Judge Hughes and the New § 101 Dichotomy

By Jason Rantanen

Enfish v. Microsoft (Fed. Cir. 2016) Download Enfish
Moore, Taranto, Hughes (author)

In re TLI Communications Patent Litigation (Fed. Cir. 2016) Download TLI
Panel: Dyk, Schall, Hughes (author)

This month’s decision in Enfish was an overnight sensation—almost literally, as mere days later the PTO issued the new examiner guidance to implement the decision that Dennis wrote about last week.  That guidance emphasizes the Federal Circuit’s recognition of Mayo Step-1 as a meaningful inquiry and focuses on particular aspects of Enfish that relate to that inquiry: comparisons to prior abstract idea determinations; a caution against operating at too high a level of abstraction of the claims, and the rejection of the tissue-paper argument that use of a computer automatically dooms the claim (it doesn’t).

Although receiving only light treatment in the guidance, in my view the critical analytical move in Enfish is more than just the court’s recognition of Mayo Step 1 as meaningful—it is the analytical framework that the Federal Circuit constructs that ultimately determines the outcome.  At its heart, Enfish contains a seemingly simple categorization scheme, one that offers the promise of a quick and easy way out of the § 101 maelstrom.  Yet, looking deeper, my sense is that it would be a mistake to rely too heavily on the Enfish framework as a universal solution, even in the computer technology space.

On its own terms, the Enfish framework sets up a choice between “whether the focus of the claims is on the specific asserted improvement in computer capabilitiesor, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.”  Enfish Slip Op. at 11.  In other words, is the claimed invention something that makes a computer work better?  Or are computers merely being used to do another task?  If the former, the subject matter is patentable; if the latter, the claim must be subjected to Mayo Step-2.  This distinction sets up the ultimate conclusion in Enfish that the claims are not directed to an abstract idea and serves as the analytical difference between Enfish and In re TLI Patent Litigation, a subsequent opinion concluding that the challenged claims are not directed to patentable subject matter.

In Enfish, Judge Hughes introduced the “improvement in computer capabilities”/”invoked merely as a tool” dichotomy after rejecting the idea that “all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.”  Id. In broad terms, the inquiry involves considering “whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea,” but the framework is made more concrete in the next sentence.  That sentence contains the language quoted above, a binary categorization whose importance grows as it is repeated throughout the remainder of the discussion of patentable subject matter:

  • “In this case [] the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.”  Id. at 12.
  • “we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice.  Rather, they are directed to a specific improvement to the way computers operate.”  Id.
  • “the claims here are directed to an improvement in the functioning of a computer.  In contrast, the claims at issue in Alice and Versata can readily be understood as imply adding conventional computer components to well-known business practices.”  Id. at 16.
  • “And unlike the claims here that are directed to a specific improvement to computer functionality, the patent ineligible claims at issue in other cases recited use of an abstract mathematical formula on any general purpose computer.”  Id. at 17.
  • “In other words, we are not faced with a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation.  Rather, the claims are directed to a specific implementation of a solution to a problem in the software arts.  Id. at 18.

Central to the Enfish framework is a recognition and definition of what is not patentable subject matter.  The opinion does not try to fight the idea that there is some subject matter that is not patentable.  Instead, it acknowledges that there are limits on patentable subject matter and works with those limits.  Judge Hughes considers the precedents in this area and identifies them as fundamentally involving the use of a computer as a general-purpose tool.  By defining what is not patentable subject matter in this way, Judge Hughes is freed to identify some “other” that is outside that impermissible category: developments that improve on the operation of the computer itself. Here, although the claimed invention could conceivably be articulated as an abstract idea, placing it within the framework leads to only one outcome: it is an improvement in computer capability, and thus patentable subject matter.

But viewing Enfish as the end-all of abstract ideas analysis, while appealing, would a mistake.  Judge Hughes’ next patentable subject matter opinion, issued just a few days latter, suggests that there is more to the analysis than just mechanically applying the Enfish framework.  At first, In re TLI Patent Litigation starts out with the Enfish framework: that “a relevant inquiry at step one is ‘to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea.'” TLI Slip Op. at 8, quoting Enfish.  In Enfish, he observed,:

“We contrasted claims ‘directed to an improvement in the functioning of a computer’ with claims ‘simply adding conventional computer components to well-known business practices,’ or claims reciting ‘use of an abstract mathematical formula on any general purpose computer,” or “a purely conventional computer implementation of a mathematical formula,’ or ‘generalized steps to be performed on a computer using conventional computer activity.'”

Id., quoting Enfish. Unlike in Enfish, however, “the claims here are not directed to a specific improvement to computer functionality.  Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.”  Id. 

In re TLI raises two additional points to consider, however.  First, in addition to defining what is not patentable subject matter, Judge Hughes articulates some characteristics of subject matter that is patentable: “a solution to a ‘technological problem’ as was the case in Diamond v. Diehr” or an “attempt to solve a challenge particular to the Internet.”  Id. at 10.  Left unclear is the meaning of this discussion: does one only get to the solution to a technological problem inquiry if the claims are not directed to a specific improvement to computer functionality?  Or is the analysis more flexible than Enfish implies?

More significant are concerns about the bright-line nature of the Enfish approach.  While bright-line rules can be helpful, Bilski v. Kappos demonstrates the risk associated with their use in the patentable subject matter area.  Judge Hughes recognizes this concern in TLI, noting “the Supreme Court’s rejection of ‘categorical rules’ to decide subject matter eligibility.'”   Id.  The Federal Circuit will need to be careful to avoid becoming overly reliant on the Enfish framework, especially in areas where it does not fit well.  With the benefit of the last few years of experience, hopefully the Federal Circuit will be able to avoid this pitfall.  Even as this issue works its way out, however, I suspect to see the Enfish framework drawn upon heavily at the PTO and in district courts in the near future.

359 thoughts on “Judge Hughes and the New § 101 Dichotomy

  1. 19

    An excellent addition by Paul Cole is below at 17.3 – this should not be overlooked!

    1. 19.1

      I don’t think I agree with a lot of it. Ginned cotton might not be patentable (because cotton without seeds was old) but I think it is not naturally occurring and is therefore an eligible manufacture. If not ginned cotton, how about brushed denim or spun wool? What about brushed aluminum?

      Are distilled spirits the same as the stuff on the other side of the coil? If you think so, you will not be bar tending at any event I attend…

      1. 19.1.1

        I do not agree with all of Paul’s views either / but the post here was just a public service because I think that he takes an inte11ectually honest and rather thoughtful approach to something that SOOO many are only too eager to reach for the desired ends with NO critical thinking of the means to those ends.

        For that alone Paul deserves some kudos.

      2. 19.1.2

        @ Les

        The cases here depend on “manufacture” and since they are also based on tariff cases are somewhat pragmatic.

        The reason why ginned cotton is not eligible is not because ginned cotton is naturally occurring but that it is insufficiently different from the natural material to qualify, having the same essential utility.

        I am a frequent AIPLA attender, and will much regret not sharing an new and useful alcoholic beverage with you.

        1. 19.1.2.1

          Paul –

          I think someone attempting to weave a pair of Levi’s from un-ginned cotton would disagree with you about the sufficiency of the difference.

          As for the rest….. as long as you ain’t the one pouring…

          Alas, I am not a frequent AIPLA attender…. and now that I have let my membership lapse in view of their AIA support…. will attend even less (not that that is possible).

  2. 18

    An interesting – even civil to a surprising degree – discussion has broken out below on the non-patent topic of the presidential race.

    I invite readers to join in below (or here, if that be more convenient, seeing as the thread reply limit has been reached on several nuanced threads) .

    1. 18.1

      6: I have to say that anon does impress me somewhat for sticking to his guns

      LOL – Does 6 actually believe that “anon” was ever a supporter a Bernie Sanders??? That is truly hilarious.

      while so many liberal sheep do like MM and vote against the person that MM and other bernie bros must surely hugely favor.

      I’m not voting “against” anybody. The subject is the general election in November. The candidates for the two major parties have been chosen. Trump is the Republican candidate. Clinton is the Democratic candidate.

      Voting for Clinton isn’t a vote “against” Sanders. Good grief. It’s a vote for Clinton and, if it’s “against” anything, it’s a vote against an absurd celebrity t0 0l who makes the Schwarzengr0per look like an honest genius by comparison.

      6: I don’t know if what you’re proposing to fix in merica is on the top of my list of things to fix. First maybe we de-power the liberal elite machine.

      LOL. The what? Conservatrds never cease to amuse.

      1. 18.1.1

        6: forcing trans people in your women’s room

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        Tell us what happened, 6. Sounds s00per dooper traumatic.

        LOLOLOLOLOLOLOLOLOLOLOL

        1. 18.1.1.1

          Some places in the country don’t want trans people using the opposite restroom, ur fed gov. is fixing to force them to have to allow that. I personally don’t mind either way, but I don’t see anything in the constitution assuring trans people the ability to use whichever restroom, and I don’t see anything like that in either of the lawls the feds are citing. So, what I see is federal overreach by the pressy.

      2. 18.1.2

        LOL – Does 6 actually believe that “anon” was ever a supporter a Bernie Sanders??? That is truly hilarious.

        ?

        Not sure what your problem is here Malcolm. I have been more than clear that was, is, and shall be my choice in the upcoming election.

        Oh wait, I don’t fit into your nice little meme, so what I say (repeatedly to your repeated questions) simply “must not be true.”

        Your “fantasy world” is not of this world.

        And you labeling 6 a “conservatrd” just because he calls out “the liberal elite machine” is such a liberal elite machine move.

        1. 18.1.2.1

          I don’t fit into your nice little meme,

          LOL

          The fact that you and NWPA allege to be Sanders supporters actually is perfectly consistent with “my meme”.

          But don’t worry! You both are very serious people. We all believe you!

          LOL

          1. 18.1.2.1.1

            actually is perfectly consistent with “my meme”.

            Just not the meme you has in mind – but that’s A Whole nother matter.

        2. 18.1.2.2

          he calls out “the liberal elite machine”

          Excuse me … the what?

          LOLOLOLOLOLOLOLOLOL

      3. 18.1.3

        “Does 6 actually believe that “anon” was ever a supporter a Bernie Sanders??? That is truly hilarious”

        Well, he says he was. He seems to be a bonafide berniebro to me.

        “I’m not voting “against” anybody”

        Yes, my sentence there was incorrectly/confusingly formatted. It was supposed to be saying that you and your fellow liberal block voter sheep are voting for the candidate that you don’t favor because they’re the favorite of the elites calling the shots in your party.

        “LOL. The what? Conservatrds never cease to amuse.”

        The “liberal elite machine”. It’s basically the “party bosses”, they’re high ranking people in the democratic party structure, as in the structure of the party, not the actual candidates usually (though there is some overlap with candidates, and elected people like DWS), and they include the delegates/superdelegates and all the rest of the people calling the shots in the party itself. I didn’t know what it was until just recently myself. It was quite eye opening to see what was going on against Bernie (and Trump on the other side). Someone should make an infographic of the liberal and conservative elite machines and how they operate so people can understand easier. The reason I care all that much about the liberal elite machine compared to the conservative one is that the conservative one appears to be much less effective, or at least was this time around, as they didn’t stop trump.

      4. 18.1.4

        No serious person could think that people on the left are more authoritarian (i.e. sheep) than people on the right. True paladins of the right understand which side is moored to reality and which side is not.

        “Rove said that guys like me were “in what we call the reality-based community,” which he defined as people who “believe that solutions emerge from your judicious study of discernible reality.” … “That’s not the way the world really works anymore,” he continued. “We’re an empire now, and when we act, we create our own reality. And while you’re studying that reality—judiciously, as you will—we’ll act again, creating other new realities, which you can study too, and that’s how things will sort out. We’re history’s actors…and you, all of you, will be left to just study what we do”

        link to en.wikipedia.org

        Take it from the guy who was the most powerful man in the world for eight years, and pretty powerful for four more after that.

        1. 18.1.4.1

          “No serious person could think that people on the left are more authoritarian (i.e. sheep) than people on the right”

          They do today. Observe anon et al. and the crowd of “culture scolds” and “grievance/guilt mongers”. You’re right that way back in the past it was not so, it’s a relatively recent phenomena that the left far and away surpassed the right in certain aspects related to this. After the right lost the culture war the left has run rampant.

          Interesting quote from Rove, but I’m not sure I quite fully understand it. He seems to have defined a nice term, which is cool, but then he seems to be saying that since we’re an empire we just go around creating what we see fit as a reality where ever we go thus forever leaving behind the group of people he just defined.

          1. 18.1.4.1.1

            Rove was expressing pure nihilism: reality is what we say it is because we hold power and our followers believe what we tell them.

            I would not dare to suggest that authoritarianism does not happen in leftward leaning people; only that the frequency and intensity is less.

            The best observer of the Trump situation was Eric Hoffer. ‘The True Believer” is absolutely essential reading on the subject.

            1. 18.1.4.1.1.1

              “I would not dare to suggest that authoritarianism does not happen in leftward leaning people; only that the frequency and intensity is less.”

              That’s how it used to be maybe. Not anymore. Once they get power, they’ve tried of late to be authoritarian. Observe what is going on with obama right at this very minute with the bathroom kerfuffle.

              “Juan Linz’s influential 1964 description of authoritarianism[1] characterized authoritarian political systems by four qualities:

              limited political pluralism; that is, such regimes place constraints on political institutions and groups like legislatures, political parties and interest groups;
              a basis for legitimacy based on emotion, especially the identification of the regime as a necessary evil to combat “easily recognizable societal problems” such as underdevelopment or insurgency;
              minimal social mobilization most often caused by constraints on the public such as suppression of political opponents and anti-regime activity;
              informally defined executive power with often vague and shifting powers.[2]”

              More and more we see the left’s only (or major) reason to exist being “emotion” issues. Don’t we feel super bad for the uninsured, don’t we feel super bad for single moms, don’t we feel super bad insert x, y z here. And more and more we see informal definitions on the executive’s power being what they hold to. Observe obama’s last several controversial executive orders, and the decisions of his depts that affect the whole country. More and more we see them grasping at legal straws completely divorced from the original laws/constitutional provisions that are at issue to implement their agenda on the whole nation (gay marriage, abortion) through the not-so democratic branch of the judiciary, often over the actual protest of the republic itself. More and more the leftist scolds overuse and devalue “racism” “misogyny” “bigot” “homophobe” “hate speech”. You need look no further than our own anon. He’s likely never even met an actual racist, bigot etc. in his whole life. And they’re all like that, because in the areas they’re from those things are endangered species, if not extinct. So, they keep broadening the definitions of their speech silencing “weapons” so that they can still have some power to stifle opinions they don’t like. Yesterday’s perfectly normal person is now tots the worst bigot of the evars, because barely any real bigots remain and they’re marginalized. Anon, himself, like his fellow rank and file PC policeman don’t probably actually understand any of this most likely, as most of them don’t. But it’s what is happening on a broader scale. Don’t like the proposition of building a wall to keep out illegal immigrants to enforce the law on the books? Simple, call the people proposing it tots racist. Because obviously anyone that is against illegal immigration is tots bigoted. Don’t like the proposition that accused repaist’s get due process in a court of law before we deem them guilty? Simple, call people that are against lowering the standard of evidence to the floor, or whatever other due process proposals the left made this week (kick them out of college based on that lower standard of evidence like in CA), tots misogynist.

