaningful contributions Ned.

          You just happen to have a severe case of “6-is-an-Einstein-because-he-agrees-with-what-I-want.”

          1. 10.1.1.2.1

            ^^^ this is the type of befuddling “editing” that raises an eyebrow.

            Night Writer’s first comment is expunged – substantively changing the discussion flow here.

            And yet, Malcolm continues to C R P all over these boards.

            There is a serious lack of objective “rules” being applied evenly here.

            Why?

            Perceptions…
            Perceptions…
            Perceptions…

    2. 10.2

      Invited to look at Comment #2, what particularly interested me was Random’s suggestion that:

      “The printed matter doctrine is functionally a 101 analysis, simply applied at the 103 stage.”

      I can relate to that, seeing as how the EPO routinely does its eligibility analysis also at “the 103 stage”. For a whole lot of business method and software subject matter, that approach works well. For contributions to progress in the DNA world, I am open to the idea that a different approach works better. Such as requiring that the claim is supported by a disclosure which demonstrates the utility of the claimed subject matter, not just somewhere within the ambit of the claim but broadly corresponding to the full scope of the claim.

      Since its 1978 beginning, the EPO has been strong on the notion that you don’t get any more scope of protection than that which corresponds to the magnitude of your contribution to the art. That’s an underlying principle which no jurisdiction would dispute. How you get in a structured argument to closure on that point will of course vary from jurisdiction to jurisdiction, but there needn’t be any strongly-felt dispute between Patent Offices, and different judges in different jurisdictions, about where to draw the line.

      1. 10.2.1

        Be aware of (and beware of) the fact that in our Sovereign, Jepson claim format is an optional format – and one with very limited use.

        To the extent that you would have ALL invention be constrained to such a format, your “system” is all the more weaker.

        1. 10.2.1.1

          Jepson claims are unknown under the EPC and at the EPO. A “characterized in that” claim at the EPO is not to be compared with a Jepson. Rather, it is an artefact of the strict “Problem and Solution Approach” to obviousness starting from the “D1” reference, an Approach which in ist strictness is of course unrecognised in the USA. Palpably, a little knowledge of the EPC (gained exclusively on this blog) can be a dangerous thing.

          Many EPO practitioners eschew c-i-t claims on principle. And anyway, for the EPO they are not mandatory.

          1. 10.2.1.1.1

            Funny how you want to tell me not to compare laws in different soveriegns while you insist on doing that very thing, but in a ham-fisted manner.

            Nice touch of irony.

            Be that as it may, I was talking about US law here in this sovereign.

      2. 10.2.2

        Max: Since its 1978 beginning, the EPO has been strong on the notion that you don’t get any more scope of protection than that which corresponds to the magnitude of your contribution to the art. That’s an underlying principle which no jurisdiction would dispute.

        And yet, there has been a strong debate on that issue in the Federal Circuit over the years which emerges in claim construction. The argument of some is that claim construction must consider the contribution and construe claims accordingly. Lourie made this argument in Phillips where he argued that the claim construction in that case should construe “baffle” to include acute angles because that was the only subject matter disclosed, and because it was essential to one aspect of the claimed invention.

        Actually, and I believe this, if one was reading the specification of the Phillips patent, one would understand that the claimed baffle was in fact an acutely angled baffle. But that is not how Phillips eventually construed the claims. It construed them broadly to include any baffle that performed that function regardless of the structure disclosed in the specification.

        The court did this on the basis that one should not incorporate limitations from the specification into the claims. That principle of course is correct in the abstract. But the claim so construed, may never have been examined because the examiner may have been searching for a baffle as illustrated in the specification regardless of his injunction that the claim should be construed under the broadest reasonable interpretation standard.

        One counterargument to Phillips is that if the claimed is construed broadly, is there truly written description support for such a claim? The result in Phillips is equivalent to claiming a genus while disclosing a species. The issue is not so much whether a baffle in the abstract is angled or perpendicular, the issue is whether one is entitled to claim all baffles for the purpose having disclosed just one. Functional claiming.

        The Federal Circuit still looks to limitations in the specification like “the invention is this” or “the invention is that” in order to limit the claims to the contribution. That is why most practitioners today completely eliminate characterizing the invention in the specification. Specifications today are almost completely unreadable and useless for any purpose whatsoever, let alone in conveying to the public new technology. All this is comes as a result of the claim construction struggle that emerged after Markman. (Prior to Markman, the courts always had opportunity to construe claims in the context of validity and infringement so they knew what the invention was and could construe the claims accordingly.)

        The Federal Circuit could avoid practitioners avoiding the use of the word “invention,” or otherwise characterizing the invention in drafting specifications, if they had taken the Lourie approach and simply looked to the substance of what was going on as opposed to the words being used. They should have also understood that claims must particularly point out the invention and that broad functional definitions do not do that whether those broad functional definitions are made using functional terms or by using generic terms to claim specific but very narrow disclosure. (I, of course, limit my view remarks here to claiming the invention as opposed to claiming a prior art element where functional claiming is quite appropriate.)

        A somewhat complicated issue of course, but the fundamental principle you say that all jurisdictions should recognize is in fact recognized only by some of the Federal Circuit, and not at all by the American patent bar, who, of course, only want to do the “best” for their clients.

        1. 10.2.2.1

          Ned I happen to think that there would be much less grief when it comes to claim construction, and much more clarity, if owners of claims were exposed to squeeze arguments, between infringement and validity. What I mean is, if the same bench looks simultaneously at infringement and validity, and each is decided on the ordinary civil law standard of “more likely than not” (as it is in English patent cases) it is very often a real test of the patent to construe a claim in such a way that it catches the accused embodiment while at the same time seeing off all the validity attacks.

          I don’t accept by the way that the patent system in England is any less “strong” than it is in the USA. Good patents get enforced, injunctively, within a year, while bad patents get revoked within a year.

          But hey ho, I quite see you in the USA cannot just adopt the brutally simple English way of patent litigation, even if you wanted to. For a start, too many litigators with vested interests, too many litigants wanted to keep it complex and uncertain.

          1. 10.2.2.1.1

            Max, agree.

