- Joseph Herndon: Qualtrics v. OpinionLab
- Steve Brachmann: IP Litigation Report Shows Downward Trends In Patent, File Sharing Copyright And IPR Cases
- Eric Caligiuri: Court Orders Plaintiff To Pay Defendants’ $8 Million In Attorney’s Fees In Patent Row
- Lynda J. Oswald: The ‘Strict Liability’ Of Direct Patent Infringement
- Jacob Gershman: Congress May Be About To Shake Up Trade Secret Law: Is That A Good Thing?
- Will Heilpern: A Chinese Sportswear Brand Called Uncle Martian Just Launched, Openly Ripping Off Under Armour
Get a Job doing Patent Law
As Ned Heller points out below, at 2.3.1.3.1, the English Statute of James recognised the restraint of trade which exclusive rights generally engender but contemplated an exception, namely a patent right, but one confined to the useful arts, to any “manner of new manufacture” (ie machines, products and manufacturing processes). See:
Parliament, in the 21 James 1., taking encouragement from
the courts of law, prohibited the granting of exclusive
privileges in trade, by the Statute of Monopolies, they introduced
an exception in favor of “letters-patent and
grants of privilege for the term of one-and-twenty years or
under, heretofore made, of the sole working or making of
any manner of new manufacture, within this realm, to the
first and true inventor or inventors of such manufactures,
which others at the time of the making of such letters patent
and grants did not use, so they be not contrary to
law, nor mischievous to the state, by raising the prices of
commodities at home, or hurt to trade, or generally inconvenient,”
After a long professional life as a patent attorney, getting patents and knocking them down, I think that, even today, the unrestrained grant of exclusive rights, in fields other than manners of new manufacture, will continue to be a nuisance, a mischief and a restraint of trade, not conducive to promoting the progress of innovation, industry, commerce and trade or the general welfare.
Ned is incorrect in his view that the US simply adopted ALL English law regarding patents.
He also suffers from the (repeated) attempts to diminish the statutory category of process as a mere vehicle and sub-category of the hard goods categories.
It is an equal category, and is just not limited as Ned desires.
Your “feelings,” aligning as they do with Ned’s desires simply do not matter for US law.
Nothing personal, but our law is actually different.
Anon, what I said was a little more nuanced than what you said I said. But that said the Supreme Court has already confirmed that American patent law was derived directly from the English patent law, therefore its cases are pertinent to the extent that our statutes correspond to their statutes. Furthermore, we continue to cite English cases even today. Neilson v. Harford, Webster’s Patent Cases 295 (1841) was cited just a couple years ago by the Supreme Court in Mayo.
Now, anon given Federalist 43 and that James Madison said that our constitutional provision for patents and copyrights is based upon the common law, what did he have in mind? The common law of France?
Your “nuance” is a false driver, as you attempt to use “derived from” as a justification for your version of “exactly like.”
I just cut through your bull.
Max, Here! Here!
Practitioners should know that the origin of the rule that one cannot patent a principal in the abstract, a case we now refer to as Alice, and which was first discussed in O’Reilly v. Morse, was none other than an English case, Neilson v. Harford, Webster’s Patent Cases 295 (1841).
But more to the point, patentable subject matter has in the United States and in England has always been related to new manufacturers. Our statutes have spread this out into machines and compositions, but they are manufactures too because we do not allow patents on the discovery of compositions found in nature. Manufactures are things made by man, not discovered from nature, and not principles in the abstract. Manufactures are not methods of doing business, playing music, amusing cats, or processing information. Processing information can improve a machine or process, but processing information by itself is not patentable subject matter.
Should be, Hear! Hear!
And you should note the recent thread here pointing out just how bad the Supreme Court got those cases that you want to “celebrate.”
Below, there is acrimonious dialogue between anon and MM. So what’s new there then? But I mention it because both of These power users refer to a comment I made over the week-end on the PatentDocs blog (on the “Justice Breyer is a few sandwiches short of a picnic” posting). I’m thinking about the ambit of the “Printed Matter Docttine” and whether there are any “arts” that are neither “fine arts” nor “useful arts” but somewhere in between. The art of the deal, is one possibility, I would think. Even the entire field of new and clever ways to dress up the ages-old art of selling stuff.