              And I should be clear, I personally don’t care either way about most of those political issues above (although the getting rid of due process is very concerning in any criminal trial, or proceeding that might result in expulsion from college), it is the way that the left is bringing their agenda about that does concern me. Let them win some elections in the senate/house before they just go hog wild for goodness sakes. That’s what those votes are supposed to be for.

              And with that being said, it is totally true also that the right is fixing to fight back with their own authoritarian figure, one D Trump.

            2. 18.1.4.1.1.2

              “I would not dare to suggest that authoritarianism does not happen in leftward leaning people; only that the frequency and intensity is less.”

              That’s how it used to be maybe. Not anymore. Once they get power, they’ve tried of late to be authoritarian. Observe what is going on with obama right at this very minute with the bathroom kerf uffle.

              “Juan Linz’s influential 1964 description of authoritarianism[1] characterized authoritarian political systems by four qualities:

              limited political pluralism; that is, such regimes place constraints on political institutions and groups like legislatures, political parties and interest groups;
              a basis for legitimacy based on emotion, especially the identification of the regime as a necessary evil to combat “easily recognizable societal problems” such as underdevelopment or insurgency;
              minimal social mobilization most often caused by constraints on the public such as suppression of political opponents and anti-regime activity;
              informally defined executive power with often vague and shifting powers.[2]”

              More and more we see the left’s only (or major) reason to exist being “emotion” issues. Don’t we feel super bad for the uninsured, don’t we feel super bad for single moms, don’t we feel super bad insert x, y z here. And more and more we see informal definitions on the executive’s power being what they hold to. Observe obama’s last several controversial executive orders, and the decisions of his depts that affect the whole country. More and more we see them grasping at legal straws completely divorced from the original laws/constitutional provisions that are at issue to implement their agenda on the whole nation (gay marriage, abortion) through the not-so democratic branch of the judiciary, often over the actual protest of the republic itself. More and more the leftist scolds overuse and devalue “raci sm” “misogyny” “bi got” “hom ophobe” “ha te speech”. You need look no further than our own anon. He’s likely never even met an actual ra cist, b igot etc. in his whole life. And they’re all like that, because in the areas they’re from those things are endangered species, if not extinct. So, they keep broadening the definitions of their speech silencing “weapons” so that they can still have some power to stifle opinions they don’t like. Yesterday’s perfectly normal person is now tots the worst bi got of the evars, because barely any real bi gots remain and they’re marginalized. Anon, himself, like his fellow rank and file PC policeman don’t probably actually understand any of this most likely, as most of them don’t. But it’s what is happening on a broader scale. Don’t like the proposition of building a wall to keep out illegal immigrants to enforce the law on the books? Simple, call the people proposing it tots rac ist. Because obviously anyone that is against illegal immigration is tots big oted. Don’t like the proposition that accused repaist’s get due process in a court of law before we deem them guil ty? Simple, call people that are against lowering the standard of evidence to the floor, or whatever other due process proposals the left made this week (kick them out of college based on that lower standard of evidence like in CA), tots misogynist.

              And I should be clear, I personally don’t care either way about most of those political issues above (although the getting rid of due process is very concerning in any criminal trial, or proceeding that might result in expulsion from college), it is the way that the left is bringing their agenda about that does concern me. Let them win some elections in the senate/house before they just go hog wild for goodness sakes. That’s what those votes are supposed to be for.

              And with that being said, it is totally true also that the right is fixing to fight back with their own authoritarian figure, one D Trump.

              1. 18.1.4.1.1.2.1

                You are grossly – and sadly – quite mistaken in your portrayal of me, 6.

                Quite in fact, I am the one CALLING for people to engage – albeit, to engage in a meaningful and inte11ectually honest manner.

                I am the one wanting dialogue – as opposed to the drive-by monologues of others who refuse to even acknowledge the counter points raised to their “mantras”

                it is the way that the left is bringing their agenda about that does concern me. ” – you just repeated my biggest gripe about the biggest blights on these boards.

                1. “albeit, to engage in a meaningful and inte11ectually honest manner.”

                  Albeit in your pre-approved format. I.e. what the kids are calling a “safe space” nowadays. In other words, and I just realized this, you’ve created your own “patent talk safe space” and demand that other people respect your pre-approved format. Folks like yourself were the precursors to today’s problem children in university. What you just described is exactly what many leftists are doing today with regards to a diverse range of topics from political, to racial, to x y z. It’s a cancer bro.

                  But anon, your “patent talk safe space” isn’t even what I’m talking about in this thread. In this thread I referenced you because of your PC policing. That’s quite different.

                  ” you just repeated my biggest gripe about the biggest blights on these boards.”

                  Yes I know anon, and it is quite a turn for the worst in terms of how the government is going about its business in a diverse range of fields. It isn’t the best governance and frankly I lay the responsibility for that bad, or not so great, governance at the feet of the legislature.

                2. Lol – my “pre-approved format” is content neutral and rather invites a more meaningful dialogue.

                  That is a rather huge and important difference – and has ZERO to do with any type of politically correct “safe space.”

                  Your characterization remains absolutely flawed.

                  (and I haven’t even gotten to how I have informed the Professor that I am perfectly willing to “play by the rules that I see enforced” – which indicates that it is NOT my rules (or attempts at rules) that you want to ascribe to me)

                3. “Lol – my “pre-approved format” is content neutral and rather invites a more meaningful dialogue.”

                  That’s what all people in their safe space think. Of course, when someone says something they don’t like, they go all crazy like.

                4. Not at all 6 – see you twisting things again to play your own version of “control.”

                  This is not a matter of “saying things not liked” – it is a matter of WHY certain things are not liked – see your OWN post that I identified as mirroring my disposition right above at 18.4.1.1.2.1.

                  You are trapped – again.

          2. 18.1.4.1.2

            6, there is a spectrum from freedom of speech to thought control ala Orwell’s 1984. On the one hand we have North Korea. On the other the relative freedom authors had during the enlightenment.

            Taking things back in time, up until Tiberius, the Roman Republic/Empire had real freedom of speech. There was a flowering of literature, history and political speech. Then along came the secret police of Tiberius where “enemies” were sought out and terminated. People had to be very careful about what they said. Sic transit Gloria Mundi.

            “After asserting that Romans considered free speech as part of the liberties provided by the Republican regime, it is affirmed that it was not regarded as a human right but as a political entitlement. As nowadays, freedom of speech was valued not only for its importance to the speaker, but also for its relevance to the political system. The paper states that during the Republic, this right was intensively exercised trough both institutional and not institutional settings. Among the former were the contiones, the Senate, the courts and, surprisingly, the army. The latter were mainly the Forum, private associations and some kind of arts. The advent of the Empire deeply affected freedom of speech. Although it did not disappeared altogether, it ceased to be considered as a right (it was only tolerated) and became troublesome to the new political regime. Regarding its legal status, freedom of speech was never recognized as a right by statute. In contrast, legal restrictions evolved from a soft start under the XII Tables, to increasing severity at the end of the Republic, to straight harshness during the Empire.”

            link to oalib.com

            It is sad that freedom of speech and thought has gone out of fashion for some Americans.

            But, what people value so much about this blog is its absolute freedom speech. And for that, we owe Dennis many thanks.

            1. 18.1.4.1.2.1

              The place with the LEAST amount of freedom of expression are those places captured by the left-leaning “politically correct.” The “ultra-liberal” (6’s liberal elite machine folks) are some of the least open-minded people that I have ever met.

              1. 18.1.4.1.2.1.1

                “The place with the LEAST amount of freedom of expression are those places captured by the left-leaning “politically correct.” The “ultra-liberal” (6’s liberal elite machine folks) are some of the least open-minded people that I have ever met.”

                ^This coming out of the mouth of our local PC constable. He’s correct of course, but he apparently hasn’t yet done the math as to why these people are the way they are. Hint anon: it’s because of PC policeman like yourself. You laid the ground work for them. All they’re doing is taking it to the next level. If they’re going to be beat, people like yourself have to stop walking the PC po po beat on the regular.

                1. LOL – again with the MIS-characterization of me being “PC.”

                  There is a difference in being “PC” and in being inte11ectually honest and fully ENGAGING the counter points raised in a dialogue, and what Ned and Malcolm so routinely do in their drive-by monologues.

                  This has ZERO to do with what I lambaste others about 6. You need to pay better attention to what I actually write.

                2. “again with the MIS-characterization of me being “PC.””

                  Anon there’s only one person on this website that routinely calls people racist, misogynist, bigoted etc. all the PC buzzwords. That’s you bro. MM and NWPA jump in from time to time, usually for a laugh, but mainly its just you. You didn’t thunk those buzzwords up yourself, and you didn’t thunk up using them as “weapons” in conversation, you learned them and that behavior from the PC crowd, probably in the 90’s. And now, that same political horsehockey is growing out of control in Merica, because youngens are taking it even further.

                  “There is a difference in being “PC” and in being inte11ectually honest and fully ENGAGING the counter points raised in a dialogue”

                  Yes, there is. I’m not discussing your “patent talk safe space” pre-conditions for a conversation on PO right now. I’m talking about your penchant for using pc policeman buzzwords. They’re two separate things, as you note.

                  “This has ZERO to do with what I lambaste others about 6”

                  That is correct, your being a PC policeman doesn’t have much to do with people violating your “patent talk safe space” and you “lambasting” them for doing so.

                3. Except not 6.

                  I don’t call anyone “racist,” and I have called you misogynist because you ARE misogynist.

                  Don’t play the “whatever” card when all I am doing is being accurate with you.

                  There is no attempt at ANY “PC” control with my accurate comments.

                  Once again, your characterization remains absolutely flawed.

                  Quite in fact you are one of the ones that engage in PC “control” with all of your accusations for me of the meds/illness types.

                  You forgot about that.

                4. “I don’t call anyone “racist,” and I have called you misogynist because you ARE misogynist.”

                  ^That’s the PC po po for you.

                  “There is no attempt at ANY “PC” control with my accurate comments.”

                  That’s what all PC po po say anon.

                  Ask yourself this: IF you’re not attempting “control”, or more precisely looking to discredit the speaker or silence them, then why bring that subject up at all? Giggles? Misogynist or not, either one has no bearing on my views on substantive patent lawl. The answer is because you are using it as a “tool” or “weapon” to discredit the speaker, just like all the rest of the PC po po generally do.

                  It isn’t a “characterization” bro, it’s an observation. There’s a reason why nobody else joins in with you labeling me or MM, or whomever as a racist/misogynist/bigot. Because they’re not on the PC police beat.

                  “Quite in fact you are one of the ones that engage in PC “control” with all of your accusations for me of the meds/illness types.

                  You forgot about that.”

                  Someone being medically ill is not a PC buzzword that PC police go about policing bro. The PC buzzword most closely linked with medical illness is “ableist”, meaning the person is against people who are disabled. I’m actually kind of surprised you haven’t called me an ableist yet, though I suppose I took pains to indicate that I wasn’t biased against people for having such disabilities. Indeed, even if it was an if I was attempting to be a PC police regarding your medical illness, then you’d be getting sympathy points for my saying you are mentally disabled, not being rejected for having a mental illness. That’s what PC policing is ultimately about. The oppression olympics. It’s amazing how ignorant people are still about what PCness actually is.

                  And anon, don’t feel bad bro, I know you’re near surely from the west coast if not CA itself. That’s the fountainhead of this nonsense, it’s the PC culture you were raised in that instilled this nonsense in you.

                5. There is NOTHING PC po po about being accurate in a description of you.

                  You are misapplying the “po po” tag – no doubt in your own attempt to be PC controlling.

                6. You’re behind the times geezer. Go watch some youtubes and alternative media away from the mainstream media on TV and newspapers, I’m using the term exactly correctly. Exactly in the context in which it is designed to be used.

                7. Geezer“…?

                  Now you are desparately trying to Tr011 me with rather odd ad hominem that has nothing to do with the conversation.

                  Sorry – not biting.

                  You are NOT using the term “exactly correctly” – not even remotely correctly.

                  The context here is plain: you yourself are attempting to control the posts through a “shaming” mechanism of “PC-scolding” being applied to someone you do not like (and that someone merely accurately reflecting your very own words and choices of words).

                  You are confusing my accurate reflections with your desire to NOT be held accountable for what you choose to say or how you say it. You will not be able to talk your way out of something you talked your way into – and certainly not when you are trying to use the very device you talk about as a control mechanism. Reflect again on your own gripe as I noted at 18.4.1.1.2.1.

            2. 18.1.4.1.2.2

              “It is sad that freedom of speech and thought has gone out of fashion for some Americans.”

              It absolutely has. The left in particular doesn’t even want to hear views that differ from their own, and this is especially bad in the crop of students coming out these days. They’re in love with their “safe spaces”, aka “idea echo chambers”.

              1. 18.1.4.1.2.2.1

                Way too funny – the Prof’s own “politeness” boards have bottled up my reply.

                1. 6, you are talking about this site’s biggest blights Malcolm and Ned.

                  I’ve always said that alternative views and opinions are fully welcome – and that it is the dissembling and deceptions about HOW those views are put forth that are THE problem.

                2. Fr1ck1ng amazing – the three little arrow keys for “see above” are what tripped the filter.

                  That’s just messed up.

          3. 18.1.4.1.3

            They do today. Observe anon et al. and the crowd of “culture scolds” and “grievance/guilt mongers”

            Not sure what you are trying to say here 6 – as far as Left AND Right – BOTH are as bad as the other.

