Section 101 – Pivotal Moment for Clarity on Patent Subject Matter Eligibility

Guest post by Bart EppenauerMr. 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.

250 thoughts on “Section 101 – Pivotal Moment for Clarity on Patent Subject Matter Eligibility

  1. 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.

    1. 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.

  2. 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”.

    1. 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).

      1. 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.

        1. 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.

          1. 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…

      2. 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.

      3. 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.

        1. 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.

    2. …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.

  3. 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.

    1. Martin, flip. Go from the elements up not from the psychotic nonsense of Alice down. Only then will true enlightenment come to you.

    2. MS: If the useful result of method is information, and the information is consumed by a person, the method should be intrinsically ineligible.

      Why?

      1. 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.

          1. 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.

                1. 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.

      2. 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.

        1. 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?

          1. 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

            1. 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)?

              1. 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.

        2. 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.

    3. 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).

    4. 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.”

      1. 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.

      2. 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?

        1. What if the method is claimed to stop at plan?

          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.

          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.

          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).

          1. 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.”

  4. 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)

    1. 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.

      1. 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.

        1. 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.

  5. 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.

  6. 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). “

    1. 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.

    2. 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.

      1. 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….

        1. anon, “new” even though not previously known or used. That is the way the 1793 statute reads. New is an independent requirement.

          1. 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.

      2. …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…

      3. Also Ned – the AIA changes what “new” means (in relation to your use of “or known”).

        “New to you” is still new.

      4. 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.

        1. 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.

  7. 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.

    1. 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”

      1. 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)

        1. “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.

          1. 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”

            1. 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.

              1. 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.

                1. 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.

                2. “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.

                3. “whole lot of people”

                  yay – m0b rules!

                  But he’s totally not a hypocrite, folks!

                  LOLOLOLOLOLOL

                4. 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.

      2. 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!

      3. 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?

        1. 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.

          1. 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.”

            1. Greg’s fine posts

              I don’t recall many fine posts from Greg. But go ahead and polish his butt0ns if it makes you happy! Greg’s a super serious person, filled with awesome insights! Just like you.

              Right.

    2. Yes and the method for making the pill that cures cancer in short version is:
      figure out the chemicals you want to combine and then combine them into a new drug.

      1. Any (and every) thing can be “Gisted” to arrive at a point of labeling it “Abstract.”

        “Directed to” is merely a “Gisting” mechanism.

        1. Any (and every) thing can be “Gisted” to arrive at a point of labeling it “Abstract.”

          That’s nice.

          Here’s a quick reality check for you, “anon”: your script was always incredibly weak, it’s not working, and it’s never going to work.

          That’s because the analysis doesn’t end at identfying an abstraction.

          But you knew that already. Thank goodness you’re not a dishonest hack, though.

          1. My “script”…?

            LOL -from the guy who only operates from a short script…

            You funny.

            It’s great that “the analysis doesn’t end there,” but it is a strawman to somehow suggest that I am saying that any such “analysis” ends there.

            But you already knew that, eh pumpkin?

            1. “anon” it is a strawman to somehow suggest that I am saying that any such “analysis” ends there.

              LOL

              But he’s t0tally not a hack, folks! He’s very serious indeed. We must pay attention to his awesome insights! They’re very important because … Constitution! He’s an expert!

              Sure he is.

      2. the pill that cures cancer

        The patent maximalists never cease to amuse.

        figure out the chemicals you want to combine and then combine them into a new drug.

        Ah, so you believe that the haircut resulting from this method is “new”? I’d love to hear how you arrived at that belief. Can you articulate your logic or is that too tall an order?

        1. 1. Whether the haircut is new is not at issue. What would be at issue is whether the PROCESS for cutting hair is new.

          2. I don’t know if its new or not. I commented on your silly distillation down to a gist for purposes of ridicule.

      3. Exactomundo. The Malcolm-Filter Algorithm:

        1) receive text that is complex and difficult to understand,
        2) identify technical mumbo-jumbo portions
        3) for each identified mumbo-jumbo portion that is determined to be too difficult to understand at all, remove it
        4) for each identified mumbo-jumbo portion that is determined to be sort-of understandable, replace with paraphrasing to reduce the number of characters by at least 90%
        5) confirm that resulting text substantially differs in meaning from the inputted text

    3. MM, no one is going to export Mohawk haircuts. Not over my de@d body, dadgummit. Mohawk patents to protect Native American hairstyles!

      Seriously, when I read the case, I thought this might be one of those looney test cases dreamed up by professors to get test the limits of 101. If the patent were granted, how in the heck are they going to enforce it?

      1. [H]ow in the heck are they going to enforce it?

        I rather wonder the same thing. I gather that I am in the minority here in that I do not regard the claim as an absurd example of patently unpatentable subject matter, but I do wonder why the applicants were game to take this all the way to the CAFC. Even if they had won, how ever did they hope to detect infringement?

  8. As important is the change called for, more foundational is the reason “why” such a change should occur.

    As laudable as this call for “proper” scope and application of Section 101, Eppenauer is justifying his entreaty i.e. grounding this call to action (unintentionally or not), firmly upon the standards of a collectivist, nationalist, statist philosophy.

    “WE have reached a pivotal moment”
    “interested STAKEHOLDERS have justifiable concerns”
    “the fallout this could have on AMERICAN INVESTMENT in these CRUCIAL INDUSTRIES”
    “where AMERICA has been A technology LEADER, THE U.S. could rapidly lose ITS competitive EDGE in these vital INDUSTRIES”
    “the U.S. will cement ITS recent REPUTATION”

    The only reasons provided why any action in regard to section 101 should be taken are for the State, for “America”, for “stakeholders”, for “industries”; anthropomorphically the U.S. is a “leader” which has a “reputation” and has a “competitive edge”. If these are proposed as the reasons to improve patent rights, what is the implied basis for patent rights? By what standard and for whose benefit do those patent rights exist?

    It is clear that the explicit and implicit reliance on collectivist motivations is not consistent with the position (some Americans still cling to) that holds that patent rights are valid because they establish and protect private individual rights. Consequently, although this article may succeed to persuade some to the cause with respect to 101, it does so at the peril of the rights (one can only assume) it was meant to advocate.

    In the face of “persuasion” of this kind (and there a great many other articles like it), which supports its position based on the purported benefit to the welfare of the nation, its reputation, its collective economy or collective industries and ignores completely inventors and their individual rights, all it takes is for a Statist/collectivist to argue that something ELSE achieves the welfare of the nation etc. better as a justification for eroding individual patent rights or violating them (and all other individual rights) altogether.

    Perhaps this is merely a symptom of the Statist dystopia towards which American culture and society is headed, and the all pervasive effects the rapid descent already has had on the thinking of so many, but it is ironic that those would be advocates of inventors and their rights are at the same time ignoring and undermining them.

    1. Buried in your comment somewhere, I think, is the recognition that (in the US, anyway) “patent rights” exist entirely at the whim of we the people.

        1. Great – now recognize the proper means of that selfsame “We the people.”

          Graham crackers and milk will be served later, “anon.” Just be patient! In the meantime, your favorite set of crayons is in the cabinet by Suzy’s desk.

  9. Confusion regarding eligibility is mostly due to widespread misunderstanding or disagreement regarding the term “new” in Section 101. The Supreme Court has made it clear that simply applying old technology to newly discovered laws of nature or abstract concepts is not eligible as “new.”

    Yet, investors and companies who see “new” markets that they wish to protect with patents argue otherwise. Such patent protection would reward the first to the patent office, but not innovation, since nothing “new” has been invented. It would also chill development of related technologies since the first to file patentee would have the right to exclude and prevent competition.

    Patents should be awarded for innovation, not investment. If someone invents subject matter that is truly “new” and not simply incorporation of a newly discovered natural law in old technology, then the invention should be eligible subject matter.

    1. Innovation is an economic term. In his famous book, Rogers explains that innovation is really about diffusion: a process in society making news ideas work for the economy. Inventions are neither necessary nor sufficient for innovation. Eevy physicist knows that diffusion is a slow process.

      It is helpful to use proper terminology – against confusion.

    2. Problem is one can include everything into “law of nature.” Moreover, cramming 102/103/112 into “new” is anti-patent judicial activism.

      Grow-up. Figure out that what is happening is Google has thrown many millions into burning down the patent system and people like you that parrot K-Street’s propaganda machine are a laughing stock.

      1. Being offensive does not help your argument.

        It is preposterous to accuse Google of “burning down the patent system”. Google is generally seen as a very innovative company, and they found the open source approach helpful for their business, and software patents may obstruct the open source approach.

        Keep in mind that internet is really a miracle that only could happen because the basic development was made by the military which has no commercial goal. The “RFC” development model of internet worked – and works – very well, in contrast to earlier efforts to define “vendor neutral” networking standards, that resulted in a very unpractical kind of Esperanto (OSI).

        Perhaps it shows that it is really benefit if no managers and investors are involved. Eonomists told us a long time ago that “transaction costs” may prohibit a free market from reaching an economic optimum.

        Re “K-Street”: thank you for learning me a new concept! In my observation, lobbyists often use the wrong arguments. For instance: those who oppose software patents do not understand that problems attributed to those patents also occur in other fields. Famous Berkeley economist Bronwyn Hall found that semiconductor hardware is one of those fields. But anti software patent activists don’t care, it is outside the scope of their supporters. So it becomes inevitable that they use the wrong argument.

        It is true that there are many things you can label as “abstract ideas” (not: “laws of nature”). That was my first comment: SCOTUS precedents only recognize “abstract ideas, natural phenomena and laws of nature” as non-statutory excluded subject-matter, so if SCOTUS now wants something to be excluded, it must subsume that subject-matter under one of those catergories. A British judge in a similar case referred to “a restatement of the problem in more imprecise terminology”.

        1. Reiner,

          It is your old worn out mantras and “best-L-I-E-S-have-a-kernel-of-truth” prattling that is offensive.

          All that you have done from your early virulent anti-patent is learn how to coyly “dress-up” your arguments.

        2. Reiner,

          At this point I think it is fair to say you are unethical and a liar. There has been much printed about Google pouring more money into K Street than any other company other than Goldman Sachs. There has been much printed about Google wanting to vastly weaken the patent system.

          That is reality. You simply ignore substantive arguments and continue to push nonsense. Deal with what I said.

          1. What is my lie? I don’t think we disagree. I only added something: Google did not “destroy the patent system” as an act of vandalism, but for business reasons.
            Or do you think they stole their highly succesful business model from some patentee? Who is the “victim”? And did the victim try go to court, but was prevented to do so by the entire “K-Street”?
            If you like conspiracy stories: the founders of Google are Russian jews. They are sponsored by Putin and the Mossad. Modern wars are not fought with weaponry, but by lobbyists spreading disinformation.
            I can only hope that my fantasy is wrong.
            You know how to recognize terrorists? Because they desperately try to act normal and to hide their true intent!

    3. “Patents should be awarded for innovation, ”

      And DISCOVERY (e.g., of a law of nature) is not a form of innovation worthy of a patent?

      The Constitution (for one) indicates otherwise…..

      1. The disctinction between “inventions” and “discoveries” is almost non-existent. One may argu that “discoveries” relate to things that existed before and only had to be dis-covered (uncovered), whilst “inventions” can be really new. If the difference can be made at all, it is not very relevant since both have value.

        1. Yes, both have value and the Constitution specifically refers to Discoveries, and there is nothing to discover but laws and products of nature…….

      2. Les perhaps instead of advocating patentability of discovery as such, merely point out that useful application of knowledge (part of the basis for all inventions that ever were) is not “discovery” or “a law of nature” as such, and never was.

  10. The answer is to remove the SCOTUS jurisdiction over patent law. The answer is to have laws again and not a “I don’t like it” test. Disband the Fed. Cir. and reform it with judges that have real patent law experience and aren’t selected by Google.