Anyway, as I still have no useful answer to my question, I take the liberty of copying it and pasting it in, below, in the hope that somebody will reply with something useful. I goes like this:
Looking in from outside, I have what might be a silly question about eligibility.
I think it depends on what is the ambit of “useful arts”. As I understand it, to extend the reach of patent exclusivity beyond the “useful arts” would be un-Constitutional.
So it seems to me that it is the job of the Supreme Court to assist the lower courts to decide what new, non-obvious and useful innovation is within the ambit of the useful arts, and which are not.
And it seems to be that, up till now, for whatever reason, SCOTUS has ducked out of doing that.
Which I think is poor form. Could it not at least remind the CAFC that it needs to confine patent exclusivity to the useful arts, and task it with finding a workable test or definition? You don’t need a PhD in cell biology or computer science to make that contribution to promoting the orderly progress of patent law, do you?
Max, the Supreme Court analysis is even less correct than you imply. The Constitution grants to Congress the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
If we excise the copyright-specific parts of that, we get “To promote the Progress of Science and useful Arts, by securing for limited Times to … Inventors the exclusive Right to their … Discoveries.”
So really the subject-matter-defining-word is “discoveries,” not Useful Arts or Science, although the presence of those words illuminate the benefit that Congress should be aiming for when granting exclusive rights to discoveries.
Notice that Scotus says scientific discoveries are products of nature and hence unpatentable, when looking at the words of the constitution one could argue that scientific discoveries, as well as useful arts discoveries should be patentable.
Well yes, I see that, but (in context) what did they mean by “discoveries”? Not what you suppose, I’ll wager.
To “discover” something used to mean “to open it up to scrutiny” as in the “discovery” process in litigation. So what the patents clause is saying is that you can have exclusive rights but only in return for an enabling disclosure commensurate with the ambit of your patent.
Max, the court was invited to declare the claims in Bilski as directed to subject matter not within the useful Arts. Scalia decided no to go that route, but instead went with Kennedy’s abstract. That decision by Scalia, more than anything else, has cause the chaos we have today in patent law because we have a word, abstract, that had no well defined meaning and is being treated almost as a nonce word.
At least, useful Arts was fairly well understood in 1789. We actually put “useful” “Art” into the original patent statute. At the time, in England, it fairly well meant harnessing the powers of nature to produce new manufactures, which in England, included machines and compositions. See, e.g., Curtis, Sections 9 and following.
Thus, we need not interpret the constitution so much as we need to interpret the statutes, which, from the beginning, have included “useful Arts.”
And, it is also axiomatic, that we construe a statute for what it meant at the time it was enacted, 1790 in the case of useful Arts.
’m thinking about the ambit of the “Printed Matter Docttine” and whether there are any “arts” that are neither “fine arts” nor “useful arts” but somewhere in between. The art of the deal, is one possibility
Or the art of making friends. Or the art of lovemaking. And don’t forget the super fine art of passing blame onto others, the art of self-expression, and the art of the short story.
The more important point — the one relevant to the junk claim celebrated over at “Ph.D.’s Who Love Junk Patents” — is that the content of information that is being communicated or received via old techn0logy never suffices to convert a pile of unpatentable junk into a patentable or eligible claim. It doesn’t matter for eligibility (or 101’s stepdaughter, the so-called “printed matter doctrine”) if that content “describes a web page in subjective terms” or if the content “describes a painting by an Old Master.”
This is such a basic aspect of any sane patent system, and the claim at issue is so obviously a pile of junk because it fails to cross this two inch high bar, that it’s worth noting when a formerly “serious” blog not only utterly fails to address it but instead celebrates the claims survival.
Printed matter doctrine says that printed matter won’t be considered as distinguishing a claimed item from the prior art unless there is some interaction between the printed matter and the substrate it is printed on. The risk is that the patent will be held invalid under 102 or 103.
The problem with Scotus jurisprudence is that it holds the claim invalid under 101. If they were to apply the printed matter rationale and say “it is not new enough,” I think most of the bar could accept that analysis. But to toss a claim to a computer having a specific program on the rationale that the claimed computer is an abstract idea, or “Mere Junk” as you so eloquently put it, makes a rational discussion impossible and causes megafrustration.