            Also, In re Donaldson (mid-90s) overruled a CCPA case that had stood for generations: One could not functionally claim novel structure or compositions. Those prior cases had stemmed from cases such as United Carbon. That overrule has directly lead to today’s problem of functionally claiming inventions, and the claims construction problem that we saw in Phillips.

            In a small way, the trend to recognize functional claiming as a 101 problem is a trend to that effectively overrules Donaldson, but in a very unsatisfactory way. The problem is not a 101 problem, IMHO, but a 112 problem.

            Anyway, functional claiming allows to claim the cover far more than the disclosure and is the problem addressed by Morse and by Judge Dyk. The statutes had addressed this issue in the 112 by requiring that the claims particularly point out the invention. This requirement is distinct from the requirement that the claims be clear.

            1. 10.2.2.1.1.1

              …and the Merry Go Round of revisionism (and foreign sovereign intrusion) continues….

            2. 10.2.2.1.1.2

              Hi Ned. Thanks for teaching me that it was 1952 that saw the arrival of a statutory requirement for the claims to “particularly point out” the invention.

              I never asked myself before, what that actually means.

              You see, where I’m based, the function of a claim is to “define” the invention (Rule 43 EPC) whereas the function of the specification and drawings is to “disclose” the invention. I think those functions (define vs disclose) are necessary, sufficient and complementary, and that 6 needs them both before he can examine for patentability. The claim is to set the periphery of the protected area and the description is to enables what’s in it. As an outsider, I’ve no idea where “point out” fits, as between disclosing and defining. I’m not sure who does know, apart from you.

              1. 10.2.2.1.1.2.1

                Max, I never said that “a particular point out” first appeared in the statute in 1952. The language is put into the statute in its present form in 1870. It reflects the holding of the Supreme Court in at least two cases: Evans v. Eaton, 20 US 356 (1822)(Story, J) link to scholar.google.com and O’Reilly v. Morse, 56 U.S. 62 (1853). In each case, the claim failed to particular point out the invention, but broadly referred to the specification or the principle involved.

                The plaintiff, in his specification, after describing his Hopperboy, its structure, and use, sums up his invention as follows: “I claim as my invention, the peculiar properties or principles which this machine possesses, in the spreading, turning, and gathering the meal at one operation, and the rising and lowering of its arms by its motion, to accommodate itself to any quantity of meal it has to operate upon.” From this manner of stating his invention, without any other qualification, it is apparent that it is just such a claim as would be made use of by the plaintiff, if the whole machine was substantially in its structure and combinations new. The plaintiff does not state 429*429 it to be a specific improvement upon an existing machine, confining his claim to that improvement, but as an invention substantially original. In short, he claims the machine as substantially new in its properties and principles, that is to say, in the modus operandi.

                The specification, then, has two objects: one is to make known the manner of constructing the machine (if the invention is of a machine) so as to enable artizans to make and use it, and thus to give the public the full benefit of the discovery after the expiration 434*434 of the patent. It is not pretended that the plaintiff’s patent is not in this respect sufficiently exact and minute in the description. But whether it be so or not, is not material to the present inquiry. The other object of the specification is, to put the public in possession of what the party claims as his own invention, so as to ascertain if he claim anything that is in common use, or is already known, and to guard against prejudice or injury from the use of an invention which the party may otherwise innocently suppose not to be patented. It is, therefore, for the purpose of warning an innocent purchaser or other person using a machine, of his infringement of the patent; and at the same time of taking from the inventor the means of practising upon the credulity or the fears of other persons, by pretending that his invention is more than what it really is, or different from its ostensible objects, that the patentee is required to distinguish his invention in his specification. Nothing can be more direct than the very words of the act. The specification must describe the invention “in such full, clear, and distinct terms, as to distinguish the same from all other things before known.” How can that be a sufficient specification of an improvement in a machine, which does not distinguish what the improvement is, nor state in what it consists, nor how far the invention extends? Which describes the machine fully and accurately, as a whole, mixing up the new and old, but does not in the slightest degree explain what is the nature or limit of the improvement which the party claims as his own? It seems to us perfectly clear that such a specification 435*435 is indispensable. We do not say that the party is bound to describe the old machine; but we are of opinion that he ought to describe what his own improvement is, and to limit his patent to such improvement.

                Evans at 428-429; 434-435.

                Aslo,

                As we said of Gullborg in the Rogers case, having hit upon this improvement he did not patent it as such but attempted to claim it in combination with other old elements which performed no new function in his claimed combination. The patent is therefore void as claiming more than the applicant invented.

                Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 555 (1938) link to scholar.google.com.

                There are numbers of articles that I can cite that explain the origin of the language, but rather than do that I will just refer to the author that everybody in the United States most respects, Landis.

                Overly broad functional statements: Some practitioners attempt to use functional language to claim a result or quality rather than a functional limitation – e.g., “a
                woolen cloth having a tendency to wear rough rather than smooth”, which fails to “particularly point out and distinctly claim” the material – “the subject of a patent is the device or mechanical means by which the desired result is to be secured”. (Knapp v. Morss (1893)) – similarly invalid are “the use of the motive power of the electric or galvanic current for making or printing intelligible characters,
                letters, or signs at any distance” (O’Reilly v. Morse (1853))…”

              2. 10.2.2.1.1.2.2

                Also, Max, Lord Coke once found a patent to an improvement void, saying that the claimed invention was like a new button on an old coat.

                “Thus, for example, when Coke explained why the patent in the Bricot’s case was contrary to law he said that the invention in question was not a new manufacture, but rather to introduce it was “but to put a new button on an old coat.”90 This was the metaphysical distinction. Yet Coke went on to explain that “it is much easier to add than to invent” and that even “if the new manufacture be substantially invented according to law, yet no old manufacture in use before can be prohibited.” … By calling the invention an “improvement” Coke was saying that slight innovations of little social benefit should not justify a monopoly that is likely to do much harm to existing interests. Understood in this light, the rule against patents for mere improvements was well integrated with the concept of patents as a particularistic case-specific policy decisions. Alongside the metaphysical claim that classified an invention as “improvement” there usually was also an
                assertion that the calculus of public benefits and costs in the specific case could not justify a monopoly grant.”

                Owning Ideas, Chapter 1, 41-42.

                I would suspect the problem was that the injunction would lie against the coat with the improved button but as a practical matter, people could not know whether the coat had the improved button or not.

