Guest post by Bart Eppenauer. Mr. Eppenauer is the Managing Partner of the Seattle office of Shook Hardy & Bacon and former Chief Patent Counsel at Microsoft. In the interests of disclosure, Shook represents three of the many defendants/appellees in the McRo (Planet Blue) case discussed below. Mr. Eppenauer is not involved in that case.
We have reached a pivotal moment for the courts to provide more meaningful guidance on the contours of what actually is patent eligible subject matter (rather than what is not) and a workable framework for applying such guidance. A number of important cases are before the U.S. Supreme Court and the Federal Circuit involving patent subject matter eligibility in the wake of Alice v. CLS Bank Int’l and Mayo Collaborative Services v. Prometheus Labs. Given the high invalidation rate of patents on Section 101 grounds at the Supreme Court, Federal Circuit, U.S. District Courts, and the Patent Trial and Appeal Board (PTAB), interested stakeholders have justifiable concerns on the future value of patents involving software and life sciences, and the fallout this could have on American investment in these crucial industries.
On March 21, 2016, Sequenom, Inc. filed a Petition for Writ of Certiorari seeking to overturn the Federal Circuit’s decision invalidating its pre-natal genetic testing patent as a patent ineligible natural law or phenomenon, in Sequenom, Inc. v. Ariosa Diagnostics, Inc. Ten days earlier, Versata Development Group also filed a Petition for Writ of Certiorari challenging multiple findings by the Federal Circuit involving a Covered Business Method (CBM) Patent Review by the USPTO invalidating its software based hierarchical pricing engine patent. See Versata Development Group, Inc. v. SAP America, Inc. Petitions for Writ of Certiorari on subject matter eligibility were also filed in March in Cloud Satchel v. Barnes & Noble and Vehicle Intelligence Safety v. Mercedes-Benz USA. At the Federal Circuit, several important “abstract idea” cases are soon to be decided, including McRO (Planet Blue) v. Bandai Namco Games America on patents for automated lip synchronization of 3D animated characters, Intellectual Ventures v. Symantec involving malware and spam detection and email filtering patents, and Thales Visionix v. USA relating to a helmet mounted display system patent. Several of these cases could provide an excellent opportunity for the courts to provide more clarity on application of the Mayo/Alice test under Section 101.
The Sequenom case in particular may be the right case for the Supreme Court to reexamine the boundaries of Section 101, especially given the dramatic, if not unintended, impact that Mayo and Alice have had on subject matter eligibility decisions. At the heart of Sequenom, the Court has another opportunity to determine whether a novel method is patent eligible when it involves the research and discovery of naturally occurring phenomenon. Petitioner Sequenom asserts that the Court’s Mayo decision set out uncertain and indiscernible limits on Section 101 doctrine that has eroded trust in the patent system, such that the issue is “particularly life-threatening to life-science innovators.” (Petition p. 12). Several Federal Circuit judges seem to agree with this proposition. In his concurrence in affirming the district court’s decision under Section 101, Judge Linn remarked:
I join the court’s opinion invalidating the claims of the ’540 patent only because I am bound by the sweeping language of the test set out in Mayo…. In my view, the breadth of the second part of the test was unnecessary to the decision reached in Mayo. This case represents the consequence—perhaps unintended—of that broad language in excluding a meritorious invention from the patent protection it deserves and should have been entitled to retain.
In their concurrence on denial of rehearing en banc, Judges Lourie and Moore also strongly asserted that the Sequenom claims at issue were neither solely directed to a natural phenomenon, nor abstract, and “it is unsound to have a rule that takes inventions of this nature out of the realm of patent-eligibility on grounds that they only claim a natural phenomenon plus conventional steps, or that they claim abstract concepts.” But these judges agreed that the Federal Circuit panel “did not err in its conclusion that under Supreme Court precedent it had no option other than to affirm the district court.” And in his separate concurrence of denial of rehearing en banc, Judge Dyk noted:
Yet I share the concerns of some of my colleagues that a too restrictive test for patent eligibility under 35 U.S.C. § 101 with respect to laws of nature (reflected in some of the language in Mayo) may discourage development and disclosure of new diagnostic and therapeutic methods in the life sciences, which are often driven by discovery of new natural laws and phenomena. This leads me to think that some further illumination as to the scope of Mayo would be beneficial in one limited aspect. At the same time I think that we are bound by the language of Mayo, and any further guidance must come from the Supreme Court, not this court.
Without question, Section 101 is no longer a “coarse filter” for subject matter eligibility, as many jurists and practitioners believe it should be. That is evident from the recent landscape of Section 101 decisions since Alice. Of the more than 250 federal court decisions invoking Section 101 since Alice, 70% of those cases have found the patent invalid. And at the Federal Circuit, DDR Holdings v. Hotels.com stands alone as the sole decision upholding the patent under Section 101 among 31 decisions since Alice. My optimistic view that DDR Holdings would forge a sensible path on software patents and that more decisions would follow this path has simply not proven true to date. Nonetheless, given that so many of the patents before the Federal Circuit involved simple financial or business practices or other non-technical practices implemented on generic computers, there still may be hope that DDR Holdings will provide the underpinnings for further decisions clarifying the eligibility of software technology inventions.