SVG The problem with Scotus jurisprudence is that it holds the claim invalid under 101.
The so-called “printed matter doctrine” is a subject matter eligibility test. There is absolutely no problem — none — with holding a claim reciting, e.g., “an old data input box with non-obvious information typed in it” ineligible under 101.
If they were to apply the printed matter rationale and say “it is not new enough,” I think most of the bar could accept that analysis
If that’s true, then “most of the bar” is comprised of hypocritical hacks because the analyses are logically indistinguishable: you identify the ineligible subject matter in the claim (aka “claim dissection”) and you look at the rest of the claim to determine if there is some other eligible new technology recited that would rescue the claim. If there is no such eligible new technology, then the claim is d.o.a.
a claim to a computer having a specific program
There’s no “specific program” recited in the claim under discussion. Not even close. Perhaps you’re thinking of some other claim? Some imaginary claim that doesn’t exist?
to toss a claim to a computer having a specific program on the rationale that the claimed computer is an abstract idea,
Nobody is suggesting that “a computer is an abstract idea”. Either you’re willfully blind to the actual analysis, or you’re just ign0rant. That’s not the Supreme Court’s problem. That’s your problem. And it’s not really excusable in 2016.
Printed matter doctrine says that printed matter won’t be considered as distinguishing a claimed item from the prior art unless there is some interaction between the printed matter and the substrate it is printed on.
First of all, the so-called “printed matter” dotrine isn’t limited to printeing on a substrate. Second of all, “some interaction” is probably the most meaningless phrase you could come up with as a test for anything. But you don’t have a problem with it, apparently! That’s the hypocricy and hackery I’m talking about.
MM, regarding “computer “having” a specific program.”
What does this mean, in reality? Almost everyone points to computers running a specific program, and deny with extreme ferocity any requirement that the program be “fixed” to the computer for the computer + program to define a new machine.
So, what they want in reality to claim the software in the abstract by reciting the computer generically.
But software is nothing more than a set of instructions, albeit, reduced to a form that can be compiled and executed on a computer. These are not unlike the instructions one finds in a cookbook, except we do not typically automate the cooking process.
Now, if we allow one to patent software because it is functional with respect to a computer, then we can patent just about any use for a computer, from calculating math, to implementing a business method. But, as we saw in Alice, if we allow that, the patented software/business method effectively preempts the business method, just as Benson said to allow the claim in that case effectively preempted the claimed mathematical algorithm.
Because we cannot allow that, we cannot allow the patenting of software per se.
Simple, but complicated as well.
I laughed out loud when I read “computer with a specific program”. Huh? People, let’s be clear about one thing, that 101, 102 and 103 are not mutually exclusive. A claim can fail all three hurdles.
My original point was that not all aspects of cleverness count as non-obvious in the sense of 35 USC 103. In context, only some non-obviousness ought to count as non-obviousness carrying weight under 35 USC 10, namely, non-obviousness within the ambit of the useful arts.
The same thing can be said of 102, that not all aspects of newness count towards patentable “novelty”.
And it is helpful to me to read MM on the shear “reach” of the PMD in the context of 35 USC 101. So that claims can be dismissed under 101 without having to do any 102 or 3 heavy lifting.
Thanks to all who have contributed.
Silicone, The Feds recently held the printed matter doctrine relates to the meaning of the printed matter. Now, this makes a lot of sense, so much so that we need to urge that this is what the Supreme Court meant as “abstract.” If that is accepted, the 101 analysis (other than for products of nature or laws of nature) merges completely with the printed matter doctrine where the “enough” is the functional analysis.
Consider, the courts have recognized that one can patent an invention where novelty is in the machine, conventional process or composition even though the claim subject matter includes something otherwise unpatentable. That is lesson gleaned from Diehr, Mayo and Alice. A claim can resolved at the 101 level only if the subject that is otherwise patentable subject matter is claimed generically or is admittedly old and where the unpatentable subject matter adds nothing to it in terms of new functionality.
This is the printed matter doctrine.