            Those denying this – and trying to say that one is worse than the other (while playing the exact same games) are the real sheep.

            1. 18.1.4.1.3.1

              “Not sure what you are trying to say here 6 – as far as Left AND Right – BOTH are as bad as the other.”

              Agreed entirely but the right’s culture scolds are practically powerless everywhere except maybe the deep south and the midwest. And that’s a big maybe.

                1. Read again the exchange – and my quote of yours at 18.1.4.1.3. – you seek to impugn me and then forget that you have done so (part of your very own PC control tactics…)

                2. Anon, saying that you’re a culture scold, aka telling people they’re misogynists (racists bigots etc), is not “impugning” you. It’s pointing out a fact about your behavior that you just now admitted to doing just above, you simply justify your scolding because according to you I tots am a misogynist. That’s what is known as being a culture scold. And it isn’t an “impugning”. It’s just pointing out behavior of yours that has no place in society any longer. Just stop with the culture scolding bro.

                3. Except not 6 – as I clearly pointed out that making an accurate observation is NOT the “scold” that you want to characterize.

                  It is just two different things, so there is NO “admission” from me.

                  You continue to be off – and badly so.

                4. You just contradicted yourself 6. Not all that surprising though, but your little ‘game’ here is exposed for the sham that it is.

                5. “as I clearly pointed out that making an accurate observation is NOT the “scold” that you want to characterize.”

                  It isn’t what “I” want to characterize, it’s what the new reality is going to be in the next few years. Enjoy your culture scolding days while they last. You know you lack this new thing called “evidence” of any actual misogynistic things I supposedly did, or my actually showing any “hate” to women, so you are being unreasonable in making your assertion. The only thing you think you have is evidence of cultural things that I do that you think are misogynistic (because you were told that they are by feminists and/or feminized society). And the only thing you can do is scold me for them, so that’s exactly what you do.

                  That is, by definition, a culture scold.

                  “It is just two different things, so there is NO “admission” from me.”

                  Nah bro, what you just admitted to is exactly the definition of a culture scold. You’ll be hearing about it more and more in the coming decade, unless we succeed in wiping that kind of behavior out sooner than expected.

                6. You are caught in attempting to do the very thing you are accusing me of, 6 – you are the one using a PC control mechanism here, accusing me of being a “culture scold.”

                  Your shallow control attempt is beyond transparent.

  3. 17

    Several contributers have commented in this thread, favourably, on my contributions, which emboldens me to contribute again.

    Bowler Hat wants to hear me on the UK “contribution” approach to eligibility. Plug Aerotel into Wikipedia to read about it. Sure, I think Hughes and, here, MM are following this line.

    But the EPO Appeal Boards have given it up as unworkable. For the EPO, you treat eligibility as an absolute requirement. Is the claimed subject matter within the ambit of the useful arts (to use US terminology) or not. If yes, and even if the subject matter is notoriously old or obvious, move on to novelty and obviousness. If not, reject as ineligible.

    This scheme is workable in practice only at the EPO, because only the EPO has a compatible way to handle the issues of novelty and inventive step. At the EPO, though, it works nicely, despite the Engish judge disparaging it as “intellectually dishonest”. Vice versa, at the EPO they think the UK approach is not reconcilable with the relevant provisions of the EPC.

    Paul Cole criticises Hughes because he moves directly to the judicial exceptions (abstract idea et al). well, he has to do that, doesn’t he, if he is following a UK-style “contribution approach”. For what actually is NOT within the ambit of the useful arts? Only the exceptions, right? Everything else is “in”, isn’t it?

    This thread shows that the disagreement how to “do” eligibility is equally lively, both sides of the Atlantic.

    1. 17.1

      Hearing an echo is NOT an invitation to continue the shilling that you do with the EPO uber alles – don’t care about the choices of the different sovereigns approach that has been pointed out to you.

      Far better to recognize the differences instead of glossing over them (you really want to pretend that Useful Arts is the same as Technical Arts when they just are not).

      You do not develop critical thinking by only paying attention to those that cheer you on.

      1. 17.1.1

        My point is that the debate is lively, on both sides of the Atlantic, about the pro’s and con’s of bringing novelty into the eligibility test. It matters not, to that debate, whether the subject matter at issue is “within the useful arts” or “has technical character”. If you don’t believe me, ask Night Writer or MM. They represent here the two opposed camps and they neither display any reticence about going after each other, hammer and tongs, just like the EPO and the UK patents judges do, albeit with more restraint in their choice of words than is displayed here .

        But the debate in Europe has been going on since 1978 and so, by now has seen all the arguments, for and against.

        1. 17.1.1.1

          You also fail to note that here in the States patent law is not a common law item – OUR sovereign explicitly set the power to write (including writing by evolution over time) strictly for our legislative branch.

          This is yet another point that you gloss over in your hurry to shill for all things EPO uber alles.

        2. 17.1.1.2

          MD: the debate in Europe has been going on since 1978 and so, by now has seen all the arguments, for and against.

          The “arguments” relate to exactly what sort of new steps may be considered “inventive” for the purposes of the “inventive step” test, and whether the distinctions that are made between the new steps are sensible and defensible.

          But no patent system — literally none that has ever existed or will ever exist — grants patents on claims merely because they recite (1) an old “process” or an old “manufacture” plus (2) something new, regardless of what that something is.

          1. 17.1.1.2.1

            Today’s generous gift of straw from Malcolm with his statement of:

            grants patents on claims merely because they recite (1) an old “process” or an old “manufacture” plus (2) something new, regardless of what that something is.

            Since NOBODY has ever said such a thing, I hope that you have a wonderful time beating up on that “argument” of “plus (2) something new, regardless of what that something is.”

            You may be confused with people wanting the different sections of law to be applied appropriately instead of mashing up the law (or “interpretating-new-law”) to arrive at a desired ends without going through the proper means – but how many times have you posted in that errant manner of merely wanting a certain ends, no matter what the means?

            Maybe if you paid a little bit more attention to actually constructing a proper legal means to obtain the ends that you so feverishly want, you would not be tempted to make such egregious mistakes.

            Just a thought for you to consider in the next Decade of your postings.

            1. 17.1.1.2.1.1

              Since NOBODY has ever said such a thing,

              LOLOLOLOLOLOL

              Maybe if you run really really fast you’ll catch up with the discussion by Monday, “anon.”

              In the meantime, do keep the laughs at your expense coming.

              1. 17.1.1.2.1.1.1

                Try making your point in short descriptive sentences Malcolm.

                NOBODY has ever said “regardless” – as if some other law (already written by Congress) is not in place, and ALL that has to be done is “plus something new regardless”.

                Running “really really fast” only applies if “catching up” is catching up in the right direction (think vector, not just magnitude). You are NOT something to be caught up to, since your vector is in the wrong direction.

                1. NOBODY has ever said “regardless”

                  That’s nice. What color pills are you dropping today?

                2. That’s funny, “anon”, because both you and your bff NWPA’s comments have always reeked of Generation Lead.

                3. Malcolm, the response fits you because your response is a non-sense non-response.

                  You turning around and accusing me of that which you do….

                  Gee, like that’s not one of your classic memes….

                  [super eye roll]

    2. 17.2

      MD: the EPO Appeal Boards have given it up [the “contribution” approach] as unworkable.

      Except they haven’t because they perform the identical analysis and call it “evaluating the inventive step.” It’s really just semantics, MD.

      1. 17.2.1

        Yes, of course, MM. The English courts are always stressing that the English and EPO approaches come to the same thing in the end.

        I don’t agree that it is no more than “semantics”. Rather, it is the imperative of finding a legal line of reasoning that is robust enough to endure, and to see off the critics crawling out of (or even into) the cracks and busting the edifice apart. The “patent maximalists” if you will. One thing’s for sure. You do need a robust no-nonsense (I mean legal nonsense) approach, to prevent the creep of patent rights into areas of subject matter where patent rights have no business bleeding into. Your remarks on the Planet Blue case suggest to me that you are apprehensive about such creep. Quite right to be apprehensive. Zealous lawyering on behalf of moneyed investors can creep very effectively, if given the slightest chance.

        1. 17.2.1.1

          Fixed for you, MaxDrei:

          Rather, it is the imperative of finding a legal line of reasoning that is robust enough to endure, and to see off the critics crawling out of (or even into) the cracks and busting the edifice apart. The “anti-patent maximalists” if you will.

    3. 17.3

      I think that there is a fundamental and insufficiently recognised failure of analysis concerning the judicial exceptions.

      If we were to draw a Venn diagram of Section 101, a first set would be provided by the specifically eligible categories under the section. As explained in Bilski in the judgment of Justice Stevens, the over-riding category is “manufacture”, from which “process”, “composition of matter” and “apparatus” evolved.

      A second set is provided by the so-called judicial exceptions – laws of nature, natural phenomena and abstract ideas. A dignified snail (it was a public holiday yesterday and I saw several of these creatures crossing my lawn) would have the mental capacity to appreciate that there is no intersection between these exceptions and the eligible categories. No way is the law of inverse squares a manufacture.

      Again, the dignified snail would appreciate that no useful purpose is served by invoking the less certain set of judicial exceptions for subject matter which does not fall within one of the eligible categories. For example, a natural product such as a block of marble, scoured wool or ginned cotton does not qualify as a “manufacture” as explained in the fundamentally important but insufficiently understood Hartranft case. By this reasoning gBRCA1 is not a composition of matter because it is not a composite article, and it does not qualify as a manufacture by mere isolation unaccompanied by sufficient new utility as correctly recognised by Justice Thomas in Myriad. It is wholly unnecessary to invoke the phenomenon of nature judicial exception to reach that conclusion, and doing so amounts to misclassification and confuses the law.

      In the present case it is in my view open to doubt whether the claimed subject matter is sufficiently transformative to amount to an eligible process. It is inherently much better and sounder to consider this issue first, before going on to the extra-statutory exceptions.

      Correspondingly if claimed subject matter falls as a matter of substance and not mere outward form within one of the eligible categories, it is then inappropriate to invoke an extra-statutory exception to deny patentability. This is an important Constitutional point as to separation of powers implicit in what is said in the CIPA brief in Sequenom. It is within the power to interpret the wording of the statute, but not to change or amend the statutory language absent some over-riding Constitutional reason.

      My criticism of Hughes and other Federal Circuit judges for not dealing with statutory eligibility first therefore stands.

      1. 17.3.1

        Mr. Cole,

        If only such care and reason were more evident in the Supreme Court cases themselves.

        Unfortunately, such wisdom is largely absent from the (very clear) thrust of the Supreme Court fingers into that wax nose of law known as 101.

        Congress was so perturbed by a Court run amuck that they acted once before to refocus away from a Court that viewed the only valid patent was one that had not yet appeared before it.

        We (evidently) need a stronger rebuke.

        And I know just the one that deals with the non-original jurisdiction item of patent law appeals: jurisdiction stripping.

        This would be entirely within the Constitutional powers of the Congress and as long as an (inferior) Article III court has review power***, the “sanctity” of Marbury would be maintained.

        *** I would suggest a new and different inferior court than the brow-beaten Court of Appeals for the Federal Circuit: too much fire hose damage there.

      2. 17.3.2

        “Correspondingly if claimed subject matter falls as a matter of substance and not mere outward form within one of the eligible categories, it is then inappropriate to invoke an extra-statutory exception to deny patentability.”

        Agreed. But Paul, this is just another way of saying something that is said much more simply as this:

        In cases of claims to mixed subject matter, some categorically eligible, some not, invention must be in the eligible.

        But then we get the odd case of claims to principles in the abstract. The subject matter of these claims may be eligible, but the invention itself is not set forth in the claims, just the result achieved so that the claim covers the invention described and every other invention that may achieve the same result.

        To me, this is not an issued involving the categories at all. It is a completely different issue entirely. Perhaps the best statute to address this issue is 112.

        1. 17.3.2.1

          Absolutely NOT Ned – your “version” here is merely trying to spin what Paul stated to be something else entirely (your old CR@P “Point of Novelty” canard).

          In truth, what Paul is saying should rankle your feathers as it sounds in the “old” “nominalist” approach of if the claim as as a whole is to a statutory category, you then move on without the judicial exceptions EVEN coming into play.

          Of course, I would add the other part of 101: utility within the Useful Arts (and note that this is necessarily broader than the technical arts).

    4. 17.4

      “This thread shows that the disagreement how to “do” eligibility is equally lively, both sides of the Atlantic”.

      Yes, because its broken by information inventions on both sides of the Atlantic.

      Until we have a test for which information is eligible (but abstract) and not eligible (equally abstract) and recognition that abstraction at eligibility differs from abstraction at patentability (claiming at the level of an idea) we are going nowhere but in circles, and East Texas will continue to be a killing field for hard-earned money.

  4. 16

    This is a nice-write up, Jason. There’s a few important points worth further elaboration.

    1) Enfish is basically a modestly better-written version of DDR, albeit a version that is based on claims that are arguably even junkier than those at issue in DDR (I know: hard to believe). Relational databases pre-dated Enfish’s claims by decades. The concept of a relational database was never patented, nor was a patent applied for. Perhaps some are wondering why that was the case? The answer, of course, is that when relational databases were conceived the idea of patenting the concept of — wait for it! — using rules (WOW!) and additional tables to determine how the content of a data cell should be interpreted was deemed absurd. Enfish’s alleged “innovation” here is a rule that says “look within the same table for further information.” Never mind that books (to take just one example) have referenced themselves internally since basically forever. This “self-referencing” concept is new and fundamental “computing techn0logy”! It’s so revolutionary, in fact, that there are precisely zero instances of the prior art teaching that you couldn’t do it. And the accused defendant doesn’t even infringe the claim. But, oh, such important “techn0logy”! It’s what made Enfish famous. Or, more accurately, it’s what made Enfish infamous.

    2) Possible “solutions” to the judge-created dilemna of “What type of otherwise ineligible logic should we let people own for 20 years?” were proposed here years ago. I know that I and others discussed such “solutions” at least five years ago as part of an effort to encourage the willfully ign0rant patent maximalists to prepare for the future and possibly participate in shaping it (as opposed to standing in front of the steamroller and screaming at the sky). One of those proposed “solutions” was certainly to limit eligibility to logical “innovations” that increase computing speed/efficiency across the board, as opposed to “innovations” that amount to nothing more than applying existing computing technology to specific data contexts (e.g., “news data”, “video data”, “music data”, “entertainment data”, “game data”, “weather data”, “book review data”, “checking account data”, “real estate availability data”, “price data”, “Billy’s credit card number data”, “zoo animal feedings schedule data” etc etc etc ad nauseum).