Perhaps the nearest opportunity for such a clarification lies in the McRO/Planet Blue case, where we can expect a decision at any time. The case has been noted as a case to watch on software patentability in that the patents at issue arguably utilize complex and specific computer-implemented techniques for automated lip synchronization of 3D animated characters. Based on questions and comments from the judges during oral argument, the Federal Circuit may view this case as involving a technology-based patent that will dictate a different outcome under the Mayo/Alice test than so many of the negative decisions on business method or ecommerce patents with token computer implementation.
It will most likely be several months for a decision in Intellectual Ventures v. Symantec as the Federal Circuit heard oral argument on April 6, 2016. Intellectual Ventures (IV) argues that its patents are designed to improve computer network security through novel approaches to malware and spam detection and email screening. As such, IV believes that their patents solve problems “specifically arising in the realm of computer technology” and DDR Holdings demonstrates that the patents are patent eligible. Symantec counters that the IV patents use generic computing technology to apply basic concepts such as using the Dewey decimal system on digital files or applying standard mail routing practices to email instead of postal mail. IV likely has a better argument that DDR Holdings should apply than many of the recent Federal Circuit decisions where that argument has failed, but I could see this case going either way.
The Thales Visionix case involves a patent for helmet-mounted display systems (HMDS) for use in defense and aerospace applications such as the F-35 Joint Strike Fighter. Unlike traditional heads-up display systems which require a pilot to look straight ahead at a display to read tactical information, a HMDS projects tactical information onto the interior visor of a pilot’s helmet. This frees the pilot from looking straight ahead at a fixed point to receive the displayed information. The claims at issue are not as specific as their intended application, yet recite a motion tracking system that includes inertial sensors and an element for receiving signals from the inertial sensors to determine orientation of a tracked object. The Court of Federal Claims judge applied Alice in a sweeping fashion and found claim 1 amounted to nothing more than a system of generic inertial sensors and a receiving element, and claim 22 as nothing more than an instruction to solve a navigation equation. In concluding that the ultimate concern under Section 101 is one of “preemption,” the judge found that the scope of the patent’s claims is insufficiently limited under Mayo and Diamond v. Diehr, and granted the motion for judgment on the pleadings. Frankly, I was quite surprised to see this decision, and believe that it is an unfortunate example of the Mayo/Alice framework taken to its extreme. Briefing is ongoing in the case, so a decision is months away.
We are at a critical juncture on defining the proper scope and application of Section 101. Unless the judiciary delineates a clearer framework for enabling meaningful patent protection in areas like biotech and software where America has been a technology leader, the U.S. could rapidly lose its competitive edge in these vital industries. Without this guidance, the U.S. will cement its recent reputation as even more restrictive and less open to patenting important new and potentially life-saving technologies than other jurisdictions such as China and Europe, which was unthinkable just a few years ago. It is critical that the Federal Circuit take the opportunity in one of these pending cases to provide meaningful guidance on the proper scope and contours of patent subject matter eligibility applied to software related technology. Even more importantly, the Supreme Court should agree to hear the Sequenom case and clarify (or revise) its Mayo/Alice test to ensure that meritorious inventions in life sciences and software remain patentable. While I don’t believe it is yet time to take legislative action, recent calls for the abolition of Section 101 entirely and dissatisfaction with application of the Mayo/Alice test is reaching a critical level. These key cases offer a significant opportunity to establish much-needed clarifications. Should this opportunity be missed, it is hard to see how Congressional action can be avoided.
I remember J. Rader talking about case similar to this. I remember lots of loud mouths in the class saying stuff like MM and Max. Then I remember Rader saying, you know, what is interesting is that by not allowing this type of patent that there isn’t any innovation in this area. As for the hair cutting, my guess that in practice the only enforcement would come with training materials. So, maybe there are better ways to cut hair, but without patent protection we may never find them.
(By the way, for the typically ignorant on the blog, without patents there is case where an individual may not take the time to discover something because the effort is greater than the benefit a single person will receive.)
But, you little minds that want to somehow take elements of a claim and assert they are witches keep your yapping with the K Street back by Google destruction campaign.
maybe there are better ways to cut hair, but without patent protection we may never find them.
Maybe the best way to cut hair requires some kind of superintelligence that only alien beings possess.
Why aren’t we spending more money trying to contact those aliens and travel to their wonderful civilizations?
It’s because people with little minds are afraid of aliens!
O, Magic Rader, please lead us to the promised land! You knew a thing or two about hair.
Joining the thread late but 21.1.2 caught my eye. Why? Because it is for me an excellent rebuttal of the notion that when the claim (see comment 21) is directed to a process of performing a haircut you can dispense with 101 filtering because the necessary filtering of patentability can be done just fine under 103.
Now that may be so at the EPO, where the only sort of non-obviousness that counts towards patentability is that which solves a technical problem.