Ned, the In re DiStefano case of the Fed. Cir. in January 2016, supports my statement of the law better than yours. in the slip opinion at page 5, they say :” However, we have long held that if a
limitation claims (a) printed matter that (b) is not functionally or structurally related to the physical substrate holding the printed matter, it does not lend any patentable weight to the patentability analysis. … In performing this analysis we do not strike out the printed matter and analyze a “new” claim, but simply do not give the printed matter any patentable weight: it may not be a basis for distinguishing prior art.”
Thus, if the printed matter is given no weight and the resulting claimed invention is not novel, the invalidity is based on section 102. In the DiStefano case, the court found it appropriate to give patentable weight to the matter asserted to be printed matter and therefore reverse PTAB’s holding of unpatentability under section 102.
Arrrghhhh!
Silicone, and why is printed matter given no weight?
You have done here the same thing that Rich did in State Street Bank, for pities sake.
“Arrrghhhh!” right back at you Ned.
Revisit the Simple Set Theory explanation that you are only too eagerly acting as if the critical exceptions to the judicial doctrine of printed matter did not exist.
Ned, I am just following what Fed.Cir. said in DiStefano and lots of other cases. What is the big deal? Why do we have to use a different mode of analysis?
If I claim a new and nonobvious manufacture and add to my claim, “and it has “Mary had a little lamb” written on the case, we give the writing no weight, but still say the claim is patentable because it satisfies 101 as a manufacture, it satisfies 102 and 103 as new and non0bvious.
Using your mode of analysis, since part of the claim recites some written matter, we should say it is not patent eligible under 101.
Silicone, claims can have mixed subject matter, some eligible, some not. Since Hotel Security, ignored/overruled by Rich in State Street Bank, invention must be in the eligible. If there is, the presence of the ineligible does not pose a 101/102/103 problem, although it still might pose a 112 problem.
Alice operates basically requires the same thing, that invention be in something otherwise eligible. Now if we know that math is not eligible, but if applied in a machine or process to improve that machine or process, it can result in a patent eligible invention considered as a whole.
When the claim is directed to math however and the other elements are generically recited and the math is not applied to improve anything, but the generic elements are simply used to gather data, provide the means for calculation or the like, the claim as a whole is ineligible because there is no invention in anything eligible.
Ned,
Several people (including Prof. Crouch and David Stein) have ripped you apart for your improper use of the Hotel Security case.
The invention is “in” the claim as a whole.
You keep on wanting to apply a pure dissection and “Point of Novelty” in the 101 sense when such are just not in accord with the law as written by Congress.
Further, software is not math.
Please stop your dissembling.
if the printed matter is given no weight
It’s not given any weight because it’s ineligible subject matter. You can’t protect information directly with patents, nor can you protect it “indirectly” by limiting its protection to a prior art technological context.
Besides, what happened to “claims as a whole”? That’s expressly part of 103. The analysis you’re providing is simple “claim dissection”, which — as the patent maximalists have told us forever — is the worst thing ever.
That’s the hypocritical hackery I referred to above.
As for this: in performing this analysis we do not strike out the printed matter and analyze a “new” claim, but simply do not give the printed matter any patentable weight
that’s just more hacktackular nonsense. “Not giving printed matter patentable weight” is just another term for “claim dissection.” The CAFC, of course, went too far down the wrong tunnel to admit what’s going on. But that’s what’s going on. And it’a good and necessary thing! It’s also referred to as “basic logic”.
“Not giving printed matter patentable weight” is just another term for “claim dissection.””
No, it is not.
Quite in fact, that is the very “hackery” that you just accused others of.
Gee, Malcolm accusing others of that which he does…
“Go figure Folks”
And I could present a dozen simple hypotheticals proving that you are wrong, and everyone would understand on only that you are wrong, but also why you are wrong. I’ve done that before, of course, maybe hundreds of times already.
In response, you would inevitably reply that the hypotheticals are “impermissible” and then you’d put your tail between your legs and lapse into your habitual and childish insult-hurling.
So celebrate your “victory”, “anon”! You’re a super serious person and ignoring ineligible subject matter after you’ve dissected a claim and evaluated the other elements is totally different from dissecting a claim and determining that the ineligible subject matter isn’t rescued by the remaining elements. Because you say so! Yes. Very serious indeed.