    Again, 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.

    1. And reading through the nonsense below, I note the following: how can an attorney tell that Alice is not Constitutional? Two reasons 1) the SCOTUS made a finding of fact based on briefs from K Street about a class of innovation; and, 2) there is no way to argue with an invalidation under Alice–Alice is “I don’t like you, so you are guilty test.”

      Reality my fiends. Yap away with your K Street and Lemley fueled psychotic babel.

      1. Read the constitution: the purpose of copyright and patents is “To promote the progress of science and useful arts, by securingfor limited times to authors and inventors the exclusive right to their respective writings and discoveries;”

        So: society must benefit. Admittedly, economist are not very helpful to relate this objective to the subject-matter test.

        But I have given some arguments below. Patents make an exception to the rule of freedom of competition – that must be applied only if really needed. It is a medicine with severe side-effects.

        1. Society DOES benefit.

          Too many people want an immediate and linear benefit, but that is not how innovation (notably NOT an “economic” term) works.

          Previously I have supplied the analogy of parking lots versus streets.

          The patent system just is not a system for pretty streets. Innovation is simply not linear like that.

          You admonish others to use language appropriately at the same time you attempt to misuse language to serve your anti-patent ends.

          You f001 no one.

        2. So Reinier you simply ignore the FACT that the US has by far the best software industry in the world by a factor of ten, but somehow the patents have destroyed it or are currently destroying it. Not plausible in any real world.

        3. The preamble is not a requirement. It is merely a statement of a purpose they had in mind. The purpose of an automobile is transportation. But it owning a car does not become illegal if you merely place it in a museum and admire its beauty.

          The Constitution also talks about a need for militias, but you don’t have to be in one to own a gun.

          1. I do not think that this view is still tenable in view of Graham v. John Deere Co., 383 U.S. 1, 5–6 (1966) (“Art. I, § 8, cl. 8.[1]… is both a grant of power and a limitation… The Congress in the exercise of the patent power may not… enlarge the patent monopoly without regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available,” emphases added).

            1. But Greg, contrast the same Constitutional clause in the copyright case of Golan v Holder.

              As to any sense of limitation, then ask yourself if the Court’s reasoning stands firm enough when it must engage in pure futuristic conjecture of what may happen…

              The fact of the matter is that no matter how they whine about “scriveners,” they themselves ultimately do an excessively P00R job of “scrivining” themselves and a critical review easily shows their weaknesses.

              Again, they are not correct just because they are the last level in the judiciary.

            2. I’m not sure what you mean by “this view”. I didn’t express any view that is in conflict with that blurb, including and especially the bolded portions.

              1. I am sorry. You are correct that phrases like “this view” are not terribly helpful to advance the discussion. I meant the view that the “preamble” to clause 8 is only a statement of purpose and not a requirement. Congress cannot enact a patent act that grants patents on inventions that do not advance the state of the art. Congress lacks the constitutional power to do so.

                As for anon’s mention of Golan, that just gets at the standard of review, not the substantive limitation. That is to say, Congress lacks the power to enact a patent act that would grant patents on inventions that do not advance the state of the art, but when you try to challenge this or that provision of title 35 as inconsistent with Art. I, § 8, cl. 8, the courts are going to apply rational-basis review (“could Congress have rationally believed that allowing this sort of patent would advance the state of the art?”).

                There is, in other words, no inconsistency between Graham and Golan.

                1. ” I meant the view that the “preamble” to clause 8 is only a statement of purpose and not a requirement. Congress cannot enact a patent act that grants patents on inventions that do not advance the state of the art. Congress lacks the constitutional power to do so.”

                  Well nothing in the blurb you quoted says that, especially the bolded portions.

                  The blurb flirts with saying that somewhere around “without regard for”. But I don’t think you can parlay that into MUST “advance the state of the art”.

                  And, in any event, beauty is in the eye of the beholder.

                  There was a time when desktop computers with local processing and storage were seen as a huge advancement over dumb terminals communicating with “main frames”… now the huge advancement is allegedly in “cloud computing”, which as near as I can tell means using a dumb terminal to communicate with a mainframe….

                  I can’t imagine an invention that can’t be argued to be an advancement in the art of whatever in one direction or another….

                  Can you?

                2. Well nothing in the blurb you quoted says that [Congress cannot enact a patent act that grants patents on inventions that do not advance the state of the art], especially the bolded portions.

                  From the same pincite in the same case:

                  This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the “useful arts.”… Innovation, advancement, and things which add to the sum of useful knowledge are inherent requisites in a patent system which by constitutional command must “promote the Progress of . . . useful Arts.”

                3. Notice that “must” near the end. Promotion of the useful arts is not merely a statement of purpose, it is a positive requirement.

                4. Yeah… I see it. But it isn’t a command in the U.S. Constitution. Just as being in a militia is not a command.

                  In any event… it hardly matters. Show me something new and I will show you “an advancement” in the art..

                5. Greg,

                  Re-read Goaln – you are not correct as to “just a standard of review.”

                  I am not drawing the parallel to the enablement clause with Golan – rather, the historical notes that in the past things were in fact and on occasion taken out of the public domain is made – which means that this is NOT such an “iron-clad” rule as it is made out to be.

                  As to the “advance” paradigm, you seem to be falling into the trap of thinking solely along a technical (linear) betterment and you are forgetting that the promotion clause is NOT limited to such a view and instead ALSO includes the use of the word “promote” from its more advertising connotation of “promotional” – as in spreading the word. It is rather easy to miss this aspect, given today’s nearly ubiquitous spread of information, but that simply does not change what that beginning clause means.

                6. Ah, I see what you are getting at with Golan. I definitely agree that Golan shows that things can come back out of the public domain in limited circumstances.

                  As for your reading of “promote,” that is an interesting interpretation. I will have to think about that. Do you have a case that stands for that reading of “promote”?

                7. Greg,

                  See also my other posts this morning (you can skip the Malcolm smackdowns).

                  The nature of innovation itself is reflected in how the law of 101 is to be read. Too many people are stuck in a “ever-linearly-climbing” mode of thinking and want a grid of streets with “knowing what comes next” as opposed to the messiness of NOT knowing what comes next and paving everything in all directions.

              1. In pieces because of the Fn hyper filter…

                Les,

                Let me remind you as well – there is no strict requirement for the type of linear advance – as in, each thing MUST BE better than what was before.

                The easy to remember analogy is parking lots versus street grids.

                People like to think of the patent system as providing a grid of streets to “move on down the road” to the next level (better, faster, even cheaper). Streets are (typically) well organized and built to a systemic plan.

                But that is the wrong metaphor for the patent system.

                The better one is a parking lot.

                1. This is because future innovation CANNOT be known a priori. Innovation just does not work like that and often is NON-linear.

                  We cannot build a system of streets because we do not know “where the road leads” or in what direction to even aim the road.

                  Instead, the patent system is meant to be a parking lot – which enables to move in any and all directions.

                2. The analogy works too in at least the regards of how some people view urban bli ght, with the thought of things “paved over” being ug ly.

                  Sorry “Folks” but that IS the aim of the patent system.

              2. That is a good point. I expect based on Golan that if anyone bothered to challenge the constitutionality of title 35 on the grounds that even one patent failed to advance the art, that the SCotUS would shoot them down because the system as a whole advances the art, even if this or that patent does not.

                1. Yes, the notion does carry to copyright – and exactly the point that one can take any single one item that is copyrighted and make the argument that no “promotion” (of any kind) is met, then the copyright laws “must be</i" unconstitutional – can be seen to be a fallacy.

    2. Software is protected by copyright, period. A software patent is a strange animal. Economic researchers have great difficulty in identifying “software patents”.

      Many software patents only claim the idea to implement something in software. CLS v. Alice is a fine example. This is called “functional claiming”. It reduces competition virtually without bringing any value to society. Here a patent really becomes the privilege – that the English government opposed in 1624!

      Granted, there are other types of software patents. notably on algirithms. Indeed one may wonder why a hard-wired circuit may be patented whilst software doing exactly the same would not be patentable. Here the answer is that both probably should not be patentable. Unlike e.g. in biotech, there is no trade in algorithms obviating the need to reinvent the wheel. Getting patent clearance for a sofwtare product typically is a huge effort, while these patents are so unreadable that a programmer would not even think of NOT “reinventing the wheel”. In many disciplies, scientists read patents for information and inspiration. Researchers (Blind et al.) found that sw firms only consult patent databases to see what competitotrs are doing.

      Trading software ideas does not really increase innovation and welfare. It badly suffers from the Coase theorem: transactions consts are prohibitive to benefit.

      Open Source is the answer which is currently not only embraced by a few believers (like Richrd Stallman) but actually by major firms, like Google. Google-owned open source Android is taking over from Windows now, and every smartphone owner knows the creativity that is unleashed by this freedom.

      Business method patents even more directly hamper competition. Note that the “protection” paradigm of patents is really opposed to the freedom of competition that made the US great.

      1. Directly on its face the statement of “Software is protected by copyright, period.” is wrong.

        There are aspects of software protected by what copyright is meant to protect.

        Likewise, there are aspects of software protected by what patents are meant to protect.

        To pretend otherwise is the height of courting ignorance.

        1. It is the famous “idea/expression dichotomy”. Copyright protects expressions. One is allowed to tell a copyrighted story in his own words. This allows e.g. a plethora of textbooks on Android that all tell roughly the same story.

          Several years ago, Patent attorney Andref F. Knight advertized “storyline patents”, to be used to prohibit retelling a story in different words, outside the scope of copyright. The first Q in his FAQ was; “are you serious?”. His answer obviously was “yes”, but I am not sure whether his business was a success.

          Would it be usefull to protect – similarly – the idea to write certain software?

          Anyway, such an idea is not software itself.

          This was actually – and rightfully – the approach of the EPO when activists fought against swpats in Europe. The reacion was simple: there are no swpats in Europe (but only ideas that might be implemented one day in software). One can apply for a so-called software patent before a single line of code is written!

          1. You are also confusing the term of art called constructive reduction to practice.

            You might not “like” that option, but just like Judge Dyk, it is simply not up to you to change the law as it pertains to that concept.

      2. “Many software patents only claim the idea to implement something in software. CLS v. Alice is a fine example. This is called “functional claiming”. It reduces competition virtually without bringing any value to society. Here a patent really becomes the privilege – that the English government opposed in 1624!”

        There is a big difference between saying that software should not be patentable, and saying that it should be excluded under § 101. To the extent that a patent really claims nothing more than “take this old idea (e.g. escrows, clearinghouses, etc.) and do it on a computer,” the obvious statutory provision to shoot down that claim is § 103.

        The only way it has become possible to ground the Alice result in § 101 has been to do violence to the quite sane and venerable claim-as-a-whole doctrine of Diehr. This has had obviously undesirable ripple effects throughout a host of other cases (witness most recently Ariosa). By contrast, if Alice had been grounded in § 103, we would have reached the same result, and achieved the same socially beneficial effect of removing a host of worthless claims from the landscape, but without the collateral damage to Diehr.

        1. The only way it has become possible to ground the Alice result in § 101 has been to do violence to the quite sane and venerable claim-as-a-whole doctrine of Diehr.

          Can you articulate your version of this “sane doctrine”?

          Contemporary 101 jurisprudence — including Alice — requires that the whole claim be considered. Although critics love to pretend otherwise, there is more to the analysis than “find an abstraction and declare the claim ineligible.”

        2. I think that Alice pretended to have invented a new and non-obvious business method, engaging a trusted third party in complicated multi-party financial transactions. Alice (or its patent agent) only added the (rather trivial) computer implementation in order to escape from the Bilski rule that such subject-matter is considered an “abstract idea” and thus not patentable by itself.