But in the USA there is no such limitation of the obviousness enquiry is there? And the steps of the Comment 21 claimed process strike me as far from “obvious”.
MD: the only sort of non-obviousness that counts towards patentability is that which solves a technical problem.
But in the USA there is no such limitation of the obviousness enquiry is there?
In fact there is such a limitation on the obviousness inquiry. The so-called “printed matter doctrine” definitely “puts a limit” on the extent to which applicants can rely on the rectitation of information (which is abstract and not technology) to overcome a prior art rejection (under either 102 or 103).
Note that it has been recognized for quite some time that the so-called “printed matter doctrine” is rooted in subject matter eligibility concerns. But neither the PTO nor the CAFC acknowledge that relationship as a matter of course when discussing or applying the doctrine. See, e.g., link to uspto.gov (2112.01, part III).
Yay incomplete post by Malcolm, who has volunteered admissions against his interests in knowing and understanding the full judicial doctrine, including the important exceptions to that judicial doctrine.
That’s right, folks: I do understand more about the so-called “printed matter doctrine” than “anon” or any of his cohorts ever will.
As to why this admission is “against my interests,” well, you’ll just have to ask “anon” to explain it. He’s a very serious person, after all! And totally not a hypocrite. We must pay attention to his wonderful stories.
A whole lot of the conversation is changed with such selective edits (leaving the offending blight in place and removing a post that uses a word that you allow Malcolm to have used…
How nice (yeah, let’s go with that) of Malcolm to NOT provide the full import of that judicial doctrine / omitting that portion of which he has volunteered admissions (against his interests) of knowing and understanding.
I even laid out a direct (with short declarative sentences) and simple Set Theory explanation of the exceptions to the judicial doctrine of printed matter that he finds so inconvenient to his charades.
Thanks for that, MM, but holding on to the haircutting claim I do not see any way to invoke the Printed Matter Doctrine when testing its patentability against 35 USC 103. That is why I saw the haircutting claim as a useful one for revealing how the obviousness test at the EPO will swiftly scalp bad claims whereas the one at the USPTO can’t even get near them.
“ swiftly scalp bad claims ”
MaxDrei,
You presume that this “must be” a “bad claim,” and act as if the U.S. law needs to be different.
As I said – please respect the differences in sovereign law. Your “here, where my eyeglasses, they work for me” comments are not pertinent.
…and once again let me remind MaxDrei to respect the differences in sovereign law and the fact that the US sovereign has chosen a larger-than-“technical,” Useful Arts basis for our patent system.
Why do I have to repeatedly remind MaxDrei of this?
Does he not have a mind capable (and not even getting to willing) to understand?
Yay Merry Go Rounds.
Lets assume Greg’s questions below about the haircut patent are taken in good faith. Here are the key problems and solutions in the current system, with no further legislation needed and no required change to Section 101.
1) Process patents should be construed as a matter of law. The word “process” implies a result, in every instance. No result; no process. It’s a legal absurdity to find a tort in performing a series of steps with no goal. One result per method per patent, just as one invention is allowed overall per patent.
2) The result of this example method could reasonably be construed to result in a haircut, or the method could end with a plan for a haircut being made available to a hair cutter. Likewise, a new medical use of a known substance can be construed as the information about the use, or the physical result of the compound on the body of the patient.
3) The result must be mapped to a statutory category to determine eligibility. This seems basic to the structure of the patent act.
If the result is the haircut, that is reasonably a manufacture or composition of matter claim. As always, patentability under 102/103 would be explored using the prior art haircuts given by the hand of a haircutter. That is going to be found obvious and anticipated in short order.
If however the result is found to be the haircutting plan, the only possible statutory category available is process. Because a plan is information, and all information is abstract, it would currently not be eligible under the abstract ideas exception, even if the plan is new, useful, and fully described.
And that’s the real problem we have. We have no reliable way for the patent system to deal with information inventions.
4) Assuming we did have a means to decide which abstract information could be patented and which could not, information inventions inherently present challenges to fair adjudication more akin to copyright law than patent law. Both strands of IP law have been painstakingly developed for the kinds of subject matter dealt with by each.
5) There is one literal test for abstraction available; human consumption of information. Abstractions can only exist when hosted by a human mind. All information consumed by a human being is automatically abstract and should be beyond the legal system; Constitutionally beyond it.
The test for abstraction should be intrinsic at eligibility and like copyright at patentability. If the useful result of method is information, and the information is consumed by a person, the method should be intrinsically ineligible.
6) Determining claim breadth, full description, and the influences that make up some information inventions cannot start and end with PHOSITA.
For inventions that gain utility or value from the specific form of expression, as with copyright, there must be a combined inquiry between actual works to reach a decision. For those that are mechanistic (few ways or a singular practical way to express the information), the current patentability analysis should work fairly.
If the haircut algorithm (the plan) was being used by a haircut machine, it likely would be seen as a machine component and be patent eligible, but subject to a preliminary (Alice like) inquiry to determine if the information invention is too abstract for a patentability analysis under 102/103, and 112.