    Note that all these latter types of claims were always junk and but for (i) the CAFC’s “activist” coddling of patentees and (ii) the immense costs involved in taking a reasonsed defense up to the Supreme Court, nobody could ever enforce them against an attorney worth half his/her salt. If there was any question about the junkiness of those latter types of claims (and there shouldn’t have been, after Alice), these two cases — Enfish and TLI> — put those questions to rest.

    3) Note that in (2) I use “solution” in quotes. That’s because the real solution is to simply eliminate the problem and declare (without fanfare, because none is needed) that logic is ineligible, whether it’s carried out by a person or by a computer that is functionally distinguished from other computers on the basis of the logic that it carries out. That’s what’s ultimately going to happen. It might happen in a year or two. I might happen in five years. But it’s going to happen. The only reason to delay the implementation of that solution is to provide The Most Important People Ever more time to grab some cash and stuff it into their pockets. Patents on logic embodied in software — and by “patents” I mean utility patents of the sort that we use to promote progress in the so-called “useful arts” — do not promote progress in software writing and they never will. All they do is promote lawyering and litigation.

    4) The “additional clarity” brought by Enfish/TLI notwithstanding, the game-playing will undoubtedly continue. Moving forward (until the plug is pulled on the silliness), the debate will be over (i) what constitutes “an improvement in computer functionality” and (ii) what evidence will be required at the application and enforcement stage to establish the nexus between that alleged “improvement” and the asserted claims. In that regard, it’s worth noting that, in the wake of DDR, literally every patentee whose claims have been tanked in Rule 36 opinions argued that their claims fell within the scope of DDR. In nearly every case, those arguments were specious and probably worthy of sanctions (certainly true in the case of TLI!) but the system is set up to permit that kind of nonsense from patentees.

    And so the farce will continue.

    Oh, I almost forgot to comment on this:

    the rejection of the tissue-paper argument that use of a computer automatically dooms the claim (it doesn’t).

    Right. I’m not aware of anyone that has argued that “the use of a computer automatically dooms a claim.” I am aware, however, of Federal judges who argued that “the use of a computer automatically saves a claim.” After all, you can drop that computer on your foot and it would hurt! It’s tangible, so … totally eligible. Now that was a kind of “paper” argument, for sure, but “tissue paper” is far too kind.

    Even all the people out there (like me) who believe that software has no business being anywhere near the patent system don’t make the “tissue paper” argument referred to by Jason. That’s because certain kinds of claims directed to computer-related innovations are absolutely patent eligible. Which kinds are those? Claims that recite new computers or computer components in objective structural terms which distinguish them from prior art computers (or computer components) on those terms.

    And that’s where we’re going to end up when this farce is ended.

      1. 16.1.1

        Les: the pendulum is swinging back

        As I already wrote downthread, Les, it’s impossible to interpret these cases as representing a “swinging back” of any kind. What you’re seeing here are a few of the CAFC judges who are most in favor of patenting logic (as embodied in software) throwing a fairly huge chunk of computer-implemented junk overboard because they can no longer credibly defend it.

        In the immediate future, what remains to be seen going forward is how these judges, the PTO, and the other CAFC judges interpret these two cases. It’s possible that as early as the soon-to-be-published Planet Blue decision we’ll see another CAFC panel drive a truck through the reasoning in these cases and/or blatantly disregarding the facts to achieve the desired result. That’s certainly happened before.

        With respect to the PTO, we can expect what we always see: Enfish will be interpreted as broadly as possible to coddle the “stakeholders” and TLI will be limited to its facts. That will result in more computer-implemented junk being granted, which will perpetuate the dysfunctionality and systemic rot we’ve been observing for almost a quarter century.

        1. 16.1.1.1

          Yeah, like I said, the pendulum is swinging back…the CAFC sees the gravity of the situation (pun intended) and is applying to the force to stop the swing toward insanity and propel it back toward sanity.

    1. 16.2

      MM could invalidate Edison’s light bulb patent based on his understanding of 101.

      1. 16.2.1

        Gary: MM could invalidate Edison’s light bulb patent based on his understanding of 101.

        Deep stuff! Too bad you forgot to invoke Abe Lincoln or one of the Founders, followed by a quip about the “the Amish” or “the Iron Age.” You’d have achieved the trifecta of patent maximalist comedy.

        1. 16.2.1.1

          MM, since I found out that Abe was a vampire hunter link to imdb.com
          my respect for the gentleman has gone down just a bit.

          On Enfish, I think there is more than logic involved. The database itself occupies physical space and takes time and space to index. Providing more efficient structure, indexing or the like has a physical effect in the space required and the time to access.

          In contrast, if the novelty is in the logic, and computers are only generically referenced, then you and I are in agreement.

          1. 16.2.1.1.1

            The database itself occupies physical space and takes time and space to index.

            Right. Stored bits representing information take up space! Everybody knows that. And everybody knows that you can save space by creating rules for writing and interpreting (outputting) that information.

            I could re-type an argument in plain English or I could simply refer to a comment that I previously wrote (by reference to a number “assigned” to that comment, or some other informative method). Or — and you may want to sit down before contemplating this because it’s s00per techno — I could even type an argument in plain English and reference that argument in the same comment. And then I could even reference that reference! Oh Lordy, the mind reels.

            And without decades-long patents on micromental “improvements” in logic, nobody would ever bother trying to figure out how to use logic to reduce the space being taken up by information. Especially information that describes 3-D structures and how to print them! That’s, like, totally different from every other kind of information.

          2. 16.2.1.1.2

            Ned, you sound like a psychotic witch hunter. You sound like a really old person unable to grasp modern technology. A yapping disaster.

            1. 16.2.1.1.2.1

              The yapping Ned’s main argument is that somehow information processing patents have destroyed the patent system and those bio tech one. Let’s see: where is all the innovation and value to our economy: information processing and bio tech.

              You sound so much like R. Stern that same sickness in your mind where you hold to fantastical beliefs at a core to justify your nonsensical conclusions. Sick, sick, mind.

              1. 16.2.1.1.2.1.1

                Night, you do seem to have a confused memory. I have repeated said that I think the claims in the case regarding the detection of paternal dna in a mother’s plasma recited patentable subject matter.

                Second, I do believe that granting patents on business methods did harm the patent system because it caused so much outrage and backlash — and you do know what I am talking about. Your continued support of business method patents is borderline outrageous.

                1. Ned – it is you and your anti-business method chase of windmills that is beyond the pail, having you twist everything to conform to your “version” of how the law should be without regard to how the law IS.

          3. 16.2.1.1.3

            Really Ned, after all this time? A database takes up space? A database design is a physical artifact?

            Plus the patent itself is ludicrous; all databases were single tables prior to the development of relational multi-table databases, which were preferred when computing power was limited.

            Now that big computers can run big single tables easily, someone goes and gets a patent on what was the status quo- an “invention” so beyond obvious nobody ever thought to write it up.

            1. 16.2.1.1.3.1

              Martin, the improvement to the computer functionality is physical. What else can it be?

              1. 16.2.1.1.3.1.1

                Information is not physical Ned, and the computer is not improved. A better machining plan does not improve a machine tool.

                1. It’s a good thing then that software is not information….

                  Because machines do not gain new capabilities not already ‘in there’ through sheer information.

                  That would be like magic.

                  Or witchcraft.

                  ;-)

                2. Well, anon, I guess that means that nobody can store their software on a digital information storage device or network.

                  Oh, wait, they can!

                  But you’re right about computers not gaining new capabilities from software. They have the capability to process whatever information you feed into them. Including software.

                  Laughable. Utterly laughable.

                3. I guess that means” – you guess wrong, so your quip is misplaced.

                  Once again you seem to want to fall to the fallacy that “data is data” without regard to the legal implication of functional relatedness for the utility aspect.

                  This is nothing more than the classic 6 gaffe that a CD of Britney Spears music has the same legal effects as an Operating system.

                  Your “just processing” is just wrong. You laugh when you are the are playing the role of the court jester – that laughter you hear is not laughter WITH you.

                4. And once again, anon, you completely fail to grasp that with respect to the operation of a computer, software is data. It is stored on and retrieved from the same information storage devices, on the same data buses, using the same signaling protocols as any other data retrieved by the processor.

                  You can even swap the storage locations for your executable data (a.k.a. “software”) and your other data, and point the processor to the new location, and it will run just fine. No “magic” necessary.

                5. Dobu,

                  It is you that fail to grasp that your “software IS data” line of thinking fails on the legal level.

                  “Data” – just like printed matter – has different legal impact depending on other circumstances.: the Britney Spears cd just does not have the same legal impact as an operating system disc.

                  You keep on wanting to say that the computer does not care – AS IF that somehow makes a legal point and it just does not.

                  You seem to want to play a semantics game with the mere label of information storage device, but forget that it is just NOT mere information, but is actually something that is a machine component and changes the capability of the machine: with a functional relationship with the utility as merits patent protection.

                  It is simply NOT about whether the machine will play Britney or not. It IS about the change in utility that occurs when the functionally related item is made a part of the machine as a machine component.

                6. It IS about the change in utility that occurs when the functionally related item is made a part of the machine as a machine component.

                  The new comp00ter can manage Internet Bingo games and Internet blackjack games!

                  Totally different machines!

                  LOL

                7. Malcolm,

                  Did you actually want to talk about the patent doctrine of inherency?

                  What? Speak up son, I cannot hear you over your nonsense. Speak up – use those short declarative sentences that you are always on about to make an actual point.

          4. 16.2.1.1.4

            Ned said:

            “Providing more efficient structure, indexing or the like has a physical effect in the space required and the time to access.

            In contrast, if the novelty is in the logic,” …. and then he slipped back to the dark side.

            Ned – What if it is the novel logic that provides the physical effect in space/time in a generic computer?

            1. 16.2.1.1.4.1

              Les, the question is whether the computer functionality is improved. By posing the question the way you do, you want to patent math, business method and the like because they use logic.

              1. 16.2.1.1.4.1.1

                Ned – I posed the question based on your phrasing, nothing else.

                The functionality of the computer was improved in Benson…. and yet we are told that was an example of a judicial exception because since it was only useful in a computer, it preempted all uses.

                If the logic allows a computer to do a business method the computer could not do before, how is that not an improvement to the computer functionality?

                1. Les, had the claims in Benson been limited to hardware embodiments of the algorithms in the form of circuits or microcode, I would totally agree with you that the computers in Benson would have been improved.

                  But (save, perhaps, for claim 8,) they were not so claimed. The claims covered even calculation using pen and paper.

                  Now, I am sure, that a claim to math that could be implemented using pen and paper does not improve a computer although it could be used to improve a computer.

                  Claim 13 reads:

                  “A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of

                  “(1) testing each binary digit position `1,’ beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary `0′ or a binary `1′;

                  “(2) if a binary `0′ is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

                  “(3) if a binary `1′ is detected, adding a binary `1′ at the (i+1)th and (i+3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

                  “(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and

                  “(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed.

                2. “The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which
                  72
                  *72 means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself”

                  GOTTSCHALK, ACTING COMMISSIONER OF PATENTS v. BENSON ET AL.

                  MR. JUSTICE DOUGLAS delivered the opinion of the Court.

                  link to scholar.google.com

                3. Ned –

                  Don’t ya just hate it when judges read words into claims or statutes that just aren’t there? Or worse, read words that are there OUT of claims or statutes?

                  The court said the invention could only be used in a computer, not me. Therefore, the court said, the claims would wholly preempt the method.

                  Clearly, any improvement to the computer itself, can only be used in a computer. It follows, does it not, that any claim directed to improvement of the computer itself wholly preempts the claimed invention as it can only be used in a computer and is therefore not patent eligible as a judicial exception read into 101 that isn’t really there.

                4. Its a method claim Ned. Why would it have to be limited to hardware embodiment? And if it were, why wouldn’t a processor running implementing software not be an equivalent thereof? If only because a processor and the memory holding the software are hardware…

                5. Do you argue that Bensons BCD conversion method was/is eligible subject matter because it was an improvement to the computer itself?

                6. In the final analysis Ned, you do not defend much of anything.

                  That would require you to actually answer the counter points raised and not run away with the LAME “I don’t read line of B$.

                  The real reason behind your running away and “not reading” is that you have NO defense to the counter points raised.

                  When you “go silent” and to what points you “go silent” about SCREAMS volumes.

                  That this Merry Go Round happens for years on end is something the moderator of this blog could do something about (and I have provided several workable solutions to DO something about) – but he does nothing more than “wish” for a “self-policed” “nice” “ecosystem.”

                  There is an undeniable perception created by the Decade of Decadence and the Merry Go Round of allowing the very sAme ones to ploy the very sAme drive-by monologues.

                  Wouldn’t it be nice Ned if you actually took the counter points, recognizes those counter points, and integrated those counter points into the dialogues?

        2. 16.2.1.2

          Agreed. I’m very deep since I’m a super serious person. That’s what grifters do.

    2. 16.3

      Software is not logic – still waiting for you to grasp this plain fact of reality.

      1. 16.3.1

        software = source code and executable machine code

        what’s the current jurisprudence here? my understanding is that software per se is not patentable but the application of software is… someone correct me

        1. 16.3.1.1

          “software per se” is not and never has been patentable.

          METHODS, which may or may not involve or require the use of a computer, are and always have been patentable, as are MACHINES.

          1. 16.3.1.1.1

            As are manufactures Les.

            Let’s not have you play the Ned game of leaving out statutory categories…

            1. 16.3.1.1.1.1

              Well then, why not mention compositions of matter? Because they are unrelated to the discussion perhaps?

              1. 16.3.1.1.1.1.1

                Perhaps unrelated…?

                Software is a manufacture – not sure how MORE related one can get.

                1. media carrying software is a manufacture.

                  I’m not so sure software per se. is.

                  If it software is a manufacture then why do CRM claims exist?

                2. Software in the mind is not software.

                  CRM claims exist as software in what must pass in the political reality of a system ensnared with “patent profanity.”

                  Criminy – just look at In re Nuitjen.