          If we forget the guise of the computer implementation for a while, the real question is why Alice’s business method should not be patentable. The answer “because it is an abstract idea” is not helpful: the SCOTUS has defined this kind of methods as “abstract ideas” since that implies under US law that they are not patentable. In other words: watch the sequence in the line of reasoning!

          In advocatus diaboli mode, one may wonder why there is no place for a firm like Alice, that develops innovative business schemes for the financial industry, and sells them to institutions like CLS.

          I guess the proper answer is that patents are not a reward for an effort, but a legal means to obtain exclusivity (a “monopoly”, in economic terminology) only if and when the market would fail otherwise – as I explained already in this forum.

          In the terminology of the famous article by Carabresi and Melamed, a “property rule” is often detrimental for this kind of “inventions”, and, perhaps more importantly, firms doing financial transactions can well survive without patent protected of their methods, since they still have numerous ways of distinguishing themselves from their competitors. In economic erminology, this is “differentiation”, leading to “monopolistic competition”, which is the middle of the road between “perfect competition” (which is not so perfect for suppliers since it drives profits to zero) and a monopoly, which is a problem for consumers. In “monpolistic competition”, a vendor has a “monopoly” (exclusivity) only to a limited extent: with unreasonable pricing, customers will (and can) revert to substitutes.

          1. only if and when the market would fail otherwise

            Absolutely a false idea.

            This is the fallacy of “but for.”

            Sorry Reiner – you should know better.

            1. We do need a creative, unconventional solution. Centuries of patent practices have shown that there is no easy solution.
              The simplest unconventional solution is to allow everything to be patented. This is not a good idea: unelaborated ideashave a very wide scope for a small effort – so it is not balanced.

              So what else? My take is to juxtapose the “protection” paradigm of patents to the principle of a free market. I think that this approach helps to find a meaningfull limitation of patentable subject-matter.

              Incidentally, observations on what I should know (or perhaps should not know!) are off-topic. This forum is not about me!

              1. I reject your hypothesis – and it is TOO wed to your very old and very anti-patent views.

                The Balance IS the Quid Pro Quo.

                It is that simple.

                I also call out B$ on your attempt to not have your views analyzed critically with the comment of “Incidentally, observations on what I should know (or perhaps should not know!) are off-topic. This forum is not about me!

                Your history – especially here as it lends context to your views is VERY MUCH fair game.

                Don’t like it? denounce and retract your anti-patent ways.

                We won’t see that, will we? And we BOTH know why.

    3. “The answer is to remove the SCOTUS jurisdiction over patent law”

      I thought you patent Hawks were all about the constitution?

      1. Ryan,

        Since patent appeals are not a matter of original jurisdiction for the Suprme Court, divesting that Court from patent appeals is entirely within the Constituonal powers of the Congress.**

        You thought correctly: we are “all about” the Constitution.

        Thanks.

        .

        ** As long as some Article III court is involved, Marbury v Madison is respected and there is no Constitutional problem.

      2. U.S. Const., Art. III, Sec. 2: “[T]he Supreme Court shall have appellate jurisdiction, both as to law and fact, with such exceptions, and under such regulations as the Congress shall make,” (emphases added).

        The text of the Constitution explicitly makes provision for Congress to remove a matter from the Supreme Court’s appellate jurisdiction. There is nothing “unconstitutional” about invoking the very power that the Constitution explicitly accords to Congress.

        Indeed, when the Court of Customs Appeals (a predecessor court to the current Fed. Circuit) was first created in 1910, the Supreme Court was precluded by statute (Payne-Aldrich Tariff Act) from certiorari review of the CCA’s decisions. It was not until four years later in 1914 that the statute was revised to permit the Supreme Court to review CCA decisions. In other words, to take the Fed. Circuit out of the Supreme Court’s appellate review would, in a very meaningful sense, just be going back to how things used to be.

        1. Hm, why is the formatting not showing up in my first paragraph. Let’s try this again:

          U.S. Const., Art. III, Sec. 2: “[T]he Supreme Court shall have appellate jurisdiction, both as to law and fact, with such exceptions, and under such regulations as the Congress shall make,” (emphases added).

        2. I think its been fairly settled that while the Congress can make laws to limit the court’s purview or procedures in various ways, it may not dictate to the court on any ultimate matter under the Constitution. Only the people of the states may do so via Constitutional amendment- and fortunately we have never tested the ultimate bounds of an amendment.

          I believe that’s what Marbury v. Madison really stands for.

          1. Mr. Snyder,

            You are not paying attention – see my post at 17.3.1.

            First, “ it may not dictate to the court on any ultimate matter under the Constitution. is absolutely wrong – no ifs ands or buts. This is black letter law.

            Second, Marbury does NOT require Supreme Court review – it merely requires an Article III court review.

          2. Sure, but no one is talking about Congress directing the Court to reach a particular result. Instead, the idea is simply to take certain matters out of the SCotUS’s purview of review. Clearly this is not at odds with Marbury, because the SCotUS has already acknowledged that Congress can take things out of SCotUS’ jurisdiction by statute. Frasch v. Moore, 211 U.S. 1, 9 (1908) (“There is no provision of any statute, within our knowledge, that authorizes a writ of error or an appeal to the Supreme Court of the United States in such case as the present [i.e., an appeal from the Patent Office],”).

            1. Greg, Art III power is to the Supreme Court. Congress cannot overrule this. The court will always have the power to review the decisions of the lower courts and of the state courts.

              1. As I noted above, Art. III, Sec. 2 says that “the Supreme Court shall have appellate jurisdiction, both as to law and fact, with such exceptions, and under such regulations as the Congress shall make,” (emphasis added). In other words, Art. III makes explicit provision for the Congress to except matters from the SCotUS’ review. I do not see how one can say that it violates Art. III to invoke that for which the text of Art. III makes explicit provision.

                1. Greg, review and appellate jurisdiction are not the same thing. Congress removed virtually all appellate jurisdiction from the court, and the court has been using its power (from the constitution) to review lower court decisions. There are early cases on this topic where the Supreme Court decided it had the power to review decisions of the State Courts that decided issues under Federal Law.

                  People who talk along these lines, I think, do not really understand the role of the Supreme Court. If Congress had the power to statutorily deny the Court the power to review one kind of decision, it could deny the Supreme Court the power to review all kinds, which would effectively erase the Supreme Court from the Constitution. Any such attempt by Congress would quickly be overruled. Further, it would probably bring the patent system into the tremendous disrespect by American people for its attempt to isolate itself from the Supreme Court.

                  I do not have 100% proof, but I think IBM is behind this. They have long wanted to get the Supreme Court out of patent law and have done everything in their power to arrange that. Anybody who seriously argues that the Supreme Court should be taken out from patent law are either working for IBM or being manipulated by IBM. That is my view.

          1. It was and it wasn’t, at various times. That is neither here nor there, however. At the time of Frasch, appeals from the patent office were not to the CCPA (which did not yet exist). Such appeals were taken to the D.C. Circuit. Obviously the DC Circuit is a court, and yet the Supreme Court acknowledged that the the Court had no jurisdiction to take cert from decisions of the CADC in appeals from the PTO. In other words, it could not be clearer—both in the text of Art. III and in the SCotUS’ jurisprudence on this point—that it is possible for Congress to except patent appeals from SCotUS review if Congress so chooses. Right now, Congress chooses to have patent cases reviewed by the SCotUS, but I think that they would do well to create a court composed entirely of judges with scientific training, and to make that court the last word on patent cases.*

            * It might be a good idea to still allow for certiorari to this hypothetical science court for issues that have nothing to do with title 35 (FRCP, FRE, etc.).

  11. Subject-matter that the Supreme Court does not want to be patented is named “abstract idea”, and abstract ideas are one of the three categories of subject-matter that always were considered in case law. But is hedging (in Bilski v. Kappos) really an “abstract idea”? And is Alices trusted third party scheme? Aren’t all ideas somehow abstract?

    Things get more complicated if only part of the (alleged) invention is considered an abstract idea, and the rest of it is patentable, in particular if the idea is novel and the patentable part is not. It seems logical to require the patentable part novel and non-obvious – but that violates the statutory principle that patent applications must always be assessed as a whole. This rule makes sense too, since a single patent application is (normally) supposed to relate to a single inventive idea, so it is hard to split.

    Amazingly, European patent law suffers from the same paradox. In Europe, the designation “abstract idea” must be replaced by “non-technical subject-matter”. In particular the german courts, even before the EPO was established, struggled with the choice between a “Gesamtbetrachtung” (consideration as a whole), and a “Kerntheory”(focusing on the core) (note that “Kern” means both “core and “nucleus”, which wa a bit problematic since this term was coined at the time of the Chernobyl disaster in 1986).

    Paradoxes typically ccan nog be solved. They are sign that the question is wrong.

    It is important to consider WHY certain subject-matter is excluded. Economists generally assume that patents help patentees to “internalize the externalities” of patents. But then there should virtually be no limit, except if the investment is negligeable. But the very statute says that patentability shall not be negated by the way the invention is made. So a coincidental invention or the results of a stroke of genius can be patented. Reversely, a zillion dollar pure science finding is not patentable. In sum, the investment is apparently immaterial.

    History shows that the essence of patents is exclusivity Patents once were privileges. The English government noted as early as 1624 in it “Statute of Monopolies” that way too many privileges (monopolies) were granted. In a market society, imitation is the norm and exclusivity is the exception that proves the rule. Of course, a straight “me too” product is unlikely to be successful – competitors usually add something of their own.

    But is R&D investment attractive at all if competitors are allowed to “steal” inventions without contributing at all to R&D? Yes, indeed. Such “competition” is destructive.

    The boundary between knowledge that needs and does not need protection is actually given by the statute: § 112 says that any “person skilled in the art” should be able to carry out the invention. Of course, § 112 primarily prescribes a rule for patent application drafting but the typical “upstream” knowledge that ought to be excluded from patentability (e.gf. laws of nature) can not be carried out at all (because it gives a fact instead of an action), or it can only be carried out (perhaps) by a scientist. The scientist must be distinguished from the PHOSITA, not in the sence that the former is smarter, but in the sense that the scientist may or may not be successful, even if he/she is very smart, whereas the PHOSITA must be able to accomplish the task, else he/she is not properly “skilled in the art”.

    Upstream knowledge allows differentiation, an economical term for a practice that brings exclusivity without patents. The result is “monopolistic competition” which allows limitedexclusivity ,and strikes a better balance between the interests of supppliers and consumers.

    Economists told me of the example of a well known medicine with a patent long expired. BUT the manufacturer registered a trademark, and made this trademarkt popular with smart advertising campaigns. This type of “differentiation” works as designed: it provides sufficient exclusivity a sound business – but if the price is made too high, consumers will revert to less-known “substitutes”.

    Knowledge that any PHOSITA can handle usually is called “technical” knowledge, as opposed to pure scientific knowledge, and also business ideas, that require special skills – and luck. This definition of the word technical even covers its use in music: any pianist graduated from a professional music school should have the technical skills to play Beethovens fifth piano concerto. Having the creativity to make a top-notch intrepretation is something else. That is the “non-technical” part.

    Opponents of business methods have advocated to adopt the European rule that patents are only granted for technology in the U.S. as well. But the traditional European technology concept, focussing on technical products or technical disciplines suffers badly from the paradox I explained above. And it does not help: even technical business methods have been identified!

    I wrote book on something I called the vertical technology concept, advocating an aproach focusing on technical <knowlege, along the lines explained abobe. Admittedly, this approach is far from the usual approach today – but, it follows the statute precisely.

    Reinier B. Bakels, ‘The Technology Criterion in Patent Law A controversial but indispensable requirement”. Oisterwijk: Wolf Legal Publishers 2012, ISBN 9789058508621

      1. So, in the real world outside of K Street propaganda or unethical professors’ diatribes printed in the vanity press (law journals), Europe lost in the software war because they did not have patents. And—-get this–if you care about reality, the one country in Europe that does Germany is the one country that has a significant software industry.