At that step, a haircutting plan likely would be not construed as gaining utility from the quality of its expression, and only expressible in a characteristic way as time ordered quantities and coordinates , and thus amendable to a 102/103/112 analysis.
Under that regime, it would likely quickly be found to be obvious, but were it a truly novel means of helping a robot cut hair, the purposes of the patent system would be furthered by allowing a patent on it.
The purposes of the patent system are not served by an arbitrary, insanely expensive and ultimately scholastic inquiry into the shades of expression available to people when they use forms of processed information to model the world. Not served at all.
My thoughts in depth on this subject can be found here.
Martin, flip. Go from the elements up not from the psychotic nonsense of Alice down. Only then will true enlightenment come to you.
MS: If the useful result of method is information, and the information is consumed by a person, the method should be intrinsically ineligible.
Why?
I’ve asked him this before. We all know that you people (like MM) have left the world of rational thought. You live in a world before 1900 where your thinking takes place in a spirit world and math and physical law are part of G*ds creation and not heuristics used by our brain.
Do you see and hear things too that aren’t there? My guess is yes.
Gotta love projection
You quite miss the point there Ryan in your haste to defend Malcolm.
Maybe instead of thinking “projection,” you might want to try to grasp the point that Night Writer makes: there is no “magic” other-dimension to what makes software work.
We just went over this the other day.
Nah I just think it’s funny that the board’s resident conspiracy theorist is talking about “things that aren’t there”
Like Google’s evil plan to replace all patents with trade secrets.
You just ran into a wall, eyes tightly clenched Ryan.
Google is very active in politics and shaping an anti-patent agenda – what you seem to intimate as “not there” is very much there.
MM: “If the useful result of method is information, and the information is consumed by a person, the method should be intrinsically ineligible.
Why?”
Excellent question.
1) because we already have an exception for abstract ideas, and human consumption of information is the literal act of creating an abstraction.
2) because ultimately the boundaries of the patent system remain a political question, which means lines must be drawn. Human consumption is an easy line for anyone to understand, it fits the existing scheme, and is intuitively the frontier beyond which no true fairness in apportioning “intellectual property” can be possible due to the inherent subjective reality of how information is put to economic use and human know-how is transmitted.
3) because if the patent system should, politically and practically, support information inventions (and I think it should), human consumption is a workable line between what rational people have always considered the world of patents (tangible things and processes) and the world of copyright (ideas, expressions, and performances).
4) because other than the interesting semiotic approach or the equally unworkable DDR “technical solutions to technical problems approach”, I am aware of no other realistic schemes except the complete ban on information inventions; which I could support although not prefer.
5) the status quo is untenable and if you removed inventions that deliver information to humans from the mix, a huge proportion of the mischief evaporates.
Utility cannot be cleanly separated from the expression of information inventions by any statutory scheme; it requires a case by case analysis as a matter of law, with factual underpinnings. That means that both the eligibility and patentability inquiries must be modified for information inventions.
That’s why.
Martin, I’m not questioning that some methods that produce “information for human consumption” should be (and are) ineligible, and I don’t think we disagree on why that is the case.
But I do question why you feel that all such methods that produce “information for human consumption” should be ineligible.
I’m not suggesting, of course, that lines shouldn’t be drawn so I’m not going to address that part of your answer.
You write: other than the interesting semiotic approach or the equally unworkable DDR “technical solutions to technical problems approach”, I am aware of no other realistic schemes except the complete ban on information inventions which I could support although not prefer
Two comments: assuming for the sake of argument that “technical solutions to technical problems” is DDR’s limit on eligibility, what’s “unworkable” about that?
What is the “interesting semiotic approach”you refer to, and what’s “unworkable” about it?
I’ll save my most important questions for last:
(1) if someone describes in their application, in objective structural terms, a new non-obvious device that produces “information for human consumption”, why should a method reciting the use of that device (recited in the same terms) to produce such information be ineligible? Because … easy to remember? Seriously?
(2) If someone describes a new non-obvious method of combining several specified chemicals with a specified target composition under specified conditions, wherein the reaction results in a previously unexpected and undescribed transformation of matter that is visible to the eye and whose only utility is to, say, inform a human that the target composition is poisonous, why should that method be ineligible? Because … easy to remember? Seriously?
MM
1) because that new device would be a machine under the patent statue, and thus not subject to the human consumption rule (only for processes that produce information, not equipment that produces information) Televisions, radios, etc. all deliver unpatentable content, but are patentable objects.
2) because the result of that chemical method is a new and useful composition of matter; it could just as well tell you by color who the manufacturer is or the age of the material etc. Its the fact of transmitting information, not the information itself being protected.
3) you can still patent a new and useful speedometer structurally distinct from the old speedometer, It’s a new machine, not a method. If you make an old machine (a computer) into a speedometer using a written program to cause the computer to indicate to a person some speed, forget about it. That’s what computers are for. Even if the method is new and useful, you have to draw the line somewhere. If the computer is telling some other computer the speed, and its new and useful, there is some chance of a reasonable and fair patent examination and litigation possible.