                Now if the claim had been limited to the improved button?

      1. 10.3.1

        This was in response to the aside “I wish I could remember the name of the case… about the eligibility of a claimed method of preparing a population of ‘more viable’ frozen liver cells by removing the non-viable cells…”

  24. 9

    From IPLaw 360 — Kappos Calls For Abolition Of Section 101 Of Patent Act
    — saying decisions like Alice on the issue are a “real mess” and threaten patent protection for key U.S. industries. —

    1. 9.1

      Kappos created the “real mess” and if it was up to him he’d go ahead and create a bigger one.

      The experiment was already performed. Subject matter eligibility was effectively abolished by the CAFC in State Street Bank. The result was an unmitigated disaster that the system is just beginning to recover from. Now Kappos wants to turn the spigot back up to 11 because his megawealthy puppet masters could make more money that way? Hilarious.

      Dude needs a hobby.

    2. 9.3

      Kappos has an interesting way of getting a discussion started. However, I do not see how title 35 would still pass constitutional muster without section 101. Without a utility requirement, can you still make out that title 35 “promote[s] the Progress… useful Arts” as Art. I (s. 8, cl. 8) requires?

  25. 8

    I could get behind a change in the law to that effect (by statutory enactment, not just judges changing it willy nilly). That is, in all situations except at least one. That one exception being where what the inventor has reduced to practice is for all intents and purposes everything that you would ever put the abstract idea (etc.) to. In other words, where what they reduced to practice is, for all practical purposes, all of the uses of the judicially excepted subject matter. In that situation, the ban must remain in place as the patent is then effectively them patenting the judicially excepted subject matter and that remains so no matter if they reducing one or a few embodiments to practice.

    1. 8.1

      That being said, I should add that what Dyk is suggesting we allow to be eligible already is very close to what is already eligible (except he wants to add the reduced to practice thing on top). The only thing that constantly trips people up is trying to claim beyond what the specific thing that they’ve actually dreamed up is.

      1. 8.1.1

        There’s a problem with the “reduced to practice” language. It’s actual reduction to practice, which is different from the thing that you’ve actually dreamed up. In fact, you may not ACTUALLY reduce something to practice — all you have to do is get close enough to know that you can.

        1. 8.1.1.1

          The notion of “constructive reduction to practice” is completely absent in this version of “reduced to practice.”

          So no, I think that he means something other than the traditional “reducTION to practice”

    2. 8.2

      I could get behind a change in the law to that effect (by statutory enactment, not just judges changing it willy nilly).

      That right there is my second biggest problem with Judge Dyk’s concurrence. He just makes it up out of whole cloth, without a scrap of statutory justification. Sure he cites Morse, but as others have already pointed out, Morse was interpreting a different patent act, with different statutory provisions. Considered as a 101 case, Morse became a dead letter in 1952, and cannot serve as the basis for present day 101 jurisprudence, except in to the extent that certain text in the patent act was carried over into the modern act from earlier acts. You cannot, however, just charge ahead headless of what statutory support you have for your preferred policy outcomes. There is no statutory warrant for the only-that-which-is-actually-reduced-to-practice rule.

      My bigger gripe, however, is the plain unpracticality of the rule. Sure, I have taught the world 100 different applications of my discovery. Sure, anyone with a B.S. in biochem can practice every last one of those 100 applications effortlessly based on my disclosure. But I had better not file on it until I have actually reduced all 100 to actual (not merely constructive) practice.

      What policy concern does that rule advance. It makes it a lot more time consuming and expensive to disclose your technological advances, but does not get you any added public policy benefit in the bargain. It is all about “how do I cook up a post hoc grounds to invalidate this patent in front of me now, so that I can win the applause of the ACLU and Public Citizen?” with no thought about how this is going to affect the field/market going forward.

      We—as a country—are eating our seed corn. We are slashing NIH/NSF funding at the same time as we dismantle all the private sector incentives to R&D. This will not end well.

      1. 8.2.1

        Greg, I personally think that Morse was about the then analog of section 112. When one functionally claims an invention disclosing only examples within the claimed genus the question always becomes whether one is entitled to claim that genus. The answer is not a reflexive yes unless one is claiming in the chemical arts. Answer usually is no. The applicant should claim what is disclosed and allow the doctrine of equivalents to cover unclaimed subject matter. When the claims cover all possible ways of achieving a particular result regardless of whether they are equivalent, they automatically cover non-equivalent ways of achieving that result, something the inventor did not invent.

        I hope you can see the problem. But I do agree that Morse has been misinterpreted as a 101 case when really it is a 112 case.

        1. 8.2.1.1

          Not only can I see the problem, I agree 100%. I think that the Morse rule (you cannot claim that which you did not invent, as evidenced by your written description) is still good law and a necessary part of any sane patent system.

          I merely object: (1) into making this into a 101 issue instead of a 112(a) issue; and (2) saying that for biotech there is a special mere-written-description-is-not-good-enough,-you-actually-have-to-run-the-experiment rule, which has no basis in any case or statute.

  26. 7

    “This proposed approach, limiting the scope of patents based on new discoveries to narrow claims covering applications actually reduced to practice, would allow the inventor to enjoy an exclusive right to what he himself has invented and put into practice, but not to prevent new applications of the natural law by others.5 This would ensure that the scope of the patent claims would not “foreclose[ ] more future invention than the underlying discovery could reasonably justify.” Id. at 1301. Limiting the scope of the patent also would avoid the problem that “the more abstractly [a process patent’s] claims are stated, the more difficult it is to determine precisely what they cover.” ”

    It would also mean that the inventor of the antigravity engine will have to have the financial resources to mine, refine, smelt, temper and machine the required quarter ton of unobtanium required to build 3 gimbaled Higgs inverters in order to reduce the invention to practice. Of course, those funds will be unobtainable without the protection provided by a patent or at least a pending patent application to show potential investors.

    Therefore, only the filthy rich and the evil corporate overlords (such as Google?) will be able to reduce inventions to practice (and meet the new prerequisite for patent application success) without the protection of a patent and the rich will just get richer, just the way MM wants.

    Major Milo Minderbinder would be proud.