        Reality.

    1. The anti-patent serpent that is Reiner eases in here, but shows his true colors above.

      Your long standing “reputation” is again validated (and that is not a good thing, my friend).

    2. <blockquoteSubject-matter that the Supreme Court does not want to be patented…

      That is the problem right there. The Supreme Court is making this decision, and it is not theirs to make. Congress has defined the requirements for patentability (§§ 101–103) and the SCotUS’s job is merely to give effect to Congress’ expressed will, not to craft its own requirements.

      The right way to understand the so-called judicial exceptions (laws of nature, abstract ideas, and natural products) is that they represent the product of careful reading of the statute. Abstract ideas are—by definition—not machines, manufactures, or compositions of matter. I suppose that some abstract ideas are processes (you can perform a series of mental acts in an ordered fashion, e.g., “first think of a puppy, then think of a rainbow…”), but so long as they really are purely mental acts they are not useful processes. That is, they produce no concrete and tangible beneficial result. That is why they are not § 101 eligible.

      It is a mistake to imagine that the “abstract idea” exception is some carve out from § 101, or some judicially crafted extension that the Supreme Court tacked on to supplement § 101. The “abstract idea” exception is a creation of Congress, not of the SCotUS, and therefore the SCotUS is not free to refashion the exception however the SCotUS chooses to advance policy goals of the SCotUS’s own contrivance. Congress did not say that one is free to disregard the so-called “routine and conventional” aspects of a claimed invention when assessing its patentability. Quite the contrary, the Congress explicitly directed that claims are to be assessed “as a whole” (§ 103). Therefore, the SCotUS simply does not have the authority to make up such rules as to exclude “routine and conventional” limitations from the § 101 analysis.

      The right place to shoot down claims directed to the routine-and-conventional is under § 103, not § 101.

      1. Wut? “So long as they really are purely mental acts they are not useful processes. That is, they produce no concrete and tangible beneficial result”.

        My lawnmower holds 3 gallons of gas. I watch the gas pump so I don’t buy 5 gallons instead of three. That’s a mental process that saves me two extra gallons I don’t need.

        On the way home, I perform a mental process where I steer my car in the driving lane of the road. Its a handy way not to get killed. Useful even.

        1. If all you do is think about the number of gallons you are buying, you will not achieve that useful result. You actually have to stop the pump (not done purely in your head) to achieve the useful result.

          If all you do is think about where on the road your car needs to be, you will not achieve the useful result. You actually need to move the steering wheel (not done purely in your head) to achieve the result.

          1. I have pointed this out to Mr. Snyder previously – in the words of things TOTALLY in the mind versus a claim as a whole which may legitimately under the words of Congress contain items that sound in (re: anthropomorphication) “mental steps” or even have parts that are (gasp) actual mental steps.

            I have noted for Mr. Snyder, the duplicitous habit of Malcolm in moving goalposts when discussing claims to attempt to move claims to be nothing more than something that is TOTALLY in the mind and pointed out (directly and even using short declarative sentences) why this is a fallacy.

            The thread here comes closest yet to something that I have put to Prof. Crouch a long, long time ago now: write an article explaining exactly what was the mental steps doctrine, and point out how the attempted “rebirth” of that doctrine does not fit its original moorings.

            Such an article would do well to clarify the situation, and help point out how duplicitous some sAme ones persistent muckraking.

  12. In other, actual invention related news, did you guys hear about the chic that invented a new lithium battery using nanowires that might make lithium batteries last all of our lifetimes? Woot.

    link to yahoo.com

    Mya near single handedly solving mobile batteries by allegedly just playing around. Lol. And then when it gets to the PTO someone will say it was tots obv.

  13. Thank you for your very thoughtful contribution to the law Mr. Eppenauer. Here, on this blog, you elevate the debate. Perhaps released by my nom de plume, and my ethical obligaitons concerning criticism of the court, Alice and Mayo has resurected the ‘gist’, ‘heart of the invention’ or ‘point of novelty ‘ tests that ware specifically overruled in the ’52? Act. And as we all know, that created a rule of law in which evidence must be presented under both the rule of production and persuasion. Here the Barbed Wire cast is the touch stone. And that of course lead to the ‘teaching, motivation, suggestion’ frame work – for trial court evidence – TO BE SUBMITTED – in comport with the Fed.R.Evid. In other words, a trail court should apply the Fed.R.Evid

  14. I’m still confused about the alleged confusion. I mostly disagree with SCOTUS taking the 101 route for these claims when IMO I haven’t seen one that 103 and 112 wouldn’t take care of, but its not confusing at all. There is no ambiguity, just a dislike of the standard.

    1. Amen brother. It’s idio ts running around that is the problem. But, if the law is too complex even for idio ts that happen to also be patent attorneys to figure out then it may need to be changed somewhat to be administrable.

    2. Cheers to the 103, 112 routes. They don’t rely on magic to arrive at a result. Well, actually, the supremes ruined 103 as well. See e.g., “ordinary creativity”.

    3. Define “abstract” (and yes, note that the Court explicitly refused to enshrine the dictionary, as the dust-kicking of Malcolm would have it).

      Define “significantly more.”

      Heck, even define “technological” in a non-circular way.

  15. There are two intellectually honest routes that can be taken here. Neither one has yet been trodden by the Court.

    You can respect what Congress said in passing Section 101 in 1952 despite decades of “judicial exceptions” on the books, without adopting any of those exceptions.

    Or you can precisely define “abstract”. Take it out of the realm of pornography (“I know it when I see it”). That way, the current state of the law won’t be jurisprudential pornography.

    1. tourbillion: You can respect what Congress said in passing Section 101 in 1952 despite decades of “judicial exceptions” on the books, without adopting any of those exceptions.

      That’s not a viable position. The Supreme Court interpreted 101 a long, long time ago (before most patent lawyers were born). The exceptions are part of the statute.

      As if that weren’t enough (and it is) there is zero chance of Congress writing legislation to remove any of those eceptions.

      Or you can precisely define “abstract”. Take it out of the realm of pornography (“I know it when I see it”).

      Two responses: (1) the dictionary definition of “abstract” works pretty well; and (2) is there a widespread perception that contemporary jurisprudence relating to p0rn is problematic in any way? Would we have better p0rn if the definition were more precise?

      1. “As if that weren’t enough (and it is) there is zero chance of Congress writing legislation to remove any of those eceptions.”

        No, but they might codify them, a bit more clearly.

        1. In a not so distant future…

          The legislative record shows that the Patent Act of 2020 was billed as a mere codification of current practice, but it’s proponents later declared that it completely banned software patents…

          1. “The legislative record shows that the Patent Act of 2020 was billed as a mere codification of current practice, but it’s proponents later declared that it completely banned software patents…”

            Lol. It would be a fitting “swinging of the pendulum” where people for far too long claimed the opposite of the act in 52. But let them so claim, let the courts sort it out right fast, that’s what they’re there for.

            1. that’s what they’re there for.

              6, you are one of those who do not seem to grasp the difference between statutory law and common law, so your comment of “that’s what they’re there for.” does not indicate that you understand what they are in fact there for, and what their limits are.

      2. The exceptions are part of the statute.

        But not how you, Ned and the rest of the anti’s try to portray.

        Much to your chagrin, Diehr was not thrown out in Bilski, and Congress’s actions in the AIA post-Bilski cemented in business methods (as a category in contrast to the word categorically) as a patent-eligible part of the Process statutory category.

        3, the new 4, is still not 5; and Dyk has no legitimate legal basis for attempting to impose a minority view as if that view were controlling law.

        1. Diehr was not thrown out in Bilski

          That is an interesting point. I confess I really have no clear idea what is the current status of Diehr. Certainly the Alice court did not purport to overrule Diehr, but the Alice holding really is not consistent with the Diehr holding. Rather, Alice is only really consistent with Justice Stevens’ Diehr dissent. I am not at all certain about the extent to which one can meaningfully say that Diehr is still good law.

          In fact, the great irony is that if you presented exactly the same claims as in Diehr to the PTO today, not only would they have to say that those claims are anticipated by Diehr’s patent, they would also have to say (in clear contradiction to the Diehr holding) that the claims are ineligible under § 101! That is because one now has to make determinations (for § 101 purposes) as to whether a limitation is routine or conventional. While the equations in Diehr’s claims were not routine at the time, they are now, so the claim which was held by the Supreme Court to be § 101 eligible would be ineligible under the new divide-and-conquer Alice test. Crazy, but there it is.

          Judge Rich is no doubt spinning in his grave.

          It should be apparent, however, that novelty and advancement of an art are irrelevant to a determination of whether the nature of a process is such that it is encompassed by the meaning of “process” in 35 U.S.C. § 101. Were that not so,… a given process including both “physical” and “mental” steps could be statutory during the infancy of the field of technology to which it pertained, when the physical steps were new, and non-statutory at some later time after the physical steps became old, acquiring prior art status, which would be an absurd result. Logically, the identical process cannot be first within and later without the categories of statutory subject matter, depending on such extraneous factors.

          In re Musgrave, 431 F. 2d 882, 889 (C.C.P.A. 1970) (emphasis added in blockquote).

          To think that we have to the point where that which Judge Rich regarded as an argumentum ad absurdum sufficient to establish the patent falsity of the proposition is instead the very logic underlying the law post-Mayo.

          1. While the equations in Diehr’s claims were not routine at the time

            I would not even bet on that (read the case again).

            The “Point of Novelty” was the software addition to the machine to use that (old) formula on a near continuous updating basis, to better achieve a result that was indeed fully achieved prior (perfect cures were achieved prior – but the probability was improved).

            1. “I would not even bet [that Diehr’s equations were not routine at the time] (read the case again).”

              Fair enough. Whether they were or were not, everything about the claim (even considered as a whole) is conventional now so my broader (very ironic) point still stands: according to Mayo/Alice, the Diehr claims are § 101-ineligible today, even though Diehr held them eligible. That is why I have to say that I suspect that Diehr has been overruled sub silentio. The Diehr holding would not apply even as to Diehr’s claims if you tried to litigate them today.

              As I said, Judge Rich once (rightly, I think) regarded it as a reductio ad absurdum to suppose that § 101 eligibility could shift with technological evolution. It is a pity that the SCotUS does not bother to read his work.

              1. Except you have the recent a Court in Prometheus expressly saying (even if it then turns right around and engages in contradiction) that that decision does NOT throw out Diehr and in fact states its affirmance of Diehr.

                The real bottom line is that the Supreme Court is simply out of control trying to “wing it” and get its desired ends without using proper means.

                They are not correct just because they are the final judicial level.

                1. The real bottom line is that the Supreme Court is simply out of control trying to “wing it” and get its desired ends without using proper means.

                  Agree 100%.

                  They are not correct just because they are the final judicial level.

                  Also agree 100%. That is why I think that title 35 should be removed from the Supreme Court’s appellate jurisdiction. Congress should establish a special court composed of judges with the appropriate science & technology chops to understand the cases they are deciding (sort of the original idea behind the CAFC, but not how it has turned out in recent years), and this court should be the last word on patent cases.

    2. tour, “You can respect what Congress said in passing Section 101 in 1952 despite decades of “judicial exceptions” on the books, without adopting any of those exceptions.”

      I am simply dumbfounded by the display of ignorance here. However, I have heard variations of this theme so often that I am beginning to think the bar has been deliberately miseducated.

      1. The so-called “judicial exceptions” are not exceptions to the statute. They are part of the statute. It is an unfortunate legacy of history that we refer to them as “exceptions” at all. They are each the natural result of a careful reading of the statutory text, and should be properly understood as such.

  16. …the McRO/Planet Blue case, where…the patents at issue arguably utilize complex and specific computer-implemented techniques for automated lip synchronization of 3D animated characters.