3) Collin’s paper on Semiotics
So your super easy test for eligibility (“if the useful result is information for human consumption the claim is ineligible”) is not, in fact, the test.
That’s what I figured but I wanted to be sure.
I’ll be frank because I think you can handle this: you need to exercise much more care in how you present your proposed tests or you will end up wasting everybody’s time. The bottom line here (and I think you have to agree with this) is that an eligibility test that looks at the result only is (as you put it) “unworkable”. You’ve already gone back to the drawing board. The key now for going forward is to remember what you just drew and not lapse back into quoting what you just erased.
As for your comment regarding my second hypothetical claim, you state my claim is eligible …
because the result of that chemical method is a new and useful composition of matter
That’s not my hypothetical. The composition of matter produced by my claimed method isn’t new (I didn’t say that it was, and it certainly doesn’t have to be) and the composition doesn’t have any utility other than the information it represents.
Again, I’m not really interested in hashing out the details of the “exceptions” that you are coming up. I am simply pointing out that your “easy” test knocks out more than it should (as even you appear to recognize) but that’s tolerated, evidently, merely because the test (as you originally articulated it) is “easy to remember”.
What critics see as pure “subjectivity” in the present jurisprudence is more accurately characterized as either “I don’t like that result!” (the vast majority of instances) or as examples of bona fide “nuance” (there are always going to be “gray areas” and judges are the ones who have to make the tough calls).
With respect to the Collins paper, I’m very familiar with it. I don’t agree with everything in there but it’s something that everybody interested in this topic should read and understand. Can you explain to everyone what is “unworkable” about the “semiotic approach” to eligibility set forth in that paper (in your opinion)?
From the bottom:
“Again, I’m not really interested in hashing out the details of the “exceptions” that you are coming up (with?).”
That actually would be a useful contribution.
“I am simply pointing out that your “easy” test knocks out more than it should (as even you appear to recognize) but that’s tolerated, evidently, merely because the test (as you originally articulated it) is “easy to remember”.
There is nothing funny or diminishing about the fact the my proposal is easy to remember- and easy to understand. If you want to restore some legitimacy to the patent system, the key parts of the bargain have to be intellectually accessible to everyday people in industry.
“With respect to the Collins paper, I’m very familiar with it. I don’t agree with everything in there but it’s something that everybody interested in this topic should read and understand. Can you explain to everyone what is “unworkable” about the “semiotic approach” to eligibility set forth in that paper (in your opinion)”?
I think the semiotic approach is sound, because it distinguishes between human interpretation of information, the notional shared meaning of the information, and the vehicle carrying the information. The human interpretation is impossible to adjudicate and not a Constitutionally proper place to allow government sanctioned monopolies. The shared meaning is essentially a copyright question.
Collin’s approach is unworkable because it’s difficult to understand, and likely an impossible task to instruct juries and the public in the nuances of semiotic construction, let alone Congresspeople.
Please dont stipulate that some line drawing is involved and that’s OK and then complain about line drawing if you dont intend to examine the lines. The chemical poison indication may well not be patentable as an information method- a judge would have to construe it. If the means of changing the color is not novel, and only the construct “that color X means poison” resides in the person, I dont know why that’s more than should be knocked out. Do you think the poison color with no new means to change the color is eligible today?
I like that your frank about things- it entertains me nearly daily. I’ve presented this paper to dozens of lawyers and professors this year, and not a single one has suggested that I am wasting their time with uninformed ravings.
Let’s assume most are too kind to say so.
Instead I often get very interesting philosophical comments back that are about politics and values rather than why this or that legal point that I am making is inappropriate or inaccurate or impractical. In fact, the single most common response I get is “that would probably work better than what we have now”.
To me, that’s encouraging enough to continue to press forward. I continue to refine as as new information comes to light man.
If you think you have me in some kind of gotcha with your hypos, I don’t get it. Yet.
Anyone with any education knows that one of the great frontiers is man/computer interaction. Just beyond comprehension that in the 2016 “people” would be having this conversation. Martin and MM you both should be ashamed of yourselves.
Could work, except for the part of 90% of Judges and Patent Examiners being completely unable to do those things.
Its just like how 112 has been eviscerated because Judges and Patent Examiners are mostly incapable of knowing whether a set of claims “particularly point[s] out and distinctly claim[s] the subject matter which the inventor or a joint inventor regards as the invention.” And they certainly can’t take those claims, and understand if they are then properly enabled under 112(a).
The result must be mapped to a statutory category to determine eligibility. This seems basic to the structure of the patent act.
Huh? It does not seem at all basic to me. That seems like a totally contrived premise with no basis in either history or public policy.
I think that the best way to sort claims into statutory categories is to look at the preamble, rather than to figure out the “result”.
The claim in Brown results in a haircut (if you do not end up cutting hair—i.e., if you only generate a “plan” for a haircut—then you simply have not practiced the claimed invention), but that does not make it into a claim to an article of manufacture. It is still a process, because the claim recites “[a] method of cutting hair comprising:…” and then lists a bunch of individual steps that must be peformed, including “using scissors to cut hair.”