    1. 7.1

      I have a question Les, about the legal side you’re bringing up. I hear you guys tell about this lamentable tale of the underfunded but supar genioos inventor that tots knows how to make x great invention but can’t afford to do so. And then you tell about how he will either never get the funds and/or never disclose and/or never make the thing. Why can he not make a binding contract with a funding corporation/individual for them to develop his tots amazing idea prior to his disclosing it to them for their consideration?

      1. 7.1.1

        Because funding corporation wont give him a billion dollars to make one and start a new company if Lockheed Martin can buy the first one off the line, reverse engineer it and start cranking out cheap ones because they don’t have to recoup the huge R&D investment.

        1. 7.1.1.1

          So why don’t they do the contract like I proposed, then the corp makes the thing in secrit, and then they (jointly or with him joining the corp or assigning them all interests after getting a cut) submit for a patent?

          1. 7.1.1.1.1

            The contract you propose protects the inventor from his potential partner. It does not protect the partners investment from Lockheed. The investors want to see the patent upfront. Some may take the risk on an application, after they evaluate it and do their own prior art search. But with nothing, they aren’t going to take a meeting.

            If they are working on there own engines and aren’t just angel investors, they don’t want to take the risk that the inventor is going to propose something similar to what they are already working on and would later accuse them of stealing his idea.

            1. 7.1.1.1.1.1

              “It does not protect the partners investment from Lockheed”

              Right, that’s what the patent is for, down the road.

              “The investors want to see the patent upfront.”

              So it’s a crutch basically.

              “If they are working on there own engines and aren’t just angel investors, they don’t want to take the risk that the inventor is going to propose something similar to what they are already working on and would later accuse them of stealing his idea.”

              Yeah I hear you on that one. But remember, this is anti-grav awesomeness, they’re not working on anything remotely as awesome, right?

              1. 7.1.1.1.1.1.1

                1) They don’t know what the invention is until they sign your contract.

                2)They don’t want to sign the contract in case the invention is similar to what they are already working on. If it is similar, the inventor will accuse them of steeling it from him.

                SO

                3) The won’t sign your contract until they know what the invention is and the inventor wont tell them what the invention is until he is protected, with at least an application, which if Judge Dyk gets his way, he can’t apply for until he has a working prototype, which he can’t get financing for without the meeting, which wont occur without the patent or at least the application.

                Catch 22. Capice?

          2. 7.1.1.1.2

            Contract law – as opposed to a strong patent law – is full of “efficient breach” mechanisms that simply do not get the job done, 6.

            Revisit i4i. See also Citizen’s United.

            1. 7.1.1.1.2.1

              anon, efficient breach. Taught in law schools. Adopted by the West Coast. Brought east by Google, Facebook, Intel, Apple, eBay, Seagate and Microsoft.

              Such is progress.

            2. 7.1.1.1.2.2

              “Contract law – as opposed to a strong patent law – is full of “efficient breach” mechanisms that simply do not get the job done, 6.”

              I remember efficient breach and whatever else breaches, but efficient breach requires just compensation (usually you can even specify that in the contract).

              1. 7.1.1.1.2.2.1

                You do not remember it well enough, nor do you “remember” why patent law is different than contract law.

                Maybe you want to brush up on these things…

        2. 7.1.1.2

          “and start a new company”

          He doesn’t have to “start a new company”. He’s got the original corp making them now.

          Or is the whole boo hoo story hinging on his getting to go and start his own company?

          1. 7.1.1.2.1

            6 , the reasoning I have outlined is the whole purpose of the Patent system. This is how patent “promote progress”. They provide intensive/protection for risk.

            1. 7.1.1.2.1.1

              “6 , the reasoning I have outlined is the whole purpose of the Patent system.”

              I’m going to disagree. The purpose is to encourage disclosure. The things that are ancillary to that are ancillary.

              1. 7.1.1.2.1.1.2

                Ok, but the WAY it encourages disclosure is by providing incentive and protection from investment risk.

                You can disagree if you like. But if Patents didn’t provide protection competitors reverse engineering/copying, you would not have a job. No one would file patent applications.

          2. 7.1.1.2.2

            “Or is the whole boo hoo story hinging on his getting to go and start his own company?”

            Well, if you try to license out then 1) you get defined as a “troll” by many nowadays, with all the ensuing “punishments” coming from “reform” such as veil-piercing to scare off legitimate inventors, and 2) non-wealthy inventors/entrepreneurs typically cannot license at all anymore, as has been well noted, due to the pendulum having swung so far against patentees that most big companies now just engage in “efficient infringement” anyway (e.g., “Why should I pay you a royalty when I can just take it – and the worst that could ever maybe happen to me is being forced to pay about what you’re asking now?”). Granted that might become tempered a bit, if the effective outright ban on willful damages gets corrected.

    2. 7.2

      Les: without the protection of a patent and the rich will just get richer, just the way MM wants.

      The idea of hijacking the patent system (!!!) and using it as mechanism for wealth distribution is so ridiculous that it’s barely worth addressing.

      The patent grant rate exploded over the past 25 years and, during that same period, the rate at which “rich people got richer” also shot through the roof. So much for that theory.

      An even bigger problem that is nurtured by an unregulated patent system is the increasingly surreal over-valuation of certain “information techn0l0gies” and related “start-ups” that occurs while desperately needed improvements to our tangible infrastructure — that everyone depends on — are pretty much ignored.

      Yes, an “anti-gravity” machine sounds totally awesome and way cool. So does a robot that takes care of all the paperwork for my taxes. I doubt I’ll be able to afford either in my lifetime. Right now a reliable and affordable source of clean water is probably a higher priority.

      1. 7.2.3

        Malcolm misleads with his statement of “The patent grant rate exploded over the past 25 years” and based on how he wants to use the term “rate,” his view MUST be balanced with a RECORD number of rejections over that same twenty five year period.

        On the other hand, if you use the term “rate” in the more normal sense, the historical grant rate has been remarkably constant – except for of course the Dudas era “just say no” Reject-Reject-Reject phase – something the Office itself tried to use as propaganda of its own “outstanding” quality; and for which, Kappos had to come in and publicly declare that “quality does not equal Reject.”

        Is it any surprise then that certain sAmeones continually try to misconstrue actual history in order to try to reach their desired ends?

    3. 7.3

      Les, what Dyk means is that Gene Roddenberry should not be allowed to obtain patents on the Warp Drive, the Transporter, or a hand-held device with rounded edges interactive communications, reading books or displaying computer information.