    Which would be such a great argument if the claim was directed to those techniques and not the act of achieving results.

    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.

    McRO could be a great example of how the law *should* function: When the claim is directed to a result absent a limitation to technique, the claim is abstract. When the argument is made that the claim should be construed as solely covering the concrete technique, the claim should be held indefinite.

    The only thing you can invent is a technique, and that’s the only thing you can claim. You can’t claim generic “rules” to achieve a result. Virtually everything in the District Court Opinion in that case was spot on, from evaluating claims “in light of the prior art” (without rejecting them by prior art) even down to its discussion of Abbvie and 112a. In fact, if you take the line “Thus, where a claim recites tangible steps, but the only new part of the claim is an abstract idea, that may constitute a claim to an abstract idea. ” And replace abstract idea with law of nature, you can dispose of Sequoenom in a single sentence.

    Listen to this correct characterization of the invention and tell me this seems eligible, given what Alice said:

    Here, the patents teach that in the prior art, three-dimensional character lip synchronization was performed using a “timed data file of phonemes having a plurality of sub-sequences,” as recited in the claims. ‘576 Patent 1:32-43. But the prior art did not, according to the patents, involve obtaining rules that define output morph weight sets as a function of the phonemes, or using those rules to generate the morph weight sets. Instead, an artist manually set the morph weights at certain important keyframes, and a computer program then interpolated the frames between the keyframes…Plaintiff’s expert opines that a central part of the patents is “using morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate keyframes.” Everyone appears to agree with that characterization, except that Defendants point out that no particular “explicit and distinct” rules are required by the claims. The question is therefore whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules…So, what the claim adds to the prior art is the use of rules, rather than artists, to set the morph weights and transitions between phonemes. However, both of these concepts are specified at the highest level of generality…Here, while the patents do not preempt the field of automatic lip synchronization for computer-generated 3D animation, they do preempt the field of such lip synchronization using a rules-based morph target approach. And if, as Plaintiff suggests, the inventive step is the use of timing rules, given the state of the prior art, that still leaves an abstract idea at the point of novelty, and preventing the development of any additional ways to use that abstract idea in the relevant field.

    This is not a difficult case. My money is still on the CAFC getting it wrong.

    1. Listen to this correct characterization of the invention and tell me this seems eligible, given what Alice said:

      Contrast with the article’s “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.

      I think that you are (again) missing the point that the scoreboard is broken, Random.

      1. Not at all, the fact that the CAFC *can’t understand* why the Supremes lay down rules, whether its in Lincoln Engineering on aggregation or Nautilus with reasonable particularity (that mine is still waiting to go off) or their 101 jurisprudence just means the CAFC *isn’t very smart,* not that there is something wrong with the Supreme’s logic.

        The rule in Mayo is the way it is because it *intends* to remove Sequenom-type inventions. It is not a bug, as they assume, but a feature. It *has to be that way* because otherwise every natural discovery will become a patentable event. If new nature + old technique is eligible, then everyone who strikes oil patents the location of the oil + conventional drilling techniques. Yet despite us never giving out a patent on a new location of oil, people manage to keep looking for it, as if they had some other incentive outside of the monopoly to drive them.

        1. Yet despite us never giving out a patent on a new location of oil, people manage to keep looking for it, as if they had some other incentive outside of the monopoly to drive them.

          What could that incentive possibly be? It’s a total mystery.

          1. Well, with drilling for oil, there are other means of securing some exclusive rights to where you invest the time and effort to drill.

            In other words, there IS protection from a bigger company coming along and taking the oil that you just struck.

            If there weren’t, you’d only see “drilling efforts” by very powerful people who didn’t need such protection.

            1. It’s actually the opposite, isn’t it? If you find oil it’s likely on someone else’s land. You lack the rights to the land, and you lack the rights from the government to drill. Sequenom can at least practice their discovery, BP has to go through contractual and governmental red tape before they can practice theirs.

            1. They don’t give out patents for Sequenom and Mayo either (at least, not when we do our job). They give out peer-reviewed acclaim and nobel prizes. And much like the deeds and licenses, these are sufficient compensation and motivation for the discovery of a natural fact.

              1. The issue is not sufficiency.

                The goal is to promote progress in the useful arts. If useful arts are progressing along even at 10 without patents, we can dial them up to at least 11 with patents.

                1. There’s no progression of the useful arts in a Sequenom-style disclosure. Prior to Sequenom’s application the art knew of a method and was already fully enabled to apply the method to whatever they wanted. Sequenom motivated them to apply it to a particular thing solely by describing a fact about the world. But Sequenom didn’t invent that fact, they just reported it.

                2. You are absolutely wrong here Random.

                  The meaning of the word “promote” is NOT limited to the simple “betterment” – as in linear improvement.

                  Innovation does not work that way – the law is not limited that way.

                  Think “parking lot” instead of “grid of streets.”

                3. Let me also add that actual innovation is OFTEN initially a step backwards in many facets that some would label as that linear improvement.

                  I have pointed out many times in the past Christensen’s work on disruptive innovation. Please educate yourself a little on actual innovation if you want to expound on the topic.

        2. RG: The rule in Mayo is the way it is because it *intends* to remove Sequenom-type inventions. It is not a bug, as they assume, but a feature. It *has to be that way* because otherwise every natural discovery will become a patentable event.

          Exactly. And nobody except for an ultra-microscopic wealthy subminority of the population believes it should be any other way.

          That’s why we need to continually suggest that the critics come up with some reasonable middle ground and talk. We recognize that requires some brainwork and some of your clients desperately want to return to State Street free-for-all but that’s not happening. Ever.

          1. Even some anti patent judges seem to lament that Mayo was worded far more broadly than necessary to achieve its result.

            I honestly don’t know whether the Supreme Court intended that or not, but their decision on cert for Sequenom will give is quite a clue.

        3. “Nautilus with reasonable particularity (that mine is still waiting to go off) ”

          What do you mean by that? It’s reasonable certainty btw, a term of legal art. But what do you mean?

          1. 112b has substantive scope regulation power. First, to prevent overbroad claiming in the manner the federal circuit uses written description now (compare Holland Furniture and Wabash with Lizardtech and Abbvie). Second, to prevent old combinations or aggregations, see Lincoln Engineering. The former at least has a CAFC analog, the latter does not.

            My position is well summed up by the dissent in Barber: “the phrase “particularly pointing out” has the connotation of defining the unobvious contribution without extraneous items or appendages.”

              1. Because what is reasonable is an objective standard, and the view of the CAFC (and thus the Office) is that whatever the applicant subjectively decides on as their invention is okay.

                Let’s say I invent a new car battery that lasts twice as long as current models, but is otherwise unchanged. I file a spec that states “This battery can be hooked up to a car using conventional methods and can be used in the conventional way.”

                Then I claim: 1. A system comprising: My new car battery and a car, wherein the battery is hooked up to and powers the car.

                In the CAFC’s view, Claim 1 is allowable, because the Applicant is entitled to claim whatever they want, and the claim language used is actually enabled and supported by the specification (no 112a rejection) and is non-obvious (no 103). Claim 1 isn’t vague, ambiguous or “insoluably ambiguous”, but it does lack reasonable certainty, because I didn’t invent anything after “My new car battery”. In the Supreme’s view, Claim 1 is subject to a 112b rejection.

                1. Your “objective/subjective” rants are a desired ends trying desperately to find a home.

                  As to “In the Supreme’s view, Claim 1 is subject to a 112b rejection.” you are again making things up whole cloth. Please tell me which case it was that the Supreme Court delved into a 112 decision, much less the particular 112(b) decision.

                  You will not because you cannot.

                2. Random, your guess of “Lincoln Engineering” is not correct.

                  That was a pre-1952 case, before 35 USC 112 existed.

                  (further, this does appear abrogated in light of your own proffered post-1952 “mere aggregation” cases)

                3. ” and the view of the CAFC (and thus the Office) is that whatever the applicant subjectively decides on as their invention is okay.”

                  The CAFC never said such a thing. And neither did the Office. That was, perhaps arguably, the old, pre-nautilus view of the CAFC (though not really). Now, the Federal Circuit, having been enlightened seems to be doing just fine as far as I’ve seen.

                  If you can enunciate, in words, two different interpretations that need to be chosen between, and are willing to let the applicant choose between them then everything will be fine when you send a 112b. If you can enunciate in words why one of skill in the art would not be reasonably certain of the scope of the claim as currently worded then you may send a 112b and the federal circuit will back you up. Presuming you’re not crazy.

                  “Let’s say I invent a new car battery that lasts twice as long as current models, but is otherwise unchanged. ”

                  Something had to change in the battery or it wouldn’t last twice as long. Try figuring out what actually changed and make them claim that using 112 and 102.

                  “In the CAFC’s view, Claim 1 is allowable, because the Applicant is entitled to claim whatever they want, and the claim language used is actually enabled and supported by the specification (no 112a rejection) and is non-obvious (no 103). Claim 1 isn’t vague, ambiguous or “insoluably ambiguous”, but it does lack reasonable certainty, because I didn’t invent anything after “My new car battery”.”

                  What? Either the new battery is new or it isn’t. If they have the “new” details in the claim then it’s all fine brosef. If they don’t put the new details in the claim then you have a 102 most likely (and maybe a 112b for flavor if they worded it like you did). We’re looking for “reasonable certainty” of what the SCOPE is. Your hypo claim seems 100% clear and one of ordinary skill will have 100% reasonable certainty as to what the scope is. Presuming that your limitation “my new car battery” actually has further detailed limitations in it stating what is new.

                  If he literally just says “my new car battery” give him a 102 and maybe a 112 b for flavor. He will never win at the Federal Circuit. Ever. Period brosef.

                  “Claim 1 isn’t vague, ambiguous or “insoluably ambiguous””

                  If they wrote it literally like you did yes it is. And a 112b will never be overturned by the federal circuit.

                  “In the Supreme’s view, Claim 1 is subject to a 112b rejection.”

                  Yes, that’s because that’s the law. And the federal circuit will back them.

                4. If they have the “new” details in the claim then it’s all fine brosef.

                  Nope, that’s the point brosef. Having the new details in your claim is *necessary* but not *sufficient* to point out and particularly claim what the invention is. To be sufficient, the claim must be *limited to* what constitutes the new details and the interaction that occurs.

                  Let me make this super easy for you: If a claim a system of my house comprising the things inside it, and I particularly describe, in the claim, each of 1000 items within my house, and *one* of those items is in fact a novel, non-obvious invention, I still can’t claim the system under 112b, because the extraneous matter (all of the other particularly described junk) is not reasonable and it does not describe *the invention* with reasonable certainty.

                  Your hypo claim seems 100% clear and one of ordinary skill will have 100% reasonable certainty as to what the scope is.

                  It *is* 100% clear, but it still fails 112b, brosef. That’s the point I’m making, because the requirement is not that the scope is 100% clear, but that *the scope of the invention* is 100% clear. Read Lincoln Engineering. You’ve been told by the CAFC that the only way to fail “particularly point out and distinctly claiming what the applicant considers their invention” is by being some level of vague or ambiguous, but the easiest way to fail that *is to include subject matter you didn’t invent.*

                  Forget the “law” you think you know or the the bs the MPEP has been peddling for a second and just use your common sense to answer this question:

                  If someone invents a new longer-lasting car battery and the new car battery is hooked up to a car in the same manner as an old one, and the Spec says so, and it powers the car in the same manner as an old battery, and the Spec says so, and the Spec says “I don’t have to teach how to hook up the battery to the car or how the car gets powered, because that is all old in the art” does it make sense to allow a system claim to “My new car battery comprising: [insert clear, particular description here]; *and a car, wherein the battery powers the car*” when the commandment is to “point out and distinct claim the subject matter which the applicant regards as his invention.”