It does not get much less abstract than “using scissors to cut hair.”
Deep thinking Greg DeLassus has a totally serious idea he wants to share! Here it is!
I think that the best way to sort claims into statutory categories is to look at the preamble,
Ah yes: the scrivener’s dream! What could possibly go wrong?
Let’s think about this for two seconds …
A process for cutting hair, comprising
thinking about the recent death of a celebrity, wherein said celebrity sported between twenty and thirty different haircuts over a thirty year period and wherein said celebrity was born in Topeka; and
cutting said hair with a scissors.
Eligible for patenting, Greg? You’re a very serious person so you must have thought about this deeply. Let’s hear your answer!
A process for cutting a customer’s hair, comprising
cutting said customer’s hair with a scissors;
accepting payment from said customer; and
providing the customer with a printed receipt for said haircut, wherein said receipt includes a picture of a purple unicorn.
Eligible for patenting, Greg? Let everyone know.
A process for cutting a customer’s hair, comprising
cutting said customer’s hair with a scissors while said customer is in a room;
accepting payment from said customer, wherein said payment is in the form of a debit card payment and wherein said debit card is linked to a checking account, wherein said checking account is shared with a second customer whose hair is dyed jet black, and wherein said second customer is a regular participant in games of chance at a casino located within five miles of said room.
Eligible for patenting, Greg? Let everyone know.
There are cases suggesting that processes must have a result. What is contrived about a requirement that the result be construed when challenged?
What if the method is claimed to stop at plan? The patentee designs the plan and downloads it to someone else who cuts the hair. It’s a process. Surely all of the novelty of the claims were in the plan. For that matter, why not just get a design patent on each different haircut?
Design patents are an additional option, Mr. Snyder, but even you should recognize that such protect different aspects, eh?
Then that sounds quite abstract and 101-ineligible to me. Cutting hair with scissors is quite concrete. Thinking about how a haircut should look is quite the opposite. The actual content of steps recited in a process claims makes a great deal of difference to the claim’s patentability.
I definitely agree that all of the novelty of the Brown claim lies in the mental steps of the process. What of it? Section 101 is not there to police novelty. In re Bergstrom, 427 F.2d 1394, 1401 (C.C.P.A. 1970).
This goes to the vap1d (and repeated ad nauseum – except when asked directly about it) Ned Heller ploy of “Point of Novelty,” and – as already mentioned, Malcolm’s typical goal post moving with trying to move a claim with elements into a claim TOTALLY in the mind.
Pieces of the “Merry Go Round” that Mr. Snyder likes to hold onto because they happen to “fit” his desired end state, but the rest of the picture – and the inherent facts involved – are just too inconvenient to incorporate into his “world view.”
As patent practitioners we rely upon the Court’s reasoning for understanding how to apply their decisions to our practices. In terms of precedential value in patent law, the path to a decision is as or more important than the final decision. If the final decision is ultimately correct but the reasoning is not, precedence becomes confusing and useless. I acknowledge that some of the Court’s decisions on subject matter eligibility (SME) reach the correct conclusion but their reliance upon poor reasoning has created the ongoing SME conflict.
So, a few comments on SME determination:
* 101 determination has to be toward the claimed subject matter as a WHOLE and not to a small portion of a claim after it has been dissected, i.e. not to individual claim limitations
* keep analyses under 102, 103 and all other sections outside the purview of 101 just as we keep 101 analysis outside the purview of analysis under other sections
* an abstract idea is something that can be accomplished purely by/with thought regardless of the rigor of thought
* when determining what a claim is “directed to”, the claim as a WHOLE, rather than a single limitation, must be considered
* if the claim as a whole is directed to a machine or manufacture (all of which are tangible), then it is subject matter eligible
* if the claim as a whole is directed to a composition of matter (which is tangible) that is not simply a product of nature, then it is subject matter eligible
* mere inclusion of a law of nature or abstract idea in a multi-limitation claim does not automatically render it subject mater ineligible
* if a claimed process as a whole includes no tangible step or tangible article and provides no tangible result, then it is very likely subject matter ineligible (fact specific determination)
* if a claimed process as a whole includes a tangible step and/or provides a tangible result, then it is more likely subject matter eligible regardless that it might also include intangible steps (fact specific determination)
Rick: keep analyses under 102, 103 and all other sections outside the purview of 101
That’s a non-starter, Rick. If you haven’t figured out why already, then you lack the competence needed to participate meaningfully to the discussion. Don’t fret, however: you’re hardly alone.
just as we keep 101 analysis outside the purview of analysis under other sections
Except subject matter eligibility considerations have never been “outside of the purview” of other sections. This, too, has been explained to everyone for years. Where is the disinformation to the contrary coming from, I wonder?
when determining what a claim is “directed to”, the claim as a WHOLE, rather than a single limitation, must be considered
That’s incorrect. It’s 2016. Are you from another planet? Here in the US, on planet earth, it doesnt work that way and it hasn’t worked that way for years.
f the claim as a whole is directed to a composition of matter (which is tangible) that is not simply a product of nature, then it is subject matter eligible
Again: false. Naive absolute statements such as the one I just quoted erode your credibility. Learn to avoid making them.
mere inclusion of a law of nature or abstract idea in a multi-limitation claim does not automatically render it subject mater ineligible
I’m not aware of any jurist or Examiner stating anything to the contrary for a long, long time.