      1. 7.3.2

        No.

        What Dyk means is Scotty can get a patent for transparent aluminum, but he has to bring some in to the patent office first.

  27. 6

    Judge Dyk’s comments would be more compelling if he were to write them in an opinion in which he actually upheld a patent claim as being patentable. Which I’m not sure he has ever done.

  28. 5

    Nice work Jason.

    Besides Morse, also note the prior discussion here last year of the old Sup. Ct. decision on an electric light bulb patent, invalidating those of its claims written so broadly as to cover Edison’s later invention of the first practical light bulb.

    1. 4.1

      Interesting. One could argue this would make no difference if the judge-made rules regarding patent eligibility are really determinations on the constitutional limits of Congress’s authority to grant patents – e.g., permitting a patent on an abstract idea does not promote the progress of “useful arts.”

      1. 4.1.2

        You do realize the problem that the Court runs into with its conjectural “may” when it discusses this concept, right?

          1. 4.1.2.1.1

            Just because you seem unable to grasp the problem does not mean that there is no problem 6.

  29. 3

    (And §112(b) only relates to claim clarity, a different issue than claim breadth.)

    This is only true if you believe In re Bernhart over Lincoln Engineering, despite the fact that Bernhart was decided by an inferior court and the reasoning of Bernhart (that language always further limits claims and therefore there is no harm in allowing “extra” language) is clearly incorrect.

    1. 3.1

      To illustrate, I don’t think I need to do anything more than repost the dissent in Ex parte Barber, which I fully agree with:

      I do not relish the task of expressing disagreement with Bernhart because, as previously stated, I firmly believe that a lower tribunal should follow the law as defined by its appellate tribunal. On the other hand, I do not believe that the Patent Office Solicitor should be faced with the task, bereft of any assistance, of urging that Bernhart be overruled. I will therefore comment on the reasons advanced in Bernhart for holding old combination rejections to be obsolete.

      Overclaiming is indeed given as one reason for old combination decisions. However, that word is not employed in the sense of broad claims to the applicant’s or patentee’s invention but, rather, in the sense of peripheral or tangential expansion of his claims to subject matter which is not properly a part of his contribution to the art. A reductio ad absurdum will serve to illustrate this point.

      If a patentable door latch has been invented, it might not seem inappropriate to permit claiming the combination of the latch and a door. Claiming the combination of the latch, door, and door frame might not seem unreasonable. The same line of reasoning may lead to the combination of latch, door, door frame, and wall; the combination of latch, door, door frame, wall, and room; and, ultimately, the combination of latch, door, door frame, wall, room, and building. I assume agreement that engraving a patent number on the cornerstone of a building because that building contains patentable door latches would be absurd. The precise cut-off point for the absurdity is the latch itself rather than its association in generally known relationships (old combination).

      I am unable to perceive wherein the present statute (35 U.S.C. 112) gives any greater sanction to an old combination than the former statute (R.S. 4888). Both statutes require a particular pointing out and a distinct claiming. I do not question that an old combination claim may be quite distinct, clear, and free from any ambiguity. However, the phrase “particularly pointing out” has the connotation of defining the unobvious contribution without extraneous items or appendages. Reverting to the ad absurdum illustration, the patentable latch should be defined without reference to the door, door frame, wall, room, or building. Such a claim serves to particularly point out the invention; an old combination claim does not serve that purpose.

      I realize, as noted by my colleagues, that 35 U.S.C. 112 includes the phrase, “the subject matter which the applicant regards as his invention.” However, I am unable to accept that phrase as carte blanche for the inventor, whereby he alone can subjectively represent what he “regards as his invention,” immune from any objective determination of what properly is his invention.

      1. 3.1.1

        Random, we really need a rule change in the PTO whereby the PTO can require the applicant to move admittedly old material to before the colon.

        1. 3.1.1.1

          ^^^ this was in transit with my comment below.

          Clearly, Ned is one of those who does not understand what “optional” means.

          Another is Malcolm – why is that NOT a surprise?

          1. 3.1.1.1.1

            Why don’t you demonstrate what other optional formats are available? Surely you can find a hypo to offer?

            No, because you will say “asked and answered, ends don’t justify the means, Holiday Inn, 1952 ” and nobody will know what you are talking about.

            1. 3.1.1.1.1.1

              Do you have a c1ue as to what a Jepson claim is, Mr. Snyder?

              Or are you just going to continue to mindlessly react because you see that the post is by “anon?”

              1. 3.1.1.1.1.1.1

                I have understood it to mean that your claim has a preamble that includes a full description of the prior art when you are claiming an improvement. I have zero notion of why you believe such a format removes a requirement to bring novel structure of some kind in order to gain a patent, or that such a “format” is entirely distinguishable in everyday practice since all claims more or less reference prior art, unless you mean the specific phrase “the improvement comprising…” which is still meaningless when there is no new structure, or for methods, no structure at all….

                1. LOL – compounding the error of “must be Jepson” with the error of “must be objective physical structure”

                  Get your money back from that Holiday Inn.

        2. 3.1.1.2

          The underlying rule change that needs to happen is non-compact prosecution, because it should be standard fare to make 112, 1sts, and when people respond “I don’t need to teach that, the art can already do it” then a 112, 2nd should be lodged *in response to the argument* which requires the amendment. It would need to be both a rule change and an en banc overruling Bernhart.

          1. 3.1.1.2.1

            Random, people who do not really understand prosecution or care about quality patents, but simply want them issued soonest and at the lowest cost, favor compact prosecution. As we all know, low quality patents with indefinite claims impose a major cost on the American economy. In other words, the movers and shakers that impose their will on the patent office for the benefit of their prosecution budgets, do not give a rats ass about the collateral damage to the American economy that they impose by this economy.

            The cozy relationship between the patent office and their “clients” has to end. The next president needs to select a Director without consulting the movers and shakers of patent law. Or perversely, they should consult them and not appoint any they recommend.

            I do not know who Malcolm is, but he certainly had the kind of person we need as Director.

            1. 3.1.1.2.1.1

              …more of that affliction of “is-a-genius-because-he-agrees-with-my-curse-ades”…

              I do wonder if you realize just how badly you wreck your credibility with statements like that Ned.