                  There’s only one allowable claim in that situation: a device claim to the particularly described new battery. Not a system claim where the battery powers the car. And the reasoning ought to be super-clear why, brosef: If you infringe a car battery the value of the infringement is $60. If you infringe a system comprising the battery + car the value is $30k. This guy just increased his return by 50000% by *reciting someone else’s invention*. And worse, it’s a conventional invention that has been around for decades and is well dedicated to the public at this point. As soon as either the spec or the prior art shows that the battery-car relationship is old, the battery-car relationship has to be removed from the claim, because it is unreasonable to “obscure” or “hide” the inventive aspects of the battery by including extraneous subject matter.

                  Why else does it matter? Consider Claim 3 which says: “A method of passively determining the remaining charge in a battery, wherein the method comprises: [insert particular description of a conventional battery-measurement technique]; wherein the technique is directed to [particular description of the new battery]”. Claim 3 now makes people who are non-infringers of the ACTUAL INVENTION (i.e. people who neither make nor use your invented battery) into infringers because they are performing a conventional battery measurement technique. So a car checkup infringes *your patent* by applying a conventional battery measurement method without making or using *your device*. Now *anything* you recover here is ill-gotten money.

                  What protects against this? Not 112a, because the art is actually enabled and in possession of the old acts. Not 103, because your new battery is indeed in the subject matter of the claim. Under Lincoln Engineering 112b protects the public from someone re-patenting.

                  See brosef, you’re so blind you’re entirely missing an entire facet of 112b because *the office never makes this kind of rejection at all* the only question we ask is “Is it clear what is being referred to” without asking if what is being referred to is the invention. You’re told that the inventor can call whatever he wants (assuming it is clearly put forward and meets 103/112a) his invention, regardless of what his spec or the prior art says about it. That’s not the case, brosef.

        4. Random,

          You still do not seem to grasp the basics of statutory versus common law with your comment of “why the Supremes lay down rules” and the actual problem here of a broken scoreboard.

          Hint: the Constitution authorizes only one single branch to write patent law.

          Now mind you (as I have explicated previously) Congress can share its authority (as it did in pre-1952 and the allowed use of common law to develop the meaning of the word “invention,” and the post 1952 provision to the courts on equitable remedies) – but 101 is NOT an area of (properly) shared law writing.

        5. I gather that you regard the “location of the oil + conventional drilling techniques” claim as a reductio ad absurdum that proves the correctness of Mayo. I do not follow the argument, at least not yet.

          What is the undesirable consequence of “location of the oil + conventional drilling techniques” claims that makes it so patently clear to you that such claims should be excluded from patentability under § 101?

          1. Well obviously it deprives the landowner of the partial use of their land for 20 years which has its own federalism issues, but from a strictly IP standpoint it removes or delays drilling techniques from EVER being dedicated to the public.

            There may be a drilling technique that is 100 years old that yesterday one of skill could have applied, with no further teaching, to any oil deposit, that would *routinely* be yanked back from the public domain if the claim were allowed. We would have to assume that if one claim is eligible they all are, so every time someone finds oil there will be a patent on all conventional drilling techniques, and the fact is one will never be able to practice any drilling techniques *until a given subject of the technique is known for 20 years rather than the technique itself.*

            Similarly, it destroys future development – by denying a craftsman (the would-be driller) the raw material, he holds the toolmaker (a drilling technique inventor) hostage. A is never going to develop a new drilling technique if he can’t realize any licensing fees because there is no oil to practice on and B holds a super-license on the drilling technique when it is applied to a given piece of oil.

            The notice standpoint would also be a complete mess – Imagine having a camera for 30 years, and one day you’re taking pictures *in the same conventional manner you have been for decades, consistent with how handheld cameras have been since the 1950s* and suddenly finding out that you infringed a patent because the picture you took was of a cave formation that was just discovered within a 20 year exclusivity period, and the discoverer had the foresight to claim all conventional technological interactions with his new piece of earth (which sits on land that he may or may not own).

            1. Well obviously it deprives the landowner of the partial use of their land for 20 years which has its own federalism issues…

              Well, yes, this does raise federalism issues, but not insuperable issues. The FCC, FAA, EPA, and Army corps of engineers all feel free enough to invoke federal law to restrict land uses, and the results have been tolerable (or even an improvement) in most instances. Besides, it is in the nature of a patent system to limit what people can do with their own ____ (land, motorbike, pasta strainer, etc). This is simply no objection at all.

              [I]t removes or delays drilling techniques from EVER being dedicated to the public. There may be a drilling technique that is 100 years old that yesterday one of skill could have applied, with no further teaching, to any oil deposit, that would *routinely* be yanked back from the public domain if the claim were allowed.

              Huh? This is not true at all. If Conoco discloses a drilling technique in a patent, then once the patent expires Amoco is free to use the technique in all of Amoco’s existing fields. Nothing is “yanked back” from Amoco.

              [E]very time someone finds oil there will be a patent on all conventional drilling techniques, and the fact is one will never be able to practice any drilling techniques *until a given subject of the technique is known for 20 years rather than the technique itself.*

              Not true. Imagine the claim “a method for excavating a carbon fuel resource, the method comprising drilling into the ground at 42˚ N latitude and 36˚ W longitude.” You are correct to say that this reads on all prior art drilling techniques, so it prevents their use, but only in one particular location. The whole rest of the world is still free to use any prior art drilling technique they wish, so long as they stay clear of 42˚N/36˚W.

              Similarly, it destroys future development – by denying a craftsman (the would-be driller) the raw material, he holds the toolmaker (a drilling technique inventor) hostage. A is never going to develop a new drilling technique if he can’t realize any licensing fees because there is no oil to practice on…

              But my hypothetical claim above does nothing to deprive the craftsman of oil to harvest. The whole rest of the world—including all known and existing oil fields—is open to him to drill. There is still a strong return to the toolmaker to develop new drilling technology, because such technology can improve the efficiency (and therefore profitability) of existing oil fields.

              B holds a super-license on the drilling technique when it is applied to a given piece of oil.

              Sure, but what of it? The patent only blocks drilling on one oil patch. The whole rest of the world is still open for business. Do you really mean to say that a drill technology developer cannot make a profit unless his drills are licensed for every oil field in the world? That it is impossible for the drill-inventor to make a profit by licensing to Amoco unless he also licenses to Conoco? Sure that is not the case.

              The notice standpoint would also be a complete mess—Imagine… finding out that you infringed a patent because the picture you took was of a cave formation that was just discovered within a 20 year exclusivity period, and the discoverer had the foresight to claim all conventional technological interactions with his new piece of earth…

              Two points:

              1) De minimis lex non curat.

              2) The first U.S. patent ever granted concerned a method for making better potash. The method involved using more elm, ash, sugar maple, hickory, beech, or basswood and less gum, oak, willow, pine, cedar, sycamore, or sumac.

              Imagine if you were a potash maker, using maple just as you always had for years. Suddenly there is a patent saying you can no longer do this. Nothing appears on the maples themselves to let you know that they are now off-limits for potash manufacture. Maybe the whole patent is even invalid, because you had been practicing this invention commercially for more than one year before Samuel Hopkins filed his application.

              That is all a long way of saying that notice is always tricky for method claims. None of this means, however, that the original US patent failed the antecedent to the modern § 101.

              (which sits on land that he may or may not own).

              What does that have to do with § 101 eligibility. Obviously, if I own the land that is required for my method claim, there is nothing problematic in that.

              I suppose that people might bristle at the idea that I could own a piece of land, and someone else could own a patent that (temporarily) blocks me from drilling on my own land, but really this is scarcely different from the idea that I can own the surface rights and not the mineral rights. Besides, if some sneak finds oil on my land and patents it without my consent or knowledge, well I can use the patent itself as evidence of his trespass on my land, and I can sue to recover the lost value of my land in damages.

              This, however, is all wandering quite far afield of patent law. I just do not see any objection raised in your post above that shows that the patent law would be in some measure defective if it allowed the claim that you present as a reductio ad absurdum.

              1. Besides, it is in the nature of a patent system to limit what people can do with their own ____ (land, motorbike, pasta strainer, etc).

                I disagree, the Supreme Court is very clear is that the patent laws cannot prevent me from doing tomorrow what I am capable of doing today. The only thing they can do is teach me how to do something new and have exclusive right for that for a while.

                I just want to point out how silly this line of thinking ultimately is. For example, eradicating a termite population is a known technique. Whole industries know of this technique. Do you think that if one discovers termites in my house that the discoverer can apply for a patent to control my ability to eradicate the termites? Think of how crazy that would be – I couldn’t select any exterminator other than the discoverer, and the discoverer can charge any amount of money he wishes, because I can lose my house if I don’t destroy the termites. Why? Because he went looking for a natural phoenomena that was not obvious on its face and eventually found it? What’s the difference between applying conventional termite-destroying techniques after disclosure that a particular house has termites and applying conventional dna-analysis techniques after disclosure that a particular part of the body has fetal dna?

                Huh? This is not true at all. If Conoco discloses a drilling technique in a patent, then once the patent expires Amoco is free to use the technique in all of Amoco’s existing fields. Nothing is “yanked back” from Amoco.

                Your hypothetical only works because Amoco discovered its own fields. Suppose in Year 1 Conoco discloses a drilling technique, and in Year 19 they discover an oil deposit and claim the deposit in a patent wherein conventional drilling techniques are applied to the deposit. In Year 35, 15 years after the drilling patent ran, I could own both a) the land the deposit is under and b) drilling equipment that performs the technique and still be forced to apply to Conoco for license. The same will be true in Year 100, so long as the field was discovered at some point in the last 20 years. So long as Conoco keeps discovering oil deposits (a quintessentially non-inventive non-useful-arts act) I have to keep applying to them to use their techniques.

                You are correct to say that this reads on all prior art drilling techniques, so it prevents their use, but only in one particular location. The whole rest of the world is still free to use any prior art drilling technique they wish, so long as they stay clear of 42˚N/36˚W.

                Except the whole rest of the world is going to be applying the same patents this particular situation did.

                There is still a strong return to the toolmaker to develop new drilling technology, because such technology can improve the efficiency (and therefore profitability) of existing oil fields.

                Why would I bother to discover new drilling technology if I am not also in the discovery business? If my new technique is disclosed on day 1, then on day 2 someone else discovers a new field, nobody can work that field with my technique without applying to someone else for a license. What money can I make licensing when a third party still controls whether the technique can be applied to the raw material? At a minimum I am splitting my licensing fee with them, at worst they only license out the ability to work the well with *their own* techniques (and keep the rights to work the well with my techniques to themselves) and I can’t make any money at all. It doesn’t matter how efficient a technique is if a third party won’t allow me to license my own technique.

                What does that have to do with § 101 eligibility. Obviously, if I own the land that is required for my method claim, there is nothing problematic in that.

                You dismiss the federalism issues too much. If I buy land I own the sky above and the land below. You are suggesting that Amoco can scout for oil on land next to mine, recognize that my land has a deposit and rather than negotiating with me for the use of my land, summarily deprive me of what is mine by disclosing that there is oil. That has never been and cannot be the law. It effectuates an uncompensated federal taking (a limited duration taking, but a significant one). It fails to advance the useful sciences – it merely advances commercialism. If you think its eligible you’re welcome to try, but it seems unlikely that the oil industry (and other industries that depend upon knowing a particular natural fact) has foregone patenting the exploitation of oil they have discovered for centuries despite the obvious lucrativeness of doing so – res ispa loquitor.

                1. [T]he Supreme Court is very clear is that the patent laws cannot prevent me from doing tomorrow what I am capable of doing today.

                  Sure. And the day after my hypothetical “42˚N/36˚W” claim issues, you can still do all of the things that you have been doing in the past. That is to say, you have not been drilling at 42˚N/36˚W, so you cannot start now, but you are free to keep using your conventional drilling equipment at any other site to which you have legal access.