Thank you Rick – great comment.
Good comment Rick. Don’t let MM bother you. He is paid by K Street to push the Google agenda.
That’s right, Rick: keep posting your ign0rant, debunked, and non-starter dreams.
The blogtr0lling junk patent lovers will eat it right up! Yum.
It’s really all they know how to do. How do we know that? Because we’ve watching them do it for years.
Cha-ching! You are paid by the word to blog this nonsense, aren’t you?
To paraphase (and fix) Malcolm’s post:
“[Instead, be like me,and t]he blogtr0lling junky patent [ha ters] will eat [my CR@P] right up! Yum.“
Re-posted to get above the spamming of the MM. Rinse repeat.
Reality–a machine that processes information like our brains. Takes time, space, and energy to process the information. The “abstract” the “judges” use is actually just a notation for a set of solutions as all text books on EE/CS will tell you (and which I have actually quoted from several well-know text books.)
Again, reality–the US has a software industry that is 10 times bigger and better than any other country. The US software industry is the most shining star of our economy and it grew up under patent protection. But, now suddenly, just like with finance we are to believe the “regulation” (here of innovation) is harmful.
Reality is the answer.
There is more than enough difference of opinion discussion here already.
This is to merely note for those more interested in reality than wishful thinking that: (1) there is no pending or even proposed legislation to change 35 USC 101, (2) the long-standing Sup. Ct. list of unpatentable subject matter* is not within 101 itself, and (3) There is no basis in recent Sup. Ct. patent decisions [most of which were unanimous] to suspect likely self-reversals. [Even getting a bit of clarification would be lucky.]
*E.g., the Supreme Court in Diamond v. Chakrabarty stated that: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). “
I don’t know about the rest of what you said, but I agree that we are unlikely to get anymore clarity on 101. No one seems to care that matters.
I’m sure you meant something else, but there have been some recent proposals to amend and even abolish 101 recently (Kappos, last week I think)
link to mondaq.com
Paul, I believe the statute does require that compositions be new. Myriad simply held that products of nature compositions are not new and that the claim before it was claiming a product of nature.
Flook made it clear that the reason that phenomena of nature and math are not patentable subject matter is because they are not new.
The exceptions are not in defiance of the words of the statute, but entirely consistent with it. One only has to look at what Jefferson did in 1793 to see that he did not want to allow patents on the discovery of compositions that were not new, albeit, not previously known or used. When he added compositions, he added the requirement of “newness” as well.
Ned,
I do not think that anyone is arguing that compositions need not be new.
That is a 102/103 argument by the way.
Now, check 35 USC 100(b) – as I have asked previously….
anon, “new” even though not previously known or used. That is the way the 1793 statute reads. New is an independent requirement.
Ned,
You do realize that you cannot dismiss changes in the law that happened in the Act of 1952 and the AIA, right?
So, even if for argument’s sake, I entertain your (too limited) view of that single clause (and do not offer my rebuttal that the single word in that clause has no substantive support for how to meet that word, which is outside of 101), you STILL do not – and cannot – arrive at your “version” of controlling law in the words of Congress.
(and I notice that you are STILL avoiding giving credit to 35 USC 100(b)….)
Note as well that Flook was cabined by Diehr, see Bilski.
…and then realize that software is not math.
You cannot obtain a copyright on math.**
Thanks.
.
**and please, no need for anyone to attempt to move goalposts and talk about a math book…
Also Ned – the AIA changes what “new” means (in relation to your use of “or known”).
“New to you” is still new.
Ned, since you like digging into patent history, that leads to a question for you as to how and when the Section 100 (b) definition of the word “process’ [used in Section 101, etc.] as “..and includes a new use of a known .. composition of matter or material” comes from. [Since that is an important and valid way to claim discoveries of new and unobvious uses or applications of discoveries of materials existing in nature.
Paul,
Ned likes to dig into history – but only when he thinks it supports his “version” and desired end state.
He has shown a downright aversion to history when it does not support his views.
Good luck on getting Ned to objectively discuss 35 USC 100 – he has consistently run away when I put that discussion point on the table.
Opinion in In re Brown published today by the CAFC.
Prost, Moore, and Stoll
The PTO found the applicant’s claims ineligible as directed to an abstraction. The CAFC agrees.
Try to believe this ridiculous junk:
1. A method of cutting hair comprising;
a) defining a head shape as one of balanced, horizontal oblong or vertical oblong by determining the greater distance between a first distance between a fringe point and a low point of the head and a second distance between the low point of the head and the occipital bone;
b) designating the head into at least three partial zones;
c) identifying at least three hair patterns;
d) assigning at least one of said at least three hair patterns to each of the said partial zones to either build weight or remove weight in at least two of said partial zones; and
e) using scissors to cut hair according to said assigned hair pattern in each of the
said partial zones.