      2. 3.1.2

        You do realize that what you speak of that sounds in the Jepson claim format is expressly – and merely – an optional format choice, right?

        And yet another instance in which those seeking to change the law should pay attention to what is merely optional…

        1. 3.1.2.1

          Point to the case or statute that says that one may select an optional format that disagrees with 112, 2nd please. You’re letting the tail wag the dog. The only things which are optional are those which comply with 112, 2nd. If Jepson format is the only format that complies with 112, 2nd in some circumstances, then Jepson is the only option, and thus mandatory for validity.

          1. 3.1.2.1.1

            You quite miss the point: an optional format will never be mandatory to meet the parts of the statute.

            By wanting to say otherwise, your logic is in simple error.

            1. 3.1.2.1.1.1

              No, I’m saying you have it backward. I have a statute saying you have to comply with 112, 2nd. Show me the statute that says “when you elect not to claim in jepson format, you don’t have to comply with 112, 2nd.” If you cannot, then stop pretending like “it’s optional” is a rebuttal to “this is how you comply with 112, 2nd”

              1. 3.1.2.1.1.1.1

                Once again you miss the point.

                I am NOT saying that 112 is the option – the claim form is the option.

                There is nothing out there that ever states that you NEED to use a particular claim form in order to meet the statute (if there was, then that claim form would not be optional, now would it?)

                This is really really straight forward stuff and you have to try really really hard to mess it up like you are doing.

                1. I am NOT saying that 112 is the option – the claim form is the option.

                  That’s right, and if the only manner of compliance with 112 is to use a certain format, then you have no option.

                  There is nothing out there that ever states that you NEED to use a particular claim form in order to meet the statute (if there was, then that claim form would not be optional, now would it?)

                  Nor is there anything that says that you NEED to be granted an option to comply with 112. It is simply not a rebuttal to saying that 112 isn’t complied with to say “But I have the option of writing things however I want.”

                  Let me put it like this: If the Supremes said tomorrow that compliance with 112 mandated a Jepson format, it would not go against any statute, and the Supremes are within their power to make that construction of 112.

                2. and if the only manner of compliance with 112 is to use a certain format, then you have no option.

                  And off the tracks you go, yet again…

                  You simply clench tight your eyes with the IF the only manner….

                  The point – explicitly – is that there is NO SUCH IF.

                  Your view of the Supreme Court power to declare and mandate a Jepson claim format only shows that you have no c1ue whatsoever.

                  You are in total fantasy land now…

    2. 3.2

      It can also be argued that the 112 requirement for claims “particularly pointing out and distinctly claiming” covers overclaiming, not just claim ambiguities.

          1. 3.2.1.1.1

            187 USPQ 244, see also MPEP 2173, there’s an old combination or aggregation section or something that talks about it

            1. 3.2.1.1.1.1

              Interestingly enough, Random omits to include the actual words from MPEP 2173:

              I am shocked.

              Here then is the section that Random alludes to, but does not provide:

              2173.05(k) Aggregation [R-08.2012]
              A claim should not be rejected on the ground of “aggregation.” In re Gustafson, 331 F.2d 905, 141 USPQ 585 (CCPA 1964) (an applicant is entitled to know whether the claims are being rejected under 35 U.S.C. 101, 102, 103, or 112); In re Collier, 397 F.2d 1003, 1006, 158 USPQ 266, 268 (CCPA 1968) (“[A] rejection for ‘aggregation’ is non-statutory.”).

              If a claim omits essential matter or fails to interrelate essential elements of the invention as defined by applicant(s) in the specification, see MPEP § 2172.01.**

              .

              And in the paragraph above that….

              The court pointed out in In re Bernhart, 417 F.2d 1395, 163 USPQ 611 (CCPA 1969) that the statutory language (particularly point out and distinctly claim) is the only proper basis for an old combination rejection, and in applying the rejection, that language determines what an applicant has a right and obligation to do. A majority opinion of the Board of Appeals held that Congress removed the underlying rationale of Lincoln Engineering in the 1952 Patent Act, and thereby effectively legislated that decision out of existence. Ex parte Barber, 187 USPQ 244 (Bd. App. 1974). Finally, the Court of Appeals for the Federal Circuit, in Radio Steel and Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 221 USPQ 657 (Fed. Cir. 1984), followed the Bernhart case, and ruled that a claim was not invalid under Lincoln Engineering because the claim complied with the requirements of 35 U.S.C. 112, second paragraph. Accordingly, a claim should not be rejected on the ground of old combination.

              (emphasis added).

              ** In all fairness, the section 2172.01 reads:

              2172.01 Unclaimed Essential Matter [R-11.2013]
              A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as not enabling. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). See also MPEP § 2164.08(c). Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention.

              In addition, a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention. See In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976); In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). But see Ex parte Nolden, 149 USPQ 378, 380 (Bd. Pat. App. & Inter. 1965) (“[I]t is not essential to a patentable combination that there be interdependency between the elements of the claimed device or that all the elements operate concurrently toward the desired result”); Ex parte Huber, 148 USPQ 447, 448-49 (Bd. Pat. App. & Inter. 1965) (A claim does not necessarily fail to comply with 35 U.S.C. 112, second paragraph where the various elements do not function simultaneously, are not directly functionally related, do not directly intercooperate, and/or serve independent purposes.).

              I am shocked that such “mere aggregation” language is there.

              1. 3.2.1.1.1.1.1

                Yeah, the office is following Bernhart, which I thought was made pretty clear when I said at 3.1 that I was quoting from the dissent of Barber. The Office correctly describes the CAFC position. The CAFC position is wrong, because Bernhart was incorrectly decided and they lack the power to overrule Lincoln Engineering.

                This will come up eventually anon, and (scoreboard) once again the Supremes will say what they said before, and will not say what the CAFC said.

                1. You kind of missed the bold text there in that it was NOT the CAFC that overruled Lincoln Engineering, but it was Congress that changed the law.

                  I’ve pointed this out to you and Ned in other discussions – pay attention.

                2. anon, how did Congress overrule Lincoln Engineering when it reenacted 112 without substantial change, and retained the requirement to “particularly point out” the invention?

                3. hahaha scoreboard.