The usual accuse others meme once again as it was you that ran away time and again in the recently excised string of comments.
As for “your habitual and childish insult-hurling, since you do not stop, you cannot lapse back into it (but that’s not a good thing).
Ned can probably give you cites on this, including the famous Pasquale (“Pat”) Federico study, but as Wikipedia notes: “Some terms in the [copyright and patent] clause are used in archaic meanings, potentially confusing modern readers. For example, “useful Arts” does not refer to artistic endeavors, but rather to the work of artisans, people skilled in a manufacturing craft; “Sciences” refers not only to fields of modern scientific inquiry but rather to all knowledge.[2]”
Note the the latter thus arguably more clearly applies to copyrights, besides the parallelism of sentence construction.
Paul, we know from Federalist 43 that the patent clause was intended to protect common law copyright and common law inventors rights. Also, Pennock v. Dialogue recognized that patent statute is a direct descendant of the English patent statute, and has and was intended to have the same meanings the similar terms had in England, as developed by the common law courts, at the time of their adoption in the US.
Thus, any interpretation of the constitution and patent and copyright statutes as they were first enacted in 1790-1793 that is not faithful to common law in 1789-93 has to be erroneous.
As discussed by Curtis, the common law patent right is actually an extension of the inventor’s “trade secret rights.” See this from the ’67 version of his treatise, at xxi-xxii:
You are being more than a bit glib with the transition from common to statutory law here Ned.
I “get” that you would rather have patent law somehow continue to be a “common law” item here in the US (which would permit more of that Supreme Court law writing), but that is not the case, and being glib on this point is not helpful.
(This too goes to the separation of powers understanding – if you want to “preach” this to the Supremes in your other case, it behooves you to understand – and show that understanding – that separation of powers exists for ALL of the branches of the government.
Certainly, common law rights as discussed by Federalist 43 and by Curtis are the property rights of individuals that can be enforced in the common law courts with suits for damages.
Long before the United States existed, patent law had been in development in the common law courts — since at least the early 1600’s. As early as 1602, the courts recognized that the validity of patents was properly litigated in the common law courts.
How often have you anon stated that patents are property? Well they are property because they can be enforced in the common law courts for damages. Patent owners have had that right for at least 400 years.
You missed the point (and badly so):
The US transitioned patent law into a statutory law environment.
Yes, there are protections carried over from the property aspect, but that is not the point. The point is – as I plainly stated – US patent law is NOT common law driven. And this is by design of our Constitution.
And, might I add, in actual trade secret litigation, the trade secret proprietor is required to establish his trade secret, and its novelty, to a degree equivalent to patent specification and claims. What would be salutary in a national trade secret law would be a requirement that the only trade secrets that could be protected in federal court absent emergency circumstances would be secrets described in the equivalent of a provisional patent application, to the extent claimed, and to the extent they are confirmed to be novel, via examination, over that which is in the public domain — with the complete understanding that the subject matter of the trade secret patent be kept confidential.
Your “version” of Trade Secrets should be clarified as having nothing to do with the current state of Trade Secret law.
Casual readers may be led astray by your portrayal here of your desire as if that some how is more than just your “want.”
Yeah, sure anon. A big company waltzes into court and says , “I own trade secrets in the area of “bamboozle”. This guy, this pirate, this ex-employee, is going to work for my competitor that works in the area of “bamboozle”. Enjoin this MF.”
Do you see anything wrong with this?
Your parade of horribles has nothing to do with my post, Ned.
Maybe you want to reply on point?
Well, anon, in real trade secret litigation, the owner must prove the trade secret. Now this gets down to specifics, very much like a invention is described in a patent specification. But it is also like proving an invention during an interference. But not only that, one has to show that the trade secret is not “known.”
One really does not have to resort to trade secret litigation if the employee simply walks out with confidential data. Breach of contract.
Prove?
Sure.
Much like an invention described in a patent application?
Not even close.
The acrimony (and that from Malcolm, as clearly even he thought I was “celebrating” stemmed from the fact that Macolm refused to actually provide the law that he claims he knows so well.