                3. A signal is manufactured…. electrons are moved, waves are created….

                  Not so for “software” disembodied from a media… or at least I don’t know what one would point to as evidence of infringment other than media.

                4. The answer is artificially constrained by patent profanity.

                  Suffice it to say though, software IS a manufacture, created by the hand of man (whatever the form), and created to be a machine component.

                  Software is – in the critical patent sense – an equivalent (and let’s chase away the dissembling of “exactly the same as”) to the other wares of hardware and firmware – no need for anyone (let alone the sAme one) to attempt to prevaricate and take “wares” outside of the particular Art under discussion and to which PHOSITA would apply.

      2. 16.3.2

        Software is not logic

        Sure it isn’t! It’s just rules for processing data, which is totally different from logic!

        log·ic
        ˈläjik/
        noun

        1. reasoning conducted or assessed according to strict principles ; a particular system or codification of the principles of proof and inference

        2. a system or set of principles underlying the arrangements of elements in a computer or electronic device so as to perform a specified task.

        Totally not the same! And totally not equivalent!

        LOLOLOLOLOLOL

        Here’s a hint, “anon”: it’s much better to make a compelling policy argument for a judge-made exception than to attempt what you’re doing here, i.e., floating an argument that is based on a laughably false promise.

        I’ve been waiting for that compelling policy argument for a long time. And so have a lot of people who write software and who find themselves repulsed by patent kool-aid drinkers like you and your cohorts.

        1. 16.3.2.1

          I am not “floating” anything – just presenting a fact that in this reality, software is not logic.

          Feel free to at least grasp and integrate into your rants the basic facts of this reality.

        2. 16.3.2.2

          …and brushing aside the vap1d “cohorts” jibe, Malcolm’s predilection for making the mistake of anthropomorphication – as that term is used here on these boards – is again evident, as he attempts to confuse a definition “1.” which has to do with something entirely in the human mind (the reasoning in that definition is human reasoning) with a DIFFERENT (and that is both factually different and more importantly legally different) NON-HUMAN item.

          Arrangements and systems of arrangements of things are entirely patent eligible (see the Big Box of protons, neutrons, and electrons – and systems and arrangements of such).

          The “laughably false” thing here that you accuse others is that which Malcolm does – as if that is a surprise to anyone!

          D’OH! (said in the best Homer Simpson tones)

    3. 16.4

      Fine. If someone’s intuition is that a patented invention was obvious, then prove it by satisfying formal rules with objective facts, i.e., make a section 103 case. The problem has been that recent 101 law has allowed opinion to supplant objective proof. Enfish and other recent decisions, including trial decisions, are healthy not because they affect the scope of eligible subject matter (it’s not clear that they d0), but rather because they help keep the judicial process objective. The public needs for judges to have an efficient tool to kill bad patents, but use of that tool needs to be procedurally fair, i.e., objective. The Supreme Court warned about misuse of its 101 decisions, but naively underestimated the allure of an open-ended option for quickly disposing difficult legal issues.

      1. 16.4.1

        HoPB: The Supreme Court warned about misuse of its 101 decisions, but naively underestimated the allure of an open-ended option for quickly disposing difficult legal issues.

        Please share with everyone your favorite examples of computer-implemented junk that were unfairly tanked. You must have dozens or hundreds of such examples! Because … “so alluring”.

        The problem has been that recent 101 law has allowed opinion to supplant objective proof.

        Here on Earth, what has actually happened is that uncontestable admissions in the specification and irrefutable common sense knowledge about reasoning has been used — finally — to eliminate the worst junk that was ever granted by any patent system in the history of the world.

        But we knew that the most entitled people ever would cry about it. It’s all you guys know how to do.

        1. 16.4.1.1

          Nice condescension. Your practice shows.

          It wasn’t me who said “The Supreme Court has not established a definitive rule to determine what constitutes an “abstract idea” sufficient to satisfy the first step of the Mayo/Alice inquiry.”

          It wasn’t this entitled crying not-on-Earth purveyor-of-junk attorney who said: “describing the claims at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule. See Alice , 134 S. Ct. at 2354 (noting that “we tread carefully in construing this exclusionary principle [of laws of nature, natural phenomena, and abstract ideas] lest it swallow all of patent law”); cf. Diamond v. Diehr , 450 U.S. 175, 189 n.12 (1981) (cautioning that overgeneralizing claims , “if carried to its extreme, make[s] all inventions unpatentable because all inventions can be reduced to underlying principles of nature which , once known, make their implementation obvious ”).”

          1. 16.4.1.1.1

            It wasn’t this entitled crying not-on-Earth purveyor-of-junk attorney who said: “The Supreme Court has not established a definitive rule to determine what constitutes an “abstract idea” sufficient to satisfy the first step of the Mayo/Alice inquiry.”

            Right. It’s the CAFC which has, historically, done everything it could to shoehorn logic (as embodied by software) into the patent system.

            Note that after Enfish we still don’t have a “definitive rule” telling us what kind of innovation represent an “abstract” innovation and what doesn’t.

            The dictionary definition of “abstract” would appear to represent an awesome place to start, as would a term that means the opposite of abstraction (e.g., “tangible”). As a friendly reminder, I’ll note that this is in regard to the improvement protected by the claim, and not “the claim as a whole”. Where that sort of argument gets us, of course, is where the patent system was before the gates were opened to pretty much everything that recited “a computer” or “computer readable media”, i.e., to a system that protects structurally distinguished compositions and apparati, and methods which result in new non-obvious physical transformations of matter (as opposed to shuffling bits of information around). And that gives some entitled people a great big sad so instead we have to engage in this farcical dance.

            1. 16.4.1.1.1.1

              The dictionary definition of “abstract” would appear to represent an awesome place to start,

              Except for the fact that such was explicitly not done by the Court.

              (and you already knew that – but still want to spin what the Court did – and did NOT – do as something different than the reality before us.

              “Go figure Folks”

              1. 16.4.1.1.1.1.1

                “You keep using that word. I do not think it means what you think it means.”

                The court explicitly declined to define “abstract”.

                At no point did they explicitly reject the dictionary definition of “abstract”.

                The dictionary is still on the table, so to speak.

                1. Try again Dobu / if the Court wanted to use the dictionary, they would have used the dictionary.

                  They did not.

                  “Still on the table” is an entirely too nebulous phrase – the use of which (since the Court has not!deigned to define what they mean – CANNOT be ASSumed to BE what they mean until (yet another) case gets bumped up to them (and there is no guarantee that they will take that future case to clear up ANY vagueness that they have created with their own scrivining.

                2. Per anon: the Court failed to explicitly reserve its right to invoke the dictionary definition of “abstract”, and therefore has, in all perpetuity, waived any and all rights for all citizens within the Court’s jurisdiction to consult any related entries in said dictionary.

                  Implicitly.

                  Get help, anon. You’re off the deep end.

                3. WRONG on the “implicitly” – go back and read the words the Court used.

                  Your quip about “getting help” is simply off. I am not the one off the deep end.

                4. Anon, how about you re-read the words the court used, and show us where they explicitly mention a dictionary, and forbid its use for defining “abstract”.

                5. LOL – you are misapplying what I am saying. If the Court wanted the dictionary definition, they would have used it.

                  Instead, they DID say something else!

                  It really is that simple.

    4. 16.5

      For someone who bandies about the term “logic,” you show an amazing LACK of it by your continued attempts to have something that is optional be NOT optional with your tripe of “Which kinds are those? Claims that recite new computers or computer components in objective structural terms

      You need a different rant.

  5. 15

    OT a bit, but consider Debbie Wasserman Schultz. Sanders has said directly that she has a bias against his campaign with specifics of withholding access to data, organizing debates when they would not be watched (which is clearly true), and with party leaders in the state caucuses. Bernie has a very good case against her.

    So, this relates to patent law because I have been saying that Obama is a dirty snake that has been appointing ignorant hostile judges to the Fed. Cir. And, guess what? Obama appointed Debbie Wasserman Schultz and supports Clinton. Obama has a clear pattern of appointing people that will not follow the law or rules to further the end that Obama wants.

    Just think how incredible this is that the patent system that has given the world the greatest innovation engine by far the world has ever seen is being burnt down by judges with no patent law or science experience selected by Google. Or that the Director of the USPTO couldn’t even read a file wrapper if her life depended on it.

    1. 15.1

      Obama is a dirty snake

      Remember folks: NPWA is not only super smart about politics. He knows a lot about patents, too! He’s super serious and, like his bff “anon” and so many other of GQuinn’s mewling sycophants, we must pay attention to him. He’s totally not a hack concerned only about f@ttening his wallet and nothing else. Nope. He’s a real serious guy.

      So, NWPA, are you still going to vote for Bernie? LOL

      1. 15.1.2

        My post and “dirty snake” were based on substance. You response is just a string of insults where you seem to have the attitude that you won as if there is some substance to you insults. A tribute to K Street.

        1. 15.1.2.1

          My post and “dirty snake” were based on substance.

          LOL.

          Obama has a clear pattern of appointing people that … further the end that Obama wants.

          Shocking! And by the way: pretty much every left-leaning Dem despises DWS for all kinds of good reasons and it’s safe to say her days as DNC chair are numbered.

          So: are you voting for Clinton or Trump in November?

          1. 15.1.2.1.1

            Malcolm, you are celebrating prematurely – that duality is not yet a reality – let’s see what happens in California.

            (And even then, one has the power to make a statement with writing in Sanders – if it does come down to a choice of CR@P-Trump or CR@P-Hilary)

            1. 15.1.2.1.1.1

              you are celebrating prematurely

              I’m not celebrating anything. I wanted Sanders to be President. But that’s not going to happen.

              the power to make a statement with writing in Sanders

              That’s hilarious. I guess if you have to desperately struggle to find a way to express yourself, then the tiniest expression possible might seem like “power.” But for most of us … well, “hilarious” is about the best way to put it.

              a choice of CR@P-Trump or CR@P-Hilary

              Which one of those candidates are you going to vote for? We all know that you are super shy about expressing your views so if you feel embarassed, it’s okay. We understand.

              Here’s a prediction for you: historic massive landslide for Clinton.

              [shrugs]

              1. 15.1.2.1.1.1.1

                There is nothing “desparately” about NOT voting for either of two CR@P candidates.

                1. I very much agree with you on that one anon, but I’ll pick between the two. Neither of them are that bad imo. Just like the rest of modern presidents they’ll be surrounded by a massive government apparatus that limits their effect anyway.

                  I do encourage you though, if you’re going to protest vote against the party machine, go ahead and go all in and straight up vote trump.

              2. 15.1.2.1.1.1.2

                “Here’s a prediction for you: historic massive landslide for Clinton.”

                I’ll take that bet. What is the spread you’re offering?

                1. Oddly (or perhaps not), the “isidewith” website has the opposite numbers – but I am not sure that either set of numbers is accurate.

                  As I said, let’s let June 6 speak for itself.

                2. There is no doubt that Sanders is too far behind in the delegates to win unless something like Hillary is indicted before the CA primary. I don’t think she will be.

                3. Yes Les / the politics active here is the attempt to dissuade likely voters with a mantra of “why bother?”

                  As you see, there is no shortage of propaganda – in part because propaganda works.

                  Which is also why we are celebrating a Decade of Decadence this year.

              3. 15.1.2.1.1.1.3

                “I’m not celebrating anything. I wanted Sanders to be President. But that’s not going to happen. ”

                LOLOLOLOLOLOLOLOLOLOLOL

                Amirite???

              4. 15.1.2.1.1.1.4

                MM, in all seriousness, over the years you have seemed to me to be a person of high ethics and morality. I would think that you would have a hard time supporting a person like Mrs. Clinton who has repeatedly been in personal scandal after personal scandal. I do not want to go into a litany. But the fact that she would deliberately lied to the American people, and she has, and to wives and mothers of fallen soldiers, should be enough.

                I am not saying that either Sanders or Trump is better, but I would suggest that Sanders do seem to be a man of very high personal ethics and is a candidate deserving of support while he is still in the race.

                Now if it comes down to Mrs. Clinton vs. Trump, it might be that the ethical man stays home.

                1. high ethics and morality…?

                  More of that infamous “6-is-a-genius-because-his-viewpoint-aligns-with-mine” CR@P

                  No one is more vile – and has been more vile longer – than Malcolm.

                  A Decade of Decadence – and Ned somehow “enjoy’s the swagger.”

                  Prof – THAT is your problem and your pain – good luck with that.

                2. “No one is more vile – and has been more vile longer – than Malcolm.”

                  I can only hope that Crouch doesn’t nerf the comment section. Seeing word murdering like this is what keeps me coming back.

                3. Ned: I would think that you would have a hard time supporting a person like Mrs. Clinton

                  There aren’t many top-tier politicians (more accurately: none) whose policies and personal behavior perfectly align with mine. You kinda have to get over that lack of perfection if you want to participate in any democratic or collective effort.

                  The choice in November is between Clinton or Trump. If you want to exercise your right to vote, then you make that choice. It’s a pretty big decision and the result is going to make a huge difference in many people’s lives. The folks out there who gripe that “there’s no difference between the candidates” are cl u eless.

                  Sanders … is a candidate deserving of support while he is still in the race.

                  He’s not “in the race” and he hasn’t been for quite a while. If he has good policy proposals then he should continue to advocate for them, within or outside “the party system”. But he shouldn’t be undermining the chances of his party winning the Presidency, for obvious reasons.

                4. MM, I think many people are having a hard time with the candidates this year for a number of reasons completely unrelated to policy choices. Hillary does not appear to be ethical – she was even fired from the Watergate Committee hearings for unethical behavior. Trump appears to be a bully and a sociopath, caring less for the damage he would inflict on innocent folk for his utterly ins@ane ideas. Many might be motivated to vote “against” someone they detest by voting for somebody they detest less.

                  I don’t know how it actually will pan out, but I predict this year that protest votes to third party candidates will be large. I was only half mocking before that what we really need is be able to vote “none of the above” and have that vote count by requiring a president to win by more than 50% of the popular vote.

                5. Ned,

                  What is your plan when no offered candidate can obtain that 50% of the popular vote?