                  Your opinion on how the courts will interpret Congress’ actions is literally not worth the byte-level storage cost it is saved upon. In fact you’re approaching a near-perfect indicator of what they’re not going to do.

                4. You do realize that when I am discussing a broken scoreboard situation, that your wanting to merely say “scoreboard” is rather meaningless, right Random?

                5. Hypothetical 1: Anon knows Congress’ intent better than the Supremes, the Supremes are running wild, and Congress is intentionally doing nothing about it out of disgust or something

                  Hypothetical 2: The Supremes are better at law than Anon, and are accurately tracking what Congress wanted, which is why Congress is making no action.

                  Hmm, either two of the highest levels of our branches of government are incompentent, or anon is wrong. This is a tough choice.

                6. Your “hypotheticals” are CR@P – Instead of recognizing a broken scoreboard and using just a little critical thinking as to why it is broken, you sit back and say, “Nope, I like what the broken scoreboard says, so I won’t think at all.”

                  You would fit “right in” with the Dred Scott mentality.

                7. …as for Congress – I have previously explained (over on the Hricik side of the blog) how their actions in the the AIA cement in that business methods – as a category [contrast with the wrong word “categorically’] – are eligible patent matter.

                  Pay attention son.

                8. Lol Randomguy, that was a good one! Laying it out for ol anon, but you’re forgetting that he’s OCPD, so they have to be wrong, and he has to be right!

                9. Maybe objectively this type of meaningless ad hominem (6’s “med” CR@P) can be “filtered out” too, eh Prof…?

    3. 3.3

      RG, this has long been obvious to one an all, but shows one just how bad a court the CCPA was at that time. I guess they reflected the Zeitgeist of the times where Supreme Court was the villain. I can tell you that the anti- Supreme Court bias still abounds among the movers and shakers.

      Well the CCPA unleashed the dog. Bad patents with overboard claims are now the rule, not the exception. That decision, Bernhart, more than any other just might be the reason patent law is in trouble today.

        1. 3.3.1.1

          What they did not do is change indefiniteness though. It required particularly claiming before and after 1952, and there is no basis for the Bernhart decision to overrule Lincoln Engineering when there was no underlying statutory change.

          1. 3.3.1.1.1

            Look into the difference though between 101 and those things that should not be in 101 – that’s a critical fa1lure in the current anti-patent 101 desires.

            The means really do matter in how you get to your ends.

            1. 3.3.1.1.1.1

              This numeral (3) is about the post’s commentary on 112b, not 101. 112b was in pre-52, 52, and AIA. There has been no substantive change.

              1. 3.3.1.1.1.1.1

                Check again for pre-1952.

                One single paragraph was changed, expanded, and broken into distinctly different sections of law. Then review the noted authorities (Federico and Rich) on the meaning of this.

                I have held Ned’s hand through this MANY times now….

                (The section that became 112 was in fact changed with the Act of 1952 – Halliburton being abrogated, for example)

          2. 3.3.1.1.2

            Random, then Lincoln Engineering is the law.

            The problem about claiming this or that in addition to the invention is the damages base. Contributory infringement is no loner an issue given 271(c). People who argue that the invention is in the component and not in the larger system, and that damages should recognize this may want to supplement their arguments with a Lincoln Engineering attack on the claims.

  30. 2

    I think this writing precisely hits it on the head for half of Alice.

    101 is necessary for preventing some types of overbreadth that are not immediately otherwise preventable. Morse is the common example – Morse claimed printing at a distance. We know, with the benefit of hindsight, that the telegraph (and its child, the fax machine) is one small fraction of machine that prints at a distance, others are the phone text, the television screen and the internet-ed computer. Were their examples available at the time of examination (even post filing) we could use 112, 1st to invalidate the claim, because while the internet computer still employs printing at a distance, it does so in a different manner than the posited telegraph. But the purpose of the patent law is to encourage the invention/disclosure of the phone/television/computer embodiments, and they will be discouraged when Morse holds an exclusionary right to their eventual discovery. There needs to be a mechanism by which we say “You have not proven that the telegraph is the only machine that prints at a distance, and therefore because of the POTENTIAL loss of development we must require further (i.e. significantly more) limitations.”

    But where Dyk fails is that is not the whole story. There are other ineligible acts which are simply ineligible regardless of how particularly they are claimed. Particularly dilineating a mathematical proof, for example, will be ineligible. The example I use here would be a claim to a story. A book has utility and is a manufacture and therefore a claim to a blank book is eligible. A claim to a book that is distinguished from another book, however, solely because some of the pages contain a story is ineligible, and it will be ineligible no matter how particular the claim to the story gets, because the improvement that would be protected in a claim to book + story is an improvement that is not recognized by the constitutional patent power. The CAFC *gets* this on some level, because they apply a “gist” type analysis as well, they simply do it under 103 – They find that printed subject matter is not entitled to patentable weight (thereby removing the story limitations from the claim). The printed matter doctrine is functionally a 101 analysis, simply applied at the 103 stage. It is no different that recognizing that the claim is directed toward an abstract story and saying the book is conventional subject matter not significantly more. A similar case would be Digitech, where the act being performed (association of information) would be ineligible regardless of how particular you got about the information or the manner of association. You simply cannot save ineligible acts by attempting to skirt the law with token machinery implementation.

    Overbreadth is one manner in which an abstract idea or law of nature manifests, but it is not the only one.

    1. 2.1

      Yes Random- abstraction at eligibility is a different inquiry than abstraction at patentability. At eligibility, the abstraction is intrinsic to the invention; a story, some item of information, some non non-corporeal entity. At patentability, the abstraction is the relationship between the idea of the invention and the invention; how particularly pointed out is the invention itself both in the embodiment and with reference to the prior art?

      In the patentability and eligibility senses, laws of nature and natural phenomena fit; the former as ideas not inventions, and the latter as the most prior of prior art.

      I don’t think statutory changes are needed to help clear this up. It’s a matter of procedure and doctrine- dealing with eligibility and patentability separately with the same criteria, applied slightly differently and reflecting the bifurcation of the patent act into those two separate areas.

      anon will dismiss your book example as not of the “useful”arts, but instruction manuals and technical diagrams are useful, and still excluded for the same policy reasons.

      1. 2.1.1

        I don’t understand why you are saying they are two different categories?