I merely was going to hold him to it, no matter how many times he squirmed.
Note as well, that even after his balony was expunged, he is right back with the v@p1d ad hominem.
Great job Prof. – you are going to need something different.
Ned, BTW, did you file your brief in MCM yesterday (as I believe you mentioned was the plan)?
Ken, yes we did. If no one else posts it, we will have it up on our website on Monday.
Ken, here is the link. link to alliacense.com
Ken: link to alliacense.com
Thanks Ned! Hey, I notice there that you argue how your case is a better vehicle for the issue than Cooper, but might it perhaps be beneficial if the Court hears both together (like it did for the willful damages issue recently)? Or is your position that there are no advantages to including Cooper?
Ken, we think the presence of HP, of the 7th Amendment, and the absence of justiciability issues makes our case better if they are going to choose one over the other. Ideally, the court does not exclude either one of us from arguing.
Typically, the non-chosen party must simply stand by and wait. At other times, the court takes both cases and consolidates.
We simply believe our case has a better status no matter how one looks at it — if there is to be a choice.
Ken, if I were Cooper, I would petition from the IPRs ASAP. Those petitions would be contemporaneous with our own, and would eliminate all justiciability issues.
The big eddy P III up ins!
“JUDGE PERRY: Counsel, are you saying that
it is beyond the skill of one of ordinary skill at
the time of this invention to put multiple
functions integrated into a single chip?
MR. HELLER: Not at all.
JUDGE PERRY: You are not saying that?
MR. HELLER: Not at all when you have a
motivation to do so.
JUDGE PERRY: Isn’t it kind of a common
practice for those who design integrated
circuits to put multiple functions into those
circuits?
MR. HELLER: It probably is common practice,
but they have to have a motivation to do so.
JUDGE BISK: Is there some reason not to put
them on a single chip? It seems like it is just a
design choice, whether it is one chip, two chips,
10 chips. Is there a particular reason why the
number of chips matters?
MR. HELLER: It is not that. It is, why would
you do that? Why would you put all that
functionality into a single chip?”
Ned bro, you could have done better here. Explaining why it is more difficult to achieve that integration and why one of mere ordinary skill would not do so without solid motivation to do so (note what the ordinary skill level should be found as being as a fact if it helps you) and why the integration itself would fairly be characterized a patentable/eligible invention unto itself.
6, and I did. Look at the full quote, not the excerpt. I continued:
10 MR. HELLER: It is not that. It is, why would you
11 do that? Why would you put all that functionality into a
12 single chip?
13 Let’s go back to the figure for one second and
14 take a look at what Kobayashi actually discloses.
15 It discloses the use of an ATA controller 124.
16 That is the same controller that is on the flash cards.
17 Now, if you put that ATA controller into a single
18 chip, that ATA controller cannot be the same controller on
19 the flash cards. It would defeat the whole purpose of
20 Kobayashi to put the same controllers on the flash cards into
21 the reader.
22 I mean, you basically are defying, defying
23 Kobayashi to do the reconstruction according to our claimed
24 invention.
25 Now, once you decide to put the functionality of
1 two circuits together into one larger integrated circuit, it
2 is well within the skill of the art. Perhaps you could
3 figure out how to put an optical, a physical optical detector
4 into a chip, but I think you can’t do that, but our claims
5 require that functionality, and we disclose how to do it in
6 our specification.
7 We have this medium ID, and that is in the claims.
8 All that functionality is not in Kobayashi. And there is no
9 suggestion by Hewlett-Packard in its petition to combine —
10 reconstruct Kobayashi according to our claims.
11 They just proved that Kobayashi somewhere
12 scattered about on this reader has the functionality of our
13 claimed invention.
And, 6, given the larger quote, don’t you think it was a tad bit unfair for both the Board and the Federal Circuit to take one bit from a larger discussion as if there was nothing else said?
That does seem a bit odd.
“And, 6, given the larger quote, don’t you think it was a tad bit unfair for both the Board and the Federal Circuit to take one bit from a larger discussion as if there was nothing else said?”
LOL – happens all the time here Ned. In fact, you are often the perpetrator (think exceptions to the judicial doctrine of printed matter).
O all good.
Comments are closed.