Short version: “Figure out how you want to cut hair on different parts of a head. Then cut the hair with a scissors.”
Wow.
According to Mr. Eppenlauer’s logic, unless this decision is reversed I guess we’ll be entering a dark age of hairstyling. Barber’s will be fleeing to Europe and elsewhere where hairstyling and other vital industries are respected by those jurisdiction’s patent systems. Perhaps when everyone has to get an Amish haircut the blowback will begin in earnest.
MM
This method is obvious…. it is also, being a set of actions including cutting hair, obviously (to a rational mind) not directed to an “abstraction”
Apparently, Malcolm would rather dish ad hominem than confront the plain notion that the exception is fully swallowing the rule.
His ends “justify” any and all means, so why even bother with law at all…?
(that last question was rhetorical)
“anon” the exception is fully swallowing the rule.
The only people who believe that are (1) ign0rant hacks or (2) dishonest hacks or (3) both.
We already know which bucket you fall into.
Except for the fact that your very own rants here today put you fully in that category that you merely v0m1t forth your typical ad hominem.
“Go figure Folks”
your very own rants here today put you fully in that category
I’ve no idea what you’re talking about. Nothing that I’ve written here today evinces a belief that “the exception is swallowing the rule”. What I’ve written here today expresses my view that this “swallowing” is not occurring.
The record-breaking number of patent grants would also seem to contradict the chicken littles who are scurrying about cheeping hysterically that a big 101 cloud has “swallowed” the sky.
The fact is that the patent system is broken and, as part of the process of fixing it, all the stakeholders in the system are going to get a little haircut. And we all know how entitled, spoiled two year olds can behave when they’re getting their hair cut.
Malcolm claims “broken” and thus his ends “justify” any means.
Funny though, the law is just not designed that way; hence the issue that you just don’t want to see.
Malcolm claims “broken”
There’s a whole lot of people out there who feel similarly. After all, Congress created the IPR and CBM review procedures for a reason.
thus his ends “justify” any means.
Except I’m not advocating for “any means”. I do support expansion of IPRs to include 101 and I support extension of CBMs. And of course I support the reasoned application of the subject matter proscriptions that have been in place for eons (and I simultaneously reject the activist decisions which injected the legal fiction into our system that logic is patent-eligible “structure”).
You’re free to disagree with me and state the reasons for your disagreement. But you’re not going to get traction wrestling with your shopworn strawmen.
“whole lot of people”
yay – m0b rules!
Lots of lemmings charging up that cliff.
Talk about shopworn: software is not logic – how is your copyright attempt on logic coming along…?
Yeah, thought so.
“whole lot of people”
yay – m0b rules!
But he’s totally not a hypocrite, folks!
LOLOLOLOLOLOL
I am more than sure Malcolm, that I do not place the veracity of my legal arguments on ANY type of “m0b rule” mentality as I have pointed out as present in your comment.
Elsewhere you talk “big” of evidence – this might be a good place for you to supply some to back up your (typically worthless) accusatory innuendo.
Anon2 This method is obvious
How do you know? Have you looked at all the secondary factors? (<-LOL)
being a set of actions including cutting hair, obviously (to a rational mind) not directed to an “abstraction”
The alleged “innovation” here is the abstract “defining” of a head shape and “assigning hair patterns” to “zones” within that head shape. “Cutting hair” is in the prior art (it really is!) and, as a result, that step is not sufficient to shoehorn the claim into eligibility.
Another way to recognize the problem with the claim is to imagine that you are watching a barber cut a person’s hair. Snip, snip, snip here. Snip, snip, snip there. Is the barber practicing the prior art or infringing this claim (or both)? I guess the barber just needs to wait until the patentee generously offers a license. In the meantime, the barber can go ahead and purchase some patent infringement insurance. It’s the American way, after all!
I can definitely agree that at the point that one regards cutting hair as an “abstract idea,” the words have lost all meaning.
I am a little less clear how you know this claim to be obvious. I would have to know more about the state of the art of hair-cutting before I could say whether this claim is or is not patentable.
Perhaps, however, you are simply better acquainted than am I with the state of the hair-cutting art?
Greg: I can definitely agree at the point that one regards cutting hair as an “abstract idea,” the words have lost all meaning.
I can definitely agree at the point that self-identifying patent attorneys do backflips to substitute their warped fantasies for the legal analysis that is actually taking place, those patent attorneys deserve whatever ridicule is coming their way.
Nobody is saying that “cutting hair is an abstract idea.”
So … any other strawmen you want to wrestle with, Greg? Maybe you can work up a sweat.
I would have to know more about the state of the art of hair-cutting before I could say whether this claim is or is not patentable.
ROTFLMAO
The best and the brightest.
The best and the brightest.”
Malcolm once again is content to fling his short script ad hominem, notably not engaging many of Greg’s fine posts on their merits.
“Go figure Folks.”