        If I say “I want to patent this law of nature” it is ineligible subject matter. If I say “I want to patent a ‘more good’ car” it is also ineligible subject matter. It is under a different exception (abstract idea versus law of nature) but the distinction stops there, doesn’t it?

        Are you saying that the latter situation can be “cured” with more limitations while the former cannot? I agree. But why is that a different thing (“abstraction at patentability”)? Is there any other distinction between the two other than that particular distinction – that one can be cured by being less preemptory and the other cannot?

        1. 2.1.1.1

          Random you could try to patent a new, useful, non obvious technical diagram, but it will not be eligible as an abstract idea, and that abstraction is intrinsic to diagrams. Policy wise, it could also be anything done on a processor….

          In contrast, you could try to patent (ignoring the prior art for the hypothetical) “an aircraft which gains lift by rotating airfoils”, but it would not be patentable as an abstract idea (or as Judge Dyk has it, due to overbreadth), or as sometimes formulated, an invention claimed at the level of an idea.

          The putative invention may meet the WD requirement because a PHOSITA could use the disclosure to say “gee, I had not thought of it (i.e. new, non obvious) , but I could build something that could fly using that principle”. Currently, that inquiry is forced into 101 because no other area of the patent act deals with the situation.

          Since 101 only deals with it based on the judicial exception (i.e. doctrine), there should be a similar doctrine that applies to patentability of eligible, but still not patentable putative inventions that don’t fail for 102/103 or 112, but still must fail.

          I hope that clarifies.

          1. 2.1.1.1.1

            I think we’re in agreement in the underlying view, I simply don’t understand why you’re calling “an invention claimed at the level of an idea” something different than “an idea.” Like I understand your distinction between what you’re calling abstraction in eligibility and patentability, I just don’t see how that has any bearing on the law or invalidity of it all. If you saw Claim A which was an “ineligible abstraction” and Claim B which was an “unpatentable abstraction” there would be no different legal repercussions, right? The only difference appears to be that at the office level the latter contains subject matter which would be eligible if properly amended, and the latter does not. So I don’t understand why the dual nomenclature exists, but that’s okay cause we’re on the same ultimate wavelength.

            1. 2.1.1.1.1.1

              Random the legal differences today are 1) the difference between a million bucks to litigate patentability and $50K to litigate eligibility, 2) the intended, ignorant, or unintended confusion in the minds of examiners, inventors, judges, lawyers, and the public between the KIND of patents that are allowed (eligibility) and the SUFFICIENCY of patent claims that are allowed (patentability); such confusion leading to unpredictable results at the office and in the courts.

              It would be so much clearer if we said, “we test for abstraction here, like this, and we test for abstraction there, like that”.

              But yes, I think we are in very good agreement overall. It’s the auspices and day-to- day procedures that concern me, because they are the basis for much of the racketeering that still goes on.

            2. 2.1.1.1.1.2

              Random the legal differences today are 1) the difference between a million bucks to litigate patentability and $50K to litigate eligibility, 2) the intended, or unintended confusion in the minds of examiners, inventors, judges, lawyers, and the public between the KIND of patents that are allowed (eligibility) and the SUFFICIENCY of patent claims that are allowed (patentability); such confusion leading to unpredictable results at the office and in the courts.

              It would be so much clearer if we said, “we test for abstraction here, like this, and we test for abstraction there, like that”.

              But yes, I think we are in very good agreement overall. It’s the auspices and day-to- day procedures that concern me, because they are the basis for much of the racketeering that still goes on.

              1. 2.1.1.1.1.2.1

                That “racketeering” is NOT limited to one side of the philosophical argument, Mr. Snyder.

                Beware the trap of “these ends justify any means.”

                1. No reasonable person would say the ends justify ANY means.

                  Any reasonable person would say a modest judicial trimming of an out of control rent distributing regime built on obsolete /anachronistic statue is a means WELL worth the ends.

                2. Agreed.

                  But, there are still a lot of people who defend our use of the A-Bomb and the Brits used of terror-bombing during WWII.

                3. Wow – that’s some serious “Oops – here is my bias” revelations there Mr. Snyder.

                  You let that agreement that got you out of the lawsuit fester like that, and it will consume you – and NOT in a good way.

                  But more and directly to the point, OUR Constitution is explicit about which branch of the government has the authority to write the statutory law that is patent law.

                  Your inordinate desire to violate the Constitution and the proper separation of powers is most assuredly NOTWELL worth the ends

                  You good sir, are the epitome of how NOT to let the ends justify the means, as you remain blissfully unaware of the very danger of runaway emotion.

                4. …and Ned, it is your very own selective application of when to “take umbrage” at violations of separation of powers that places YOU in that very same type of group that you seek here to scorn.

                  Your long running OVER-adoration of the Supreme Court simply is at odds with the very doctrine in front of you – and your present rather unique for commentators here opportunity to make a separation of powers argument before the Court (assuming that you still have some interaction with the attorney for MGM that will be before the Court).

                  For some inexplicable reason, you seem unable (or unwilling) to recognize that the separation of powers doctrine applies to each and every combination of the three branches of the government.

                  I asked on a recent thread – and again received no answer from you, but maybe this time you will answer:

                  Ned, you are most correct that the executive branch agency here is not above the law.

                  This does bring up a more extensive (and longer open question that I have often put to you):

                  Is there any single branch of the government above the law?

                  And the related question:

                  What does your state attorney oath actually state?

                5. “No reasonable person would say the ends justify ANY means.”

                  He has OCPD brosef. He’s all about rules, control, etc.

                6. ^^^ and 6 with the mindless and errant ad hominem.

                  Maybe you want to note the substantive point here 6 (and how once again, I am correct…)

  31. 1

    so long as a claim is narrowly tailored to what the patent applicant has actually invented and reduced to practice

    I feel like this boils down to central claiming versus boundary claiming. How would you square our boundary claiming system with the notion that claims should be “narrowly tailored” to what the applicant has “actually…reduced to practice”? Or do you support moving back to central claiming?

    1. 1.1

      Or does “actually reduced to practice” mean by the filing of the application? Or is the latter still constructive reduction to practice under this scenario?

      1. 1.1.1

        My inclination is that there is an unstated academic (possibly even subconscience) desire to eliminate constructive reduction to practice…

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