                6. There definitely is a difference, but it just isn’t a difference that most people care about. Immigration, and all the effects that it is having, and all the effects of it that we are ignorant about because the gov doesn’t keep track of them for us, is a low back burner issue for the ill informed. Most folks aren’t yet hip to the socially destructive SJW nonsense going on, which of course is based loosely on the PCness of yesteryear. Trump is by far the best candidate on that front. Hillary will see much of the old school government coalesce around her, she’ll continue much of what obama is and has been doing (obamacare, forcing trans people in your women’s room regardless of your state gov or the majority of people’s opinion, bombing brown people with drones etc.). If you like those things, she’s by far the best candidate.

                  But if you’re not really concerned with any of that then it’s a toss up between two bad candidates.

                  “But he shouldn’t be undermining the chances of his party winning the Presidency, for obvious reasons.”

                  I disagree, his primary platform is corruption in the government. He just got bounced by that. I say he takes down the fcks as much as he possibly can. Besides it isn’t even “his party”, he’s a democratic socialist, it’s a party with just him and like 100 other people. He just pretends to be a democrat to fit into our corrupt system.

                7. A critical point here 6 is to differentiate that level of “meh, care about” and drive people TO care about MORE than what passes for the “meh” attitude.

                  If one is willing to be SOOOO blasé so as to simply enjoy a CR@P sandwich, then that person deserves what they get and ANY candidate will suffice (so why bother voting at all…?)

                  Let’s elevate the game, shall we? Let’s not just “settle.”

                8. “(so why bother voting at all…?)”

                  Well I can’t speak for everyone, but currently there are several reasons why I would vote for either of Trump or Hillary, but they’re all “side issues”, or “far far far side issues”. The ones I just listed are only some of the larger differences between them, and even those aren’t the foremost things on most voter’s minds.

                  And also, I don’t think either of them are that bad, they’ll both make so so leaders, like I’d said before. Neither one is a glorious political leader, but none of those people decided to run.

                  “Let’s elevate the game, shall we? Let’s not just “settle.””

                  How do you elevate the game when all the good candidates just decided to stay home? Writing in Sanders doesn’t elevate the game.

                9. You keep on saying that writing in does not elevate the game and you keep on missing the fact that writing in DOES elevate the game.

                  A vote for wither is just not going to be looked at as a meaningful vote against the system. Sure, you may tell yourself that a vote for one CR@P sandwich is actually a vote against the other CR@P sandwich, <b.but you are still voting for a R@P sandwich, and the winner of those two just won’t care why you voted for them – there just won’t BE any statement that you are making.

            2. 15.1.2.1.1.2

              “let’s see what happens in California.”

              There’s nothing left to see from what I hear, DWS and the party machine threw the whole state to Hillary.

              1. 15.1.2.1.1.2.1

                June 6, iirc

                (and yes, it is that same B$ as it ever was that is preaching that the contest is over – it is not by the by)

          2. 15.1.2.1.2

            MM you are such a tw1t. As if you are more of insider than me or anyone with Democrat politics.

            1. 15.1.2.1.2.1

              There are no “democrat” politics. The party is the Democratic Party of the United States. But of course you know that, but prefer the slur, because you are that kind of person.

              1. 15.1.2.1.2.1.1

                There are politics in both (all) political parties.

                This is not a “slur,” and the fact that you think it is only highlights your naïveté.

                1. anon your reflexes fail you, as usual

                  Since you are unaware that ‘democrat’ is, in fact, a slur, you parse the sentence as if I meant that the Democratic party is not political, which can’t make any sense.

                  link to en.wikipedia.org

                2. Your reflexes fail as ALL politics is a slur.

                  You are both too sensitive (to a “democrat” offense) and too oblivious (or naive).

                  Republican is every bit a “slur,” hence neither is the “slur” that you imagine some particularized slight over.

          3. 15.1.2.1.3

            MM you act as if being an anti-patent judicial activists that regularly represents the law and the facts is some kind of badge of honor or part of some kind of movement. Well, MM Carter was pro patent and Clinton was too.

    2. 15.2

      That’s kind of a stretch to “relate” that to patent law, but yes, the ongoing kerfuffle regarding Schultz is just something else. Frankly I think you guys should protest vote for Trump, even if I was an avowed lifelong Democrat I would strongly consider it after these “party machine” antics.

      1. 15.2.2

        6: if I was an avowed lifelong Democrat I would strongly consider [voting for Trump] after these “party machine” antics.

        LOL

        Meet 6, everyone. He’s the kid from middle school who intentionally dropped the ball and lets the other team win because the coach didn’t pick his favorite animal to be the team mascot.

        1. 15.2.2.1

          “because the coach didn’t pick his favorite animal to be the team mascot.”

          More like because the coach effectively banned the retarded kid (Bernie “I’m a democratic socialist in ‘Merica lulz” Sanders whamp waaaa) in the class from having a chance to play any and rigged the whole game against the retarded kid personally so that despite being fit to play the game he necessarily loses at the end when the game is itself one that is supposed to be inclusive with participation determined by everyone on a given team, where at least near half of the other team wanted the retarded kid to play.

          Not to mention that they politically disenfranchised you yourself MM, and all the other bernie bros, and to an extent half the country. And by “they” I mean the fabled “liberal elites” who, until this month, I didn’t even comprehend the identity of, or just wtf they do.

          But gl with your lackluster Hillary, hope you’re ready for a Trumpin’. Pray for no huge scandals.

          1. 15.2.2.1.1

            to an extant half the country” – just imagine if that half utilized the option of the write-in…

            1. 15.2.2.1.1.1

              Yes anon, but the word for that to happen isn’t going to get out. You know this already. The amount of write ins will be tiny, and thus a very weak response. You know that’s what will happen, just like every election they have some of those.

              1. 15.2.2.1.1.1.1

                More of the “don’t bother” that only becomes self fulfilling when that line is swallowed.

                Making a difference starts one person at a time – and I choose to not vote for either TrumpCR@P or HilaryCR@P.

                Better is better – I only control the one vote, so any “weak” comment simply does not adhere.

                1. Yes, you only control one vote. But that vote counts double against the democratic party machine if you vote for their rival. Duh, this is why there are so few write ins. Anyone writing in “just fell off the cabbage cart” politically so to speak.

                2. Your logic is at fault as it must STILL choose a CR@P person just to spite the other CR@P person.

                  You are merely swallowing the line of the two party status quo (and you are a far cry from the “rebel in your mind” that you might think you are for voting Trump).

                3. 6, you make a very good point.

                  I don’t know if you watch shows like Survivor, but milk- toast, undeserving cast members have won simply because the votes they received were cast only to make sure that the other, reviled, cast member did not win.

                  But this campaign is slightly different with both parties prepared to nominate candidates disliked by a significant majority of the American people. Here a protest vote might be in order. But, as opposed to places like France where there is a runoff, protest votes really do not count for much in the US.

                  We need to change that.

                4. “You are merely swallowing the line of the two party status quo”

                  Unless I’m looking to make my own third party or support a third party then that’s my only choice in merica land bro. Plus I don’t mind D Trump, he’ll do a few things to make Merica Great, maybe build a Great Wall (with parts of it being electronic probably) so that we have China beat on that too. He’ll push back the PC crowd of whiners, as he already is. And he’ll make for some crazy antics for the government apparatus to have to clean up. I mean, he’s not the worst candidate ever. Plus, he’ll be one of the very very few candidates that isn’t a lawlyer. That’s a big plus.

                5. I’ve seen some survivor and you’re def right about that voting pattern. I don’t know if what you’re proposing to fix in merica is on the top of my list of things to fix. First maybe we de-power the liberal elite machine. And for that matter, the somewhat smaller one on the republican side.

                6. then that’s my only choice in merica land bro.

                  Clearly, that is simply not true.

                  Hey – if you “don’t mind D Trump” – then it is your every right to vote for him. I have no problem whatsoever with you exercising your right and chowing down on a Trump-CR@P sandwich.

                  Just don’t pretend that my only choices are a Trump-CR@P sandwich and a Hilary-CR@P sandwich.

                  And your comment to Ned about de-powering the machines is EXACTLY what a write-in would help start.

                7. “And your comment to Ned about de-powering the machines is EXACTLY what a write-in would help start.”

                  You do know that such has been going on forever and it never de-powers those machines right? It isn’t like you’re the first one to come up with the write in.

                  It just never does anything in merica bro.

                  Plus, and I just remembered this, Bernie apparently could run as a 3rd party if he wants to, because he’s already on the ballots of all states except texas if he doesn’t bow out. So if he doesn’t want your vote enough to stay in as a 3rd party I wouldn’t bother.

                8. You do know that political parties HAVE come to an end over time, right?

                  Just because other conditions were not present, does NOT mean that the write-in action may lack power to effect change. Certainly, it will not be on its own – but this does not mean that such an action should not be taken.

                9. “You do know that political parties HAVE come to an end over time, right?”

                  Certainly, but you need to review how that happened in history. Also, parties in the past didn’t have nearly as much money propping them up. And even so, I heard there was a chance that the democratic party might have split in two during this race, and been that way irreparably. That might happen if clinton gets indicted before she gets the nomination, and the liberal elites, that are definitely disenfranchising you and MM, would still not support Bernie and would stick Biden in and coronate him. Then the Bernie bros would get so p iss ed that they’d split forever from the party (is the theory anyway) thus leaving it crippled and subject to something new arising to “fight” republicans. Which, you should also note, are ridiculously fractured in the present.

                10. I find it interesting to see your views on the possible schisms – and the noted corruptions – and yet you view the power of the write-in as something to be dismissed out of hand.

                  Almost as if you enjoy chowing down on that CR@P sandwich.

                  That corrupt two party system certainly will not change if all the voters act like lemmings and jump to a candidate just because the party “says so.”

                11. The fact that both parties remain in control based less on “voice of the people” and more on “voice of the juristic people who can spend the most” is part and parcel of why BOTH republican and democrat parties are the political MESS that we have now – and the fact that if Hilary obtains the nomination, that we will have the all time worst two party offering that this country has ever seen is only a further indictment that the process has been captured by Big Money.

                  The citizens – the non-juristic ones – should unite [pun intended].

                12. “of the write-in as something to be dismissed out of hand.”

                  I dismiss it out of hand because I’m not a weak person. #masculinity

                  “Almost as if you enjoy chowing down on that CR@P sandwich.”

                  You keep saying that, but I don’t see it as that, because they’re both so so leaders bro, they both have their pluses and minuses in my book.

                13. “if Hilary obtains the nomination, that we will have the all time worst two party offering that this country has ever seen is only a further indictment that the process has been captured by Big Money.”

                  While I agree with your overall statement about banding together as people, I note that as a factual matter in the US there is insufficient political will among the populace to have that happen right now. And I must disagree with you that this latest nomination round indicts the process as being captured by big money. Except on Hillary’s side. Trump beat out 20 some competitors on a shoestring compared to other modern candidates. The big money failed to constrain him. And if that’s your major concern, he’s definitely your candidate, as he’s against the big money. If you want to defeat George Soros and the Koch’s both then you stand with the Trump brosef.

                  link to youtube.com

                14. 6 above states “I dismiss it out of hand because I’m not a weak person. #masculinity

                  And it is sad and bit comical (although not that unforeseen) that 6 descends to a “masculinity” stand on a political issue (where masculinity has NOTHING to do with being principled).

                  This fits with 6’s misogynistic tendencies (which tends to fall into Trump’s bluster).

                15. I choose to not vote for either TrumpCR@P or HilaryCR@P.

                  You’re so awesome and, like, totally independent! What a patriot.

                  So who are you voting for, “anon”? Or is that your special secret?

                  LOL

                16. Asked and answered – several times now.

                  I am voting for Sanders – with a write-in, if need be.

                  Do you know where Hillary’s dollar$ come from? From someone who is always on about “G-g-grifters,” you sure don’t seem to mind certain of the same, now do you?

                17. Anon and MM should be write-in buddies lol.

                  While I don’t understand what anon likes about sanders so much (other than thinking maybe just that he’s least worst of the 3 remaining people) I have to say that anon does impress me somewhat for sticking to his guns while so many liberal sheep do like MM and vote against the person that MM and other bernie bros must surely hugely favor.

                  Though I still think anon should seriously consider the trump protest vote, if only to completely cancel out MM defecting to hillary.

                18. The sad thing 6 is that Sanders represents anything but the “status quo” political machine – the very thing that Hilary most stands for.

                  Trump IS CR@P – but Hilary is even worse CR@P – especially the type of “G-g-grifting” that Malcolm claims that he is against.

                  Of course, Malcolm not being duplicitous and deceptive would be a surprise….

                19. “especially the type of “G-g-grifting” that Malcolm claims that he is against.”

                  That is somewhat true. She just goes to give “speeches” to bankers and rolls in the dollars. Crazy.

                20. It is more than just “somewhat true.”

                  It is absolutely true – and has been like forever.

                  You yourself note above the corruption – and yet you seem to want to downplay that very same corruption when I present it. I do not buy this waffling from you , 6.

  6. 14

    This decision may make life somewhat easier in terms of getting patents on software in the short-run, but I wonder if in the long run we would not be better off with some CAFCs opinions that took the Alice/Mayo decisions to their absurd conclusions to incorrectly invalidate some patents. Maybe that way we might get some clearer guidance as to what software, if any, the Supreme Court really thinks is patentable – such a case may even motivate the Supreme Court to make the Alice/Mayo test somewhat easier to overcome than originally intended.

    It seems to me that in the Alice decision, the criterion of whether or not software improved the performance of a machine was checked in the second step, not the first. Similarly,the suggestion that the only cases that do not pass the Alice/Mayo test are those that that have a close analogy to the cases that have already been found not patent eligible does not seem like something the Supreme Court would agree with (e.g., the Bilsky decision talks about Flook, Diehr, and Benson being guide posts as opposed to Flook and Benson being narrow examples that nonelegible subject matter needs to conform to), and Alice never quite articulates a technical feature test. So, although I think the Supreme Court should over turn the Alice/Mayo decisions, I am skeptical as to whether the Supreme Court would agree with the notion that in this case there is no abstract idea, and that the claims pass the first step of the Alice test as well as other statements in this decision.

    Although it may benefit me and my clients to place so much weight on making the first step of the Alice test harder to fail, it seems to me there is little practical difference between saying that a particular criterion allows the claim to pass the first or allows the claim to pass the second step of the test, if either way, it is still patent eligible because of the same criterion, especially with the little/minimal guidance as to how to conduct the first step or second step and how to treat the same criterion under the first step or the second step that is different.