                  I just want to point out how silly this line of thinking ultimately is.

                  I agree that the “42˚N/36˚W” claim seems silly. I am not convinced that this proves that it really is § 101-ineligible, but I concede the silliness.

                  Do you think that if one discovers termites in my house that the discoverer can apply for a patent to control my ability to eradicate the termites?

                  Maybe. I do not think that we can foreclose the possibility a priori on § 101 grounds.

                  Think of how crazy that would be – I couldn’t select any exterminator other than the discoverer, and the discoverer can charge any amount of money he wishes, because I can lose my house if I don’t destroy the termites. Why? Because he went looking for a natural phoenomena that was not obvious on its face and eventually found it?

                  Yes, that seems the state of it. As a practical matter, your hypo seems quite far-fetched. We have to imagine a situation where I—the homeowner—have not called an exterminator, but rather the exterminator has snuck onto my land to detect termites without my knowledge. At that point, he can sue me for infringement, and I can sue him for trespass to land, and the whole thing is a wash. Moreover, in reality it will take several months to years between his discovery of the termites and the issuance of the patent (or even the publication of the application). In the meantime, I will already have hired someone else to deal with the problem, so by the time he has an enforceable claim, there will be no infringement.

                  In other words, the hypo described above sound distressing, but would never materialize in real life.

                  What’s the difference between applying conventional termite-destroying techniques after disclosure that a particular house has termites and applying conventional DNA-analysis techniques after disclosure that a particular part of the body has fetal DNA?

                  Off the top of my head, I do not see any material difference. As I said, however, I do not regard the termite claim as clearly § 101-ineligible, so it is not surprising that I also regard the Sequenom claim as § 101-eligible.

                  Your hypothetical only works because Amoco discovered its own fields.

                  Correct, that is the only reason it works. So you concede that my hypo is legally correct?

                  Suppose in Year 1 Conoco discloses a drilling technique, and in Year 19 they discover an oil deposit and claim the deposit in a patent wherein conventional drilling techniques are applied to the deposit. In Year 35, 15 years after the drilling patent ran, I could own both a) the land the deposit is under and b) drilling equipment that performs the technique and still be forced to apply to Conoco for license.

                  Correct. So far I am not seeing how you regard this as any sort of reductio ad absurdum that proves a point.

                  The same will be true in Year 100, so long as the field was discovered at some point in the last 20 years.

                  Now you have lost me. If the field was disclosed in year 19, how are they claiming it in year 100?

                  So long as Conoco keeps discovering oil deposits (a quintessentially non-inventive non-useful-arts act) I have to keep applying to them to use their techniques.

                  Not at all. I would have to apply for Conoco’s license to drill in (and only in) their newly discovered site. The techniques as such, however, would be freely available to everyone to use in other site. Given that the majority of the world’s oil is in places other than “42˚N/36˚W” (or whatever other arbitrary location is the new site), this amounts to an infinitesimally small diminishment of the public domain.

                  Except the whole rest of the world is going to be applying the same patents this particular situation did.

                  Well, look, all oil reserves that are known as of the filing date will be immune to such patent claims, because it is clearly obvious to use conventional drilling technology to drill for oil in known oil sites. The claim you have in mind only becomes available in a situation where I discover a new oil site. In other words, in order to obtain the claim that you regard as absurd, I have to discover a new location of oil and disclose it to the world. I guess I do not see how that so clearly fails the quid pro quo that has traditionally justified the granting of patents.

                  Why would I bother to discover new drilling technology if I am not also in the discovery business?

                  Because you hope to license it to someone who is in the discovery business. Do you imagine that every technology that Conoco uses is developed in-house by Conoco. That they do not buy/license anything from outside the Conoco operation?

                  If my new technique is disclosed on day 1, then on day 2 [party B] discovers a new field [at site B], nobody can work [the site B] field with my technique without applying to [party B] for a license.

                  Correct, but then if party B had not disclosed the existence of the site B field, they could not have worked site B anyway. Party B has not taken from the public anything that they already had. He has made a new field available.

                  What money can I make licensing when a third party still controls whether the technique can be applied to the raw material?

                  Party B controls whether the technique can be applied at site B. He does not control the use of your new technique anywhere else in the world. If your new technique is any good, Conoco, and Amoco, and Aramco (etc.) will be happy to license your technique to use in their existing fields. There is plenty of money still for the drilling technology developer to make even if s/he cannot license the technology for use at site B.

                  You dismiss the federalism issues too much. If I buy land I own the sky above and the land below. You are suggesting that Amoco can scout for oil on land next to mine, recognize that my land has a deposit and rather than negotiating with me for the use of my land, summarily deprive me of what is mine by disclosing that there is oil.

                  I think you overstate your case here. For one thing, the patent claim does not allow Amoco to take my oil. It merely allows Amoco to stop me (for a limited amount of time) from extracting the oil myself. If Amoco wants the oil (and it is more valuable to them than it is to me), they still need to license my mineral rights. In other words, they still very much need to negotiate with me.

                  I grant you, it does put Amoco in a stronger bargaining position, because it cuts off my right (for ~17 years) to negotiate with Conoco. It is not clear to me, however, that this is such an absurd result that the patent claim must be invalid on § 101 grounds. Awkward bargaining positions come up all the time in the real world. They are not some sort of ludicrous state of affairs that the law bends over backwards to eliminate.

                  That has never been and cannot be the law. It effectuates an uncompensated federal taking (a limited duration taking, but a significant one). It fails to advance the useful sciences – it merely advances commercialism. If you think its eligible you’re welcome to try, but it seems unlikely that the oil industry (and other industries that depend upon knowing a particular natural fact) has foregone patenting the exploitation of oil they have discovered for centuries despite the obvious lucrativeness of doing so – res ispa loquitur.

                  Maybe the claim I hypothesized does amount to a taking. Maybe it does not. Fifth amendment “takings” law is complicated and I am not expert enough to speak to the issue. That really proves nothing one way or the other about § 101-eligibility. At most it proves that someone would have to pay compensation once the claim issues.

                  I see your point about it being strange that no oil company has tried for such a claim if it really were patentable. That said, is it clear that this means that such claims are unpatentable on § 101 grounds? I dare say that if Amoco knows that site K has oil, it might well be obvious to suppose that neighboring site L has oil. In that case the claim would fail, but not necessarily for § 101 reasons. In other words, it is hard to move your argument from the indisputable premise “claims like this are not common” to the far more debatable conclusion “they are not common because of § 101.”

                2. That is to say, you have not been drilling at 42˚N/36˚W, so you cannot start now, but you are free to keep using your conventional drilling equipment at any other site to which you have legal access.

                  First of all, this isn’t even true, as I could be drilling it just not in a “public” prior art way, but that’s more a 102 problem than a 101 problem. But you’re missing the point – There was nothing technological stopping me from drilling the oil, there was simply a lack of knowledge that the oil existed. I had the same amount of technological knowledge on the day before your patent as I did the day after. I may have been lacking a commercial motivation for performing the drilling (since I didn’t know the oil was down there) but that is not a useful-arts distinction.

                  As a practical matter, your hypo seems quite far-fetched. We have to imagine a situation where I—the homeowner—have not called an exterminator, but rather the exterminator has snuck onto my land to detect termites without my knowledge.

                  First off – why do we have to imagine you haven’t called him? Either you have the requisite knowledge yourself (unlikely) or you paid someone to acquire that knowledge. Are you suggesting that calling someone to determine the state of your house inherently creates an IP assignment right or shop right? But let’s ignore that for a second – You don’t think that there exist some contexts (and perhaps termites are one) where its discoverable just by being invited? Certainly if we change “house” to “store” an exterminator wandering down the aisle might be able to notice something that would tip him off to their presence that you might totally ignore?

                  Moreover, in reality it will take several months to years between his discovery of the termites and the issuance of the patent (or even the publication of the application).

                  It may take several months (I would imagine once it actually makes it to an examiner the 103 question would be a simple one) and that may or may not be relevant for termites, but the same applies for any natural phoenomenon. On the flip side oil has been undiscovered for millenia. This seems like a very flimsy point to turn on – that the office’s tardiness solves any problem which may occur.

                  Correct. So far I am not seeing how you regard this as any sort of reductio ad absurdum that proves a point.

                  You have no problem with everyone owning a natural item for 20 years simply because they found it first? I see you’re very honest with the rational outcomes of your logic – I assume you would admit that the logic is neither field nor technique-exclusive. In other words, if the grand canyon was undiscovered until today, and then I discovered it, you would apparently have no problem with a claim that said “I claim any previously disclosed technique that acts upon, with or otherwise utilizes the grand canyon or any part thereof, and any previously disclosed device or system that interacts with it” such that any use of the grand canyon or anything done to it is wholly foreclosed from both the US Government and any other person I see fit for the duration of the patent grant, true?

                  It would also stand to reason, for example, that your logic would allow the first person who landed on Mars to claim “everything one can conventionally do on earth, except on Mars” such that nobody else could land on Mars despite the fact that they used a different spaceship and a different method for achieving landing on Mars than the applicant, correct?

                  If I assume your answer to both the above (and you can tell me if I’m wrong obviously) – then what does “the promotion of the useful arts” possibly mean to you? Wouldn’t your interpretation render the property clause of the constitution dead letter?

                  In other words, in order to obtain the claim that you regard as absurd, I have to discover a new location of oil and disclose it to the world. I guess I do not see how that so clearly fails the quid pro quo that has traditionally justified the granting of patents.

                  I’m not suggesting it violates quid pro quo, I’m just suggesting that it could not possibly be the system contemplated because it was never designed to give that exclusionary right. Assuming 101 allowed it, 101 always allowed it, and the US existed prior (I believe) to all oil deposits being discovered. In other words, at a minimum, the number of wells you can access without a patent will be a disappearing minority and at a maximum, there could have never been any at all. I find it difficult to believe that the constitution would allow an industry to determine on its own whether that industry allowed any competition to have the raw materials needs for competing. According to you, the only thing allowing me to compete with Amoco today is that nobody had the foresight to claim patents on individual wells yesterday, because otherwise if I wanted to get into the drilling business I would need license from Amoco and its cohorts not just to use their techniques, but to actually compete with them using my own techniques, as they actually own the rights to any method of harvesting the raw materials.

                  I suppose I should ask this – do you believe in any 101 restrictions at all? For example, Harry Potter certainly has entertainment utility as can be evidenced by Rowling’s net worth. Are you suggesting that Rowling should be able to patent a book with the harry potter story in it? If a journalist brings to light a new fact, should that fact be patentable such that nobody could report it (or otherwise use it with any form of technology) outside of the journalist? What is the fact is a fact about nature, such as the oil well location? Is the fact absent a technique for drilling it eligible, or is the claim to conventional drilling techniques necessary for eligibility?

                  For one thing, the patent claim does not allow Amoco to take my oil. It merely allows Amoco to stop me (for a limited amount of time) from extracting the oil myself.

                  But that is a “taking” under the law. It doesn’t matter that I didn’t know it was there, it doesn’t matter that I’m not currently using it, it doesn’t matter that its for a limited time, and it doesn’t matter that when the time ends that it is in the same state. You don’t think the government can come in to your home, station police in your guest bedroom so they can stakeout the apartment across the street for a week, and not pay you simply because they say “We’ll leave the bedroom in the same manner we found it when we’re done” do you?

                  Nor does the fact that it’s Amoco who is the beneficiary matter, by the way. The deprivation is being performed pursuant to federal law. It’s a federal taking.

                  At most it proves that someone would have to pay compensation once the claim issues.

                  Well in true “two wrongs sometimes make a right” fashion – if this is the way you conceive it I suppose it would solve itself, since the federal government having to pay me for a disclosure which benefits only me (that my land has oil underneath it) means that if 101 did allow this, it would quickly be amended to not allow it.

                  I guess i have to see how you view 101. It’s certainly possible to have a system where every fact discovered leads to a 20 year exclusionary period of using that fact in connection with technology (i.e. an anti-Morse decision), but that’s not really consistent with a first amendment free speech society. But similarly, it’s also possible to have a system with no IP protection at all. I don’t think the constitution does either of those things. I think the only thing congress is allowed to grant a patent for is a disclosure that advances the knowledge of a useful art field. I can certainly see how disclosing the location of an oil well has commercial value, but in terms of a drilling engineer (i.e. one of skill of art in the field) it is worthless information, because the engineer can do the same thing tomorrow he did today – apply conventional techniques to drill for oil. It might make less commercial sense to drill somewhere where you are uncertain that oil exists, as opposed to somewhere where you’re sure it does, but I don’t view commercial feasibility as a useful arts utility. If we allow patenting on every fact that has commercial value (without also requiring a corresponding enabling teaching of a new useful arts technique) then pretty much every reporter or gossip columnist becomes an inventor, which frightens the word out of its meaning.

  17. The last four articles:

    New Old
    Design Patents
    Applications and patents still being steady (impliedly too much?)
    And a teasing 101…

    It’s like one huge Fn chum fest.

    Or a huge smoke screen to cover up the points being made concerning Trade Secrets and Judge Dyk….

    Perceptions,
    Perceptions,
    Perceptions.

    1. “Or a huge smoke screen to cover up the points being made concerning Trade Secrets and Judge Dyk….”

      The “points” being made remain visible for everyone to see.

      1. That’s like hiding in plain sight with the attention span of the Echo’s here.

        Especially when old Merry Go Rounds beckon.

        😉

  18. On the “natural phenomenon” front, oral arguments were heard recently by the CAFC in Rapid Litigation Management (Celsis) v. Cellzdirect. That decision is likely to provide some “additional clarity” on the natural phenomenon issue. It seems like a decent vehicle for doing so, although I admit to not having dived deep into the uncontested facts about the prior art.

    More info here: link to holmansbiotechipblog.blogspot.com

    Additional background here: link to patentdocs.org

    I’d be keen to hear from any practitioners in that space about the claim at issue. The CAFC previously deemed them non-obvious (Rader and Prost, with Gajarsa dissenting).

    A method of producing a desired preparation of multi-cryopreserved hepatocytes, said hepatocytes, being capable of being frozen and thawed at least two times, and in which greater than 70% of the hepatocytes of said preparation are viable after the final thaw, said method comprising:

    (A) subjecting hepatocytes that have been 
frozen and thawed to density gradient fractionation to separate viable hepatocytes from non-viable hepatocytes,

    (B) recovering the separated viable hepatocytes, and

    (C) cryopreserving the recovered viable hepatocytes to thereby form said desired preparation of hepatocytes without requiring a density gradient step after thawing the hepatocytes for the second time, wherein the hepatocytes are not plated between the first and second cryopreservations, and wherein greater than 70% of the hepatocytes of said preparation are viable after the final thaw.

    1. The method produces a tangible result by converting a population of cells that includes nonviable cells to a population of cells that does not include nonviable cells. The second cell population would act and perform differently when cultured or used in the future as compared to the original cell population. That’s a real and useful method.

  19. 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.

    Here’s some clarity: if you want to be assured of an eligible claim, use language that distiguishes your innovation from the prior art in objective structural terms and which doesn’t amount to an effective monopoly on some natural phenomenon that you discovered (i.e., “detect this phenomenon using an old detection tool, just like I did”).

    That’s pretty clear. And there’s an infinite amount of innovation space — important space — to be explored within those reasonable bounds. It represents a return to sanity where grifters and exploiters end up with the shortest possible stick or none at all. The idea that somebody — anybody — should be rewarded with a hundred lifetimes worth of cash because they “discovered”, e.g., that you could use a mobile phone to turn on your air conditioning “remotely” is absurd. But that’s the kind of idea that infected a sizable portion of the patent bar and completely rotted its credibility.

    1. Y
      A
      W
      N

      And yet again Malcolm wants to make an issue out of his fallacy of “objective structural terms” as somehow being anything BUT an optional claim format, and as being somehow a de facto legal requirement and ONLY valid claim format.

      1. a de facto legal requirement

        It’s kind of like the “de facto legal requirement” that you can’t protect a correlation by reciting a step of thinking about the correlation and an old data gathering step.

        But you’ll figure this all out eventually, “anon”, along with the rest of your willfully clueless cohorts.

        Or you can keep pretending that logic isn’t abstract. Go for it! It may be your best strategy.

        [shrugs]

        1. Keep [shrugging] as you attempt (again) to move the goal poss on the point at hand.

          That point being that your fallacy of “objective physical structure is ONLY an optional claim format.

          How is your “attempt” at copyrighting “logic” coming along?

          {guffaw}

          1. your fallacy of “objective physical structure is ONLY an optional claim format.

            I don’t recall saying that you were required to use that format.

            You can write any claims that you want, “anon”! Have fun.

  20. “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. ”

    Is this a call for clarity, or a reversal of Alice/Bilski? As some of here have pointed out, if claim is really directed to a business method, with computer hardware generically recited, there can be no guessing.

    Versata gives one pause, however, as it claims an invention that dramatically sped up a process for price quotes. Now to me, that is an improvement in a machine process, not an improvement in a price algorithm. As such, I think Versata needs to be reversed.

    1. Once again Ned – try not moving the goalposts of Bilski to be about business method patents.

      How many times do you want to ride that Merry Go Round?

      1. anon, Versata’s only hope now is to convince the Supreme Court that their patent is not a business method patent.

  21. recent calls for the abolition of Section 101

    Is this a reference to a comment by the certifiably i n s a n e, wealthy and self-interested self-promoter known as David “I Helped Create the Problem” Kappos?

    If so, that’s pretty funny stuff.

    reaching a critical level”

    Seems like the exact same level of whining that we heard even before the Supremes decided Prometheus, which is to say a truly hysterical and eardrum busting level of whining.

    It’s what the patent maximalists do. It’s all they know how to do, really. If Facebook and Google’s patent portfolio goes up in smoke (and let’s face it: both portfolios are probabaly 90% irredeemable junk) then some big patent firms are going to get hit pretty hard. And that just can’t happen! After all, there are still payments to be made on those vacation homes and fancy car collections. Nobody wants to see that kind of pain inflicted on the Most Important People Ever.

    1. MM, I agree with your post. To me, Kappos has gone beyond merely untrustworthy. He is now certifiable.

      Take him away. Let him cool off or give him meds. Only a person with a god complex can be so arogant.

    2. There’s no one person responsible for the blight of the mostly older low-quality patents. There was a wave of innovation involving rapid change that the PTO, patent bar, and the judiciary was unequipped for. I went to a rock solid top 10 computer science program but in 2000 I had to meticulously document my coursework to qualify for PTO admittance. I’ve known several attorneys and technical specialists that could not register as agents because they could not document their CS coursework, despite stellar technical qualifications.

      It’s taken time, but computer-science people have entered the system. Examination and representation has vastly improved. When I started in 2000, there were very few true software/CS people in the patent bar. Around that time, rarely did I have a software-literate examiner examine a software-related patent. Originally filed claims were god awful, and many issued claims as well; they were often obtuse and meaningless. Most of those involved were EE people, or even aeros and MEs.

      That has changed. Now, I work all the time with qualified colleagues and examiners. The software examiner corps is reasonably competent and usually professional. People on both sides have a much better appreciation for baseline state of the art, what a quality patent claim should look like, etc. Art searches are now pretty decent. The output quality is vastly better today.

      The 101 “clean up” solution has been efficient for killing older junk patents (just because MM uses the word all the time doesn’t meant there isn’t a bit of truth to it). But it’s causing collateral damage for what in my opinion are many legitimate software-related inventions.

      1. HOPB,

        The “problem” is that the short cut desired (the Ends) will ALWAYS have such collateral damage when the proper means are not taken.

        Pointing that Malcolm may have “some truth” is not helpful. Some Ends are really good – that is a given. But even really good Ends do not get a pass in statutory law geared to the onrushing unknown of innovation “just because.”

        You will ALWAYS be faced with tomorrow’s wave of unknown – and unknowable – innovation. The answer CANNOT be a rejection under 101 – and this is expressly why 101 is written in a wide open front gate manner.

  22. 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.

    The latter observation provides zero evidence for the “courseness” of the filter.

    Perhaps the author should take a look at the incredible junk that has been tanked before commenting on the “filter.” It doesnt take a fine filter to find that junk and eliminate. All it takes is a working brain that hasn’t been drenched in decades of “everything is patentable!” kool-aid.

    The history books will show that the patent system went off the rails when confronted by so-called “information processing technology” (formerly known as logic) and the inevitable throngs of lawyers trying to “get rich off the Internets”.

    The CAFC and the PTO fostered the creation of an enormous, record-breaking and unprecedented pile of junk. That junk needs to be expunged and it’s giong to be expunged in large chunks. Personally I subscribe to a “the sooner the better” approach. But the richest people — the type of people most invested in the status quo — will of course want the air to be left out of the balloon as slowly as possible so they can maximize their cash grabbing. That’s all that’s going on. As it presently stands, these fights over 101 have nothing to do with “promoting progress” because the claims that are being tanked have nothing to do with “progress” (at least not technological progress). And they never did.

    1. MM, After Octane Fitness and Alice, the courts are the best way to clear the air of business method patents, of game rule patents, of hair cutting patents, and the like. CBMs are not needed. While everyone has their right to due process, filing a lawsuit with respect to a patent that is clearly directed to a business method should result in quick dismissal and an award of attorneys fees.

      What we now need, I think, is a way to sue the likes of IBM who come calling demanding payment for their pile of business method patents. That should be considered an intentional tort.

      And Kappos should be installed in the Dunce Hall of Fame.

  23. 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.

    LOLOLOLOLOLOLOLOLOL!

    And this is why the defenders of the worst junk ever granted by any patent system in the history of the planet are going to continue to lose (even if they manage to eke some additional sympathy out of a Federal Circuit court that is always looking for an excuse to doll out some coddling to those shiny and eternally hip “do it on computer” “stakeholders”).

    While the process of animating the lip movements of entire feature length movie in a microsecond might be a “complex” and “specific” task, the actual claims are a wee broader than that (LOL!). Maybe the author should read them again (or for the first time) and think for a moment about the absurdly simple and ridiculously obvious — not to mention abstract — logical information processing steps that are covered by those claims.

    In that regard, I should note that the CAFC correctly published today a Rule 36 opinion affirming the ineligibility of Kroy LLC’s junky “automated award fulfillment” methods. As in so many other cases, the defendant tried desperately to kick up dust about how “highly sophisticated” their process was and how “complex” the role of computers was. Setting aside the fact that everybody has known since computers were invented that the computers simplify repetitive information processing tasks (like keeping track of customers, the stuff they buy, and the credit they receive), Judge Bryson recognized quickly (as would any reasonable person breathing oxygen) that none of that alleged “complexity” was invented by the patentee, much less claimed.

    And regardless of what happens to Planet Blue at the CAFC, the Supreme Court is going to cut right through the dust as well.

  24. ” Of the more than 250 federal court decisions invoking Section 101 since Alice, 70% of those cases have found the patent invalid. ”

    That’s good. We’re going through a purging period as one would hope when the law has now been applied where before it was set aside in favor of “policy” or just outright not applied (see state street).

  25. “recent calls for the abolition of Section 101 entirely and dissatisfaction with application of the Mayo/Alice test is reaching a critical level”

    If we abolish 101 then nobody will be permitted to obtain a patent for their invention.

  26. Every moment is a “pivotal” moment for those seeking to rescue ineligible subject matter from invalidity.

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