    It seems to me that a better approach would have been as follows: the first step is merely the inquiry as to whether or not there is 101 issue that needs to be decided (but the first test does not somehow automatically create some sort of negative presumption that needs to be overcome). The second step is then, is the claim as a whole nonetheless drawn to what Congress intended as a machine or method under 35 USC 101, or is it truly drawn to an abstract idea and just has some extra window dressings that are intended to make the software look like a machine or method, even though it is not. Under such an interpretation, even though were all of the other components taken alone and even were the other components taken as an ordered combination still conventional and even if none of the other criteria expressly spelled out in Alice absent, the claim may in some circumstances still be patent eligible, as long as one can articulate why the claim as a whole is still a machine/method under 35 USC 101 (e.g., perhaps something in the manner in which the abstract idea portion of the claim interacts with the rest of the components). While this lacks any bright line distinction between what is and is not patent eligible (and even though this test has a touchy-feely aspect to it), that seems like the nature of the type of test that what the Supreme court wants. Although the language in Alice suggests that in the second test one needs to determine whether there is anything in the claims lifting/transforming the claim from being an abstract idea would seem to suggest that there is some sort of negative presumption that needs to be overcome once the second step of the test is reached, the above interpretation of the Alice/Mayo test is close enough to what the supreme court actually said, that they might even say that is exactly what we really had in mind.

    1. 14.1

      It is incredible that people want to try to make sense to the SCOTUS cases. There isn’t any other than procedural. They wanted a way for a judge to invalidate any claim at the pleadings stage. They fabricated nonsense to remove huge areas from eligibility because (as the Justices have admitted) they get their facts from the amicus briefs and according to the briefs the world is falling apart (despite the patent system creating the greatest software and biotech industries in the world by a factor of 10.) I think we are seeing the financial jihad all over again–a la, there is no need for regulation, those 50 years of stability and growth were all an illusion now is the time for greater things—BOOM!

    2. 14.2

      I seem to remember at least one Judge doing that….and going so far as to say something like: this ruling is ridiculous, but may hands are tied by Alice or Mayo…

    3. 14.3

      although I think the Supreme Court should over turn the Alice/Mayo decisions

      That’s never going to happen and the reasons why have been explained here much every day for the past five years.

      Seriously: if you are a patent lawyer and you still don’t “get” what Prometheus and Alice were about, then you don’t belong in the business and you never did.

      1. 14.3.1

        Please…. the pendulum is swinging back already…just look at the present case…if it weren’t you wouldn’t feel the need to say it can’t every time someone suggest that it is or should.

        1. 14.3.1.1

          the pendulum is swinging back already

          ROTFLMAO

          If nothing else (and at the end of the day, there truly will be nothing else left to Enfish), the only thing Enfish achieved was to prevent the “pendulum” from “swinging back.”

      2. 14.3.2

        Seriously: if you are a patent lawyer and you still don’t “get” what Prometheus and Alice were about, then you don’t belong in the business and you never did.

        I suppose you could always become a lobbyist. :)

    4. 14.4

      This decision may make life somewhat easier in terms of getting patents on software in the short-run

      Depends on the claims.

      For a lot of “software claims” — the ones that don’t improve computing per se, it’s going to be harder than ever to “get” them and even harder to enforce them.

      And that’s an awesome result that everybody should be thankful for.

    5. 14.5

      David, I think that if the patent community waits for the Supreme Court to modulate its position in Alice… it’s going to be waiting a long, long time.

      Alice was a unanimous decision, which reflects an exceptionally strong consensus about a serious problem that needed solving. The Court arrived at that conclusion after a decade of bombardment by overzealous patent reform advocates like Mark Lemley, talking about this gigantic problem with patent quality. And consider what directly prompted the Alice Supreme Court cert: the Alice Federal Circuit opinion, which has to rank very high in the records of “most fractured and acerbic opinions in the history of the federal court system.”

      How strong must the response be to reverse this trend, and convince the Court that the overreach of its solution has created a host of serious new problems?

      The situation is even more grim than that. Backchannel chatter indicates that the justices have basically no idea how Alice has been applied. Mass invalidations? Huh? PTAB as death squad? What? Bilski Blog? Never heard of it. They basically set events in motion with Alice, and then completely turned their attention to other matters.

      This mindset is apparent from the kinds of cases for which the Court has recently accepted cert. All of them are analogous to more bread-and-butter legal issues: Apple = damages calculations; Medtronic = burdens of proof and mens rea; Cuozzo = choice among competing standards of law. But Alice? What commonplace Supreme Court topic is analogous to the “utility” or “abstractness” of inventions? The Court has to wing it on these cases, and it won’t do so again absent an overwhelmingly compelling reason.

      1. 14.5.1

        It’s up to Congress (and not the Court) to set things right.

        Where is the 2016 version of the 1952 Federico/Rich…?

      2. 14.5.2

        PTAB as death squad? What?

        Oh, I’m sure the Supremes and their clerks have heard of Rader and his comment. And I’m sure they knew exactly what to do with it.

        Bilski Blog? Never heard of it.

        Likewise. I’m sure they’ve “heard of it” (or their clerks have). The question in their minds is: is the author a credible authority on eligibility? Is their any evidence of serious thinking about the issues or does he/she come off like a shill working on behalf of the worst players in the system?

        How strong must the response be to reverse this trend

        I’ve been trying to tell folks this for years: it’s not the volume of the howling, it’s the quality of the arguments.

        The arguments on behalf of patenting computer-implemented junk of the sort that is most frequently being asserted (e.g., the claims at issue in Alice) are some of the worst arguments being made by any attorneys in any legal field.

        Come up with some good arguments for chucking out centuries of reasonable patent jurisprudence because “better software depends on it.” Then you’ll have a chance.

        Heck, Lemley hasn’t even made the best arguments for getting rid of software patents!

        That’s why there’s much more to come. And the computer-implementers aren’t going to like it.

        [shrugs]

        1. 14.5.2.1

          Like a shill…

          One massive (and massively repeated) AcxuseOthersOfThatWhichMalcolmDoes meme.

  7. 12

    Key features in Enfish’s claims:
    “… means for configuring said memory according to a logical table, said logical table including:
    a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical row, each said logical row corresponding to a record of information;
    a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column…”

    Key features in TLI’s claims:
    “storing the digital images in the server… taking into consideration the classification information.”

    At least part of the distinction seems to be that Enfish is claiming something specific, while TLI is claiming “consideration”. What do you do with the classification information? Who knows? That makes it difficult, if not impossible, to construe the claim in any meaningful way, which may be why 101 (or 112) is a theoretically proper ground for rejection, rather than 102 or 103.

    If so, we should be able to predict the outcome of Planet Blue, looking at its claims:
    obtaining a first set of rules…
    …. evaluating said plurality of sub-sequences against said first set of rules;
    generating a final stream of output morph weight sets at a desired frame rate…

    Obtaining “rules”. “Evaluating” something against the rules. Generating a stream at a “desired” frame rate… I think we can see which way this is going.

    I think claims to automatically animating lip sync and facial expression could absolutely be patent eligible, but these claims, like TLI’s, leave the invention as an exercise for the reader.

    1. 12.1

      Also, in Enfish the means plus function element, construed with a fair amount of specificity.

    2. 12.2

      iDan, you are correct: following the logic of Enfish and TLI, there is little hope for Planet Blue’s claims.

      That said, the CAFC panel that heard Planet Blue’s case is — as we speak — doing somersaults trying to squeeze those claims into Enfish’s safe harbor. If they satisfy themselves in that regard, the CAFC will have created another one of its absurd messes. The clean-up will follow in short order and Enfish will end up in the trash or narrowed substantially.

      1. 12.2.1

        Thanks, Mal. Though I’d bet we’d disagree on my last point above – that theoretically, claims directed to automatically animating lip sync and facial expression could be patent eligible, if they were written correctly and had a well supported specification.

        1. 12.2.1.1

          iDan theoretically, claims directed to automatically animating lip sync and facial expression could be patent eligible, if they were written correctly and had a well supported specification

          How about doing it non-automatically, using specific “well-supported” rules that you apply in your head? Is that also “theoretically eligible”? If so, what sort of claim do you envision? If not, what’s the point of the distinction (other than “computer is faster” which is just another way of saying “use the tool intended for the job” which is what the CAFC just told us is not eligible).

          Let’s say I have a 0.1 second sequence to animate. During that sequence the character doesn’t make a sound. Should it matter for eligibility purposes if I proceed through a five hundred page book of rules to determine what to do with the characters mouth (takes two hours to reach conclusion: nothing) or whether I use a computer to “automate” the process of going through those rules (takes 1 microsecond)?

          Is the answer to the above hypo uniquely dependent on “animating mouths” because “animating mouths” is such an awesome endeavor, or does it apply to other information processing tasks like, say, deciding whether or not to get out of my car to pick up some trash or drive over it?

          1. 12.2.1.1.1

            How about doing it non-automatically, using specific “well-supported” rules that you apply in your head?

            “Apply rules”? Sounds like you’re not suggesting anything more definite than Planet Blue, Mal. Whether their claim says “automatic” or not is irrelevant, if the rest of the claim is at that “apply rules” level of abstraction.

            Let’s say I have a 0.1 second sequence to animate. During that sequence the character doesn’t make a sound. Should it matter for eligibility purposes if I proceed through a five hundred page book of rules to determine what to do with the characters mouth (takes two hours to reach conclusion: nothing) or whether I use a computer to “automate” the process of going through those rules (takes 1 microsecond)?

            Are those rules in the claim? Or is your claim simply saying “apply rules” (takes 1 microsecond to draft)?

            Is the answer to the above hypo uniquely dependent on “animating mouths” because “animating mouths” is such an awesome endeavor, or does it apply to other information processing tasks like, say, deciding whether or not to get out of my car to pick up some trash or drive over it?

            There’s plenty of precedent for claims directed to machine vision. Deciding whether to drive over trash or around it is an incredibly complex problem for self-driving cars. Is it a plastic bag or a rock? Jagged steel or aluminum foil? If you think this is trivial, then I’d love to see your solution (as would literally millions of other people working in the industry).

            1. 12.2.1.1.1.1

              There is an XCKD (?) cartoon on identifying birds that Malcolm is (or should be, since I have shared it enough with him) aware of with that very same principle.

              1. 12.2.1.1.1.1.1

                You’ve mentioned the bird comic before. What do you think that comic illustrates?

                1. Is that a serious question, Alex?

                  Try reading the post to which I say exhibits the very same principle.

  8. 11

    Jason Wrote:

    ” Judge Hughes considers the precedents in this area and identifies them as fundamentally involving the use of a computer as a general-purpose tool. By defining what is not patentable subject matter in this way, Judge Hughes is freed to identify some “other” that is outside that impermissible category: developments that improve on the operation of the computer itself.”

    I cannot find any definition by Hughes of “what” is “not” patentable in the sense and with the force implied by the article. There is much discussion in the decision of “what” may be determined as abstract and “what” should be subject to the second step of the Alice test.

    Can someone point me to where Hughes defines “what is not patentable” as opposed to merely defining “what should be determined abstract and hence should be subjected to the second step in order to determine IF it is patentable”?

  9. 10

    10 thousand foot summary:

    Alice Step 1 is the application of a Gist step, a blurry high level “I’m not sure but it smells bad” analysis. Inherent in a 2 step test which takes a tentative uncertain blurry view in a first step and then proceeds to identify what the case actually is in a second step, is the recognition that that which is subjected to the second part of the test should be “borderline”. By clarifying what does not need to be subject to step 2, Enfish seems to simply identify subject matter which even through a blurry lens of step one, is identifiable as patentable subject matter and simply not close enough to the “borderline” to require further inquiry.

    It would seem all Enfish does is carve out a way of early identification and an “escape” for some types of patentable subject matter at step 1, and the 2 step Alice test remains wholly unchanged for all other subject matter not able to escape “early”.

    Reasonable?

    1. 10.1

      I think that is basically right Anon2. It is an early carve out of technological like in Europe. If you aren’t technological, then you fall in the grave yard of Alice. I think it is pretty clear that this is what Hughes was up to. I have spoken with several people that speak with the Fed. Cir. judges frequently and it was clear that they wanted a technological test.

      1. 10.1.1

        And in our post-Constitution world the judges just write new laws as desired.

    2. 10.2

      And Anon2 that was my take on the first day: carve out with a European type tech test upfront.

        1. 10.2.1.2

          Ned, are you not a declared child molester?

          I know Ned you have a strong desire to smear me, because I call you out on your unethical positions. But try to debate me on the substance.

          1. 10.2.1.2.1

            Night, well it is you that has declared yourself to be an enemy of the United States. When are you moving and where are you moving?

            1. 10.2.1.2.1.1

              Not having ultimate feality to a branch of the government that oversteps its authority is hardly the thing to declare to be an “enemy of the United States.”

              Quite the opposite Ned / tell me again what your actual attorney oath states.

              Does it state that you should place the Supreme Court above the Constitution? Or instead, do you have a duty to speak out when the Court does wrong by the Constitution?

              1. 10.2.1.2.1.1.1

                Boys, these are petty squabbles. We patent practitioners were lucky enough to have a Constitutional mandate to promote the progress of the useful arts by securing to inventors their discoveries. The rest is code law, except when equity must step in.

                Securing a patent is a test of formalistic procedures, so extensive and expensive as to foreclose the patent system to the “inventor/discoverer.”

                The flawed system we have now does not work and is preventing people on the cutting edge from even communicating with one another. The individual inventor is road kill.

                1. I must say that to an extent I agree with you Richard, but frankly there are more than half a million patents issuing just about each year. So, somebody is getting themselves some patents even though the system itself is a big ball of meh.

                2. The reality is that all this “reform” has done nothing but make it easier for the big corporations and some NPEs to operate and harder for individual inventors to operate.

                3. “And, who is that somebody?”

                  I presume all the people listed on those patents. Or their corp master.

                4. Just think Richard soon everything that can be will be a trade secret and you won’t be able to move jobs. That is what is coming at the big corporations.

                5. We will see, I do have to say that the new trade secrit lawl came practically out of nowhere and was passed lickety split. It’s suspicious.

                6. Fortunately, in California, we have voided non-compete clauses in employment contracts. Doesn’t stop companies like Apple and Google from colluding on agreements not to hire the employees of the other.

                7. Richard,

                  Nor will it stop them from applying the new (separate and in addition to State law options) of the Federal causes of action.

                8. Richard, I think companies can agree not to target (raid) their competitors. What they cannot do is to agree not to hire the employees of their competitors who knock on their door unasked, or who responded to generic position postings.

                9. Richard, about engineers not looking at patents lest they make themselves and their companies willful infringers;

                  1. Agreed, this is a problem. A partial solution is the cross licenses. Another would be to heavily relax liability for experimenting so that engineers can build and test what is in a patent without infringing regardless of their purpose.

                  2. Another problem is that patent specs have become non informative. The Federal Circuit is largely to blame here.

                  The quid for a patent is a useful disclosure that informs those in the relevant art and that can be read and indeed experimented upon. Our system is not doing that.

            2. 10.2.1.2.1.2

              Ned, I love my country. You are so lame Ned. You can’t fight the substance of why I say your positions are unethical so you engage in a smear campaign. No wonder you have always supported MM. Two peas in a pod.

              1. 10.2.1.2.1.2.1

                And I hope everyone notices that Ned is the one that is escalating this. He cannot defend himself with substance (a la MM), so mud will have to do.

                1. Night, you constantly state that anyone that does not want to patent information processing is anti-patent. I am responding in kind when you say you want to eliminate the Supreme Court from considering patent appeals. That position is fundamentally un-American.

                2. What utter dross, Ned.

                  Think: jurisdiction stripping (patent appeals are not a matter of original jurisdiction for the Supreme Court).

                  You are the one being “un-American” by accusing someone else of being un-American for a perfectly legitimate political solution to the MESS that the Supreme Court has created in statutory patent law.

                3. In a court of law, you could not support your libelous statement with me saying that I thought subject matter jurisdiction of patents should be removed from the SCOTUS. This is in the Constitution as an option for setting up the courts.

  10. 9

    Prof. Rantanen might want to read:

    Application of Chatfield, 545 F.2d 152, 191 USPQ 730 (CCPA, 1976)

    There is nothing new in Enfish. It is a repeat of Chatfield.

    The Markey J., opinion was correct at the time, and it is still correct.

  11. 8

    The present review, and the decision itself, raise a number of issues.

    I am old-fashioned enough to think that the ratio decidendi of a case is found by ascertaining the underlying facts in a case and identifying the rule or rules of law that were applied to them to reach a decision. There is a very good article on how to do this by Arthur L Goodhart, The Yale Law Journal, Vol. 40, No. 2 (Dec 1930) pp. 161-183. It is not found by picking up isolated dicta and applying them in situations divorced from their original context. Unfortunately modern authors tend to the sound-bite approach, which accounts for the spread of much inherently unsound legal doctrine.

    Symptomatic of this trend is the omission here of claim 1 of the patent in issue, which is self-evidently pertinent to the decision reached, and lack of identification of any new finding or result on which invention might be based.

    If you look at the panel opinion you will find that it gives no consideration to the statutory categories of Section 101 and their judicial interpretation by the US courts including the Supreme Court, but instead goes straight to the judicial exceptions. The most elementary legal analysis would suggest that it is necessary to go to the statute first, and that if the claimed subject matter does not fall into one of the statutory categories, then the issue of judicial exclusion need not be reached. The correct reading of the Myriad case, for example, suggests that gBRCA1 did not fall into the “composition of matter” category since it is neither a mixture of materials nor a composite molecule made by the hand of man, nor a “manufacture” since insufficient new and credible utility was shown. That is the true underlying basis of the repeated very clear and limited holding by Justice Thomas that “mere” isolation does not suffice.

    It could usefully have been debated here whether the claimed method is sufficiently transformative to fall within the “process” category of Section 101.

    I am inclined to think that the claimed method does not fall within Section 101 if so interpreted. But if on the facts it does qualify as a “method”, then judicial exclusion should be applied with extreme caution. That approach is suggested in a recent amicus brief filed by the Chartered Institute of Patent Attorneys in support of the Sequenom petition.

    To repeat the late Giles S. Rich: “Why not the statute?”

    1. 8.1

      Rich used that aphorism to push his agenda, which was this: what is good for patent attorneys is good for patent attorneys.

      1. 8.1.1

        …as opposed to Ned Heller pushing his own “throw-back” hard goods agenda…?

        The lady doth protest too much, methinks.

      2. 8.1.2

        And Ned’s motto: what is good for my client list is good for America. Ethics don’t matter. Patent law doesn’t matter. I love to pander. I am a pandering man…

        1. 8.1.2.1

          Night, anyone and everyone who advocates Rich’s agenda actively endorses fraud.

          1. 8.1.2.1.2

            What fraud Ned? Sheesh. Your entire issue seems to be that you don’t want information processing machines eligible for patentability and don’t want some biotech eligible for patentability.

            You are R. Stern are —frankly–nut cases. Maybe there is a good argument for what you say, but it should be through Congress and not these ridiculous arguments that R. Stern did in Benson. They are just ridiculous and have no place in modern thinking.

            And all this melodrama that you and R. Stern try to create is all in you. The rest of us are just saying what science says and scratching our heads at the enormous effort you and others are putting into your judicial activism efforts. Switch to Congress.

            1. 8.1.2.1.2.1

              I’ve been to R. Stern lectures. You know what people do afterwards? They say this is anti-science and the most bizarro nonsense they ever heard. They wonder if he is mentally ill or if has any integrity to present this nonsense. Groups of people sit around and talk about this. What has happened is that Google and K Street picked the only champion they had and ran with it.

      1. 8.2.1

        The “pandering” per se is not the bad part – but rather, the dissembling and refusing to engage the counter points offered, and then to blast the sAme contested tripe over and over and over in an Internet style shout down monologuing “style” that is the blight.

        Have an idea? A different view? Great. Go ahead and express them.

        But be prepared to engage the counter points presented (and do so in an inte11ectually honest manner).

        Avoid those counterpoints and simply repeat the mantra ad nauseum and ad infinitum….? THAT needs to be put under control.

        I even recently offered a solution (easily done by a college student over the weekend for a mere pizza) of shunting the (obvious propaganda) off of the main threads so that an actual on-point dialogue may take place.

        (by the way, this is exactly the “gist” of the message I personally gave Prof. Crouch some four years ago during a previous “let’s make our ecosystem better” cycle)

        Instead, we suffer the drive-by anti-patent monologues – and for certain sAme ones, this has been going on for a full decade !

  12. 7

    Jason wrote:

    ” By defining what is not patentable subject matter in this way, Judge Hughes is freed to identify some “other” that is outside that impermissible category: developments that improve on the operation of the computer itself.”

    If a claim is directed to developments that improve the operation of the computer itself, then those improvements are presumably only useful in a computer.

    Therefore, like the claims in Benson the methods involved have no substantial practical application except in connection with a digital computer, which means that if the reasoning here is affirmed, the patent would wholly pre-empt the process and in practical effect would be a patent on the algorithm itself.

    Oh, the horror, the horror.

    Accordingly, Enfish must be wrong because having no substantial practical application except in connection with a digital computer is what doomed the BCD algorithm in Benson.

    Guide me Landru…

    1. 7.1

      Les, why don’t you give up on “wholly preempt?” When something is non statutory, adding conventional elements that are statutory adds nothing.

      Moreover, adding enormous detail to the nonstatutory subject also adds nothing.

      1. 7.1.1

        Ned,

        You (badly) misunderstand the thrust of his sarcasm.

        You need to stop trying to see this as some sort of parsed “eligibility of a dissected section of a claim” – your meme just does not fit what he is making fun of.

      2. 7.1.2

        Ned, I’m not sure I agree with the generalization that if a claim includes “non-statutory” subject matter and then adds “conventional” elements, the claim is then patent ineligible. I think there is a strong vector pointing in that direction, but non-obvious combinations of “conventional” elements can be worthy of a patent.

        1. 7.1.2.1

          I invented that, the key is whether the nonstatutory subject matter is applied functionally so that it modifies the statutory. See, the printed matter doctrine for more on that.

          1. 7.1.2.1.1

            Modifes…?

            Ned, you are aware that MoT is a clue – and only a clue – right?

          2. 7.1.2.1.2

            The fact of the matter Ned is that the notion of “functionally related” means that it IS statutory – there is NO “modifies the statutory” in the properly understood printed matter doctrine.

            You continue to clench tight your eyes to the very real difference between Set C printed matter and Set B printed matter.

        2. 7.1.2.2

          I like that handle. When the idea is so old and can be found in the patent data base, and the claims insist on patenting the known idea, then the claims don’t qualify under 101. As a practitioner, I refused to waste my time on filing “business method” patents, period. I didn’t have the expertise to determine if that business method was novel.

          I will read Endfish, but I think that even I came up with that “idea” in 1984, can prove it too.

      3. 7.1.3

        When Benson is overturned, I will give up on it.

        As long as ridiculous pronouncements are law, I will apply them.

        Methods are eligible subject matter.

        Why don’t you give up skipping words you don’t like in the statutes?

        Moreover, the method of BCD conversion was an improvement to the computer itself…..

    2. 7.2

      I’d totally be down for that because then the applicant might actually CLAIM the algorithm at a level of abstraction that is slightly more specific than “I did something with this thingy on that doohicky”

      1. 7.2.1

        Level of abstraction – and enablement thereof – is a 112 issue.

        Not a 101 issue.

        We should be seeking clarity in law, not purposeful befuddlement.

        1. 7.2.1.1

          I agree with anon. All or at least most of the 101 judicial exception can be handled by application of 103 and 112 of the statute.

        2. 7.2.1.2

          “We should be seeking clarity in law, not purposeful befuddlement.”

          I totes agree, now if we could just get the attnys to move beyond prosecution by hiding the ball, we’d get somewhere.

          Though color me surprised anon, I wouldn’t have pegged you for one to admit any potential weaknesses in the dark arts of software patents, or was I confusing you with Heller?

          1. 7.2.1.2.1

            “by hiding the ball”, Davis, I do a lot of prosecution now. Used to do litigation. I am offended by your remarks. They evince a complete ignorance of the system. The biggest problem with prosecution — by far–is finding the right art.

            1. 7.2.1.2.1.1

              HAHAHAHAHAHAHAHAHAHA, oh MAN, you slay me.

              You’re offended that I may have revealed a state patent prosecution secret? What’s more offensive: 1) that I called you out, or 2) that other people are now going to make as much as you and do just as little?

              I could take attnys like you seriously if I didn’t see your initial claim and claim “amendments” on a day to day basis. Actually, in spite of that, I might be able to squeeze some residue of sympathy if the AIPLA didn’t submit to the request for quality comments a suggestion that literally read “Examiners don’t know when important limitations from the spec should be read into the claims” and that it’s a shame that in order to get allowances the applicant “has to amend the crucial structure into the claim limitations”.

              THAT mindset is the biggest problem, not any ruthless application of 102/103 that might make you actually earn your six figure salary.

    3. 7.3

      “Therefore, like the claims in Benson the methods involved have no substantial practical application except in connection with a digital computer, which means that if the reasoning here is affirmed, the patent would wholly pre-empt the process and in practical effect would be a patent on the algorithm itself.”

      You are correct Les, and that is why the decision must go unfortunately. And also because, as D noted far above that the invention “could conceivably” be stated as an abstract idea (here it literally is stated as being such by the court, and iirc the patent itself) it is necessarily suspect and definitely gets “caught” by “step 1” aka you have detected an abstract idea and you need to ensure that not all uses of it are being preempt.

      1. 7.3.1

        6, you are the ultimate “preempt” guy. So, would you allow the Benson claim if the method were perform not on a digital computer, but on a mechanical calculator or by using pen and paper?

        1. 7.3.1.1

          “So, would you allow the Benson claim if the method were perform not on a digital computer, but on a mechanical calculator or by using pen and paper?”

          I think you’d run into another problem in so far as the pen and paper “embodiment” that you could limit it down to because then it would not have utility. So that can’t be allowed. And frankly I don’t think you can use the Benson method on a “mechanical calculator” (in addition to a digital computer, which is where the by far most practical application is), because they stated pretty much that in the decision. But, presuming that you could use the Benson method on a mechanical calculator, I’m not 100% sure, but yes, it might pass muster if you limited your claim down to that tiny worthless sub-embodiment. But then the claim would be worthless, so that kind of moots the question. Also the claim to the pen and paper embodiment would also be worthless it seems to me so that one is also moot.

  13. 6

    Looking in from Europe (and seeing what I want to see) I think Judge Hughes is attracted to the European notion that for subject matter to be susceptible of patent protection it has to be recognisable/plausible/arguable as a technological solution to a problem in a field of technology. If you can get your claim through that eligibility filter, the usual patentability filters then follow.

    Follow the EPC eligibility lodestar and it will get you reliably through cases that at first sight seem to be a hard call.

    Enfish hacks it, but TLI doesn’t. Simple as that.

    But of course Hughes can’t admit to his use of an alien EPC eligibility filter, can he? So, without telling anybody, he uses that Euro-litmus paper to make his mind up, but then dresses up his decision in SCOTUS language.

    I wonder if it is only Hughes. Or has he talked it through with anybody else at the CAFC.

    1. 6.1

      Seeing what you want to see…

      May I remind you (yet again) that your version of “technological” is but subset (whether or not our own judges take the time to properly recognize this is a different matter) of the wider domain of Useful Arts.

      Of course, “only seeing what you want to see” does not fit with a mind willing to understand, and thus, my repeated reminders to you…

    2. 6.2

      Max – quit trying to force-feed Euro law/leanings into these discussions. It’s getting old. I think someone (maybe “anon”) mentioned you don’t respect our sovereign. You’re adding nothing of value here.

      1. 6.2.1

        Yes, indeed, I realise that my comments are not wanted, but what Jason reports is that:

        Judge Hughes articulates some characteristics of subject matter that is patentable: “a solution to a ‘technological problem’ as was the case in Diamond v. Diehr”

        1. 6.2.1.1

          So an academic here also is trying to peddle the “technological arts” CR@P….

          That is not a reason for you to have a mind shut to learning, now is it, MaxDrei?

        2. 6.2.1.2

          Max3, I think that your comments here are relevant and interesting. Please ignore Mr. Deller’s comment, and please keep your comments coming.

          1. 6.2.1.2.1

            Interesting – perhaps, if properly demarcated as belonging to a different legal sovereign and the appropriate limits as to OUR sovereign.

            Relevant? Not in the context of our sovereign (hence the need to demarcate the item as belonging to a different sovereign).

            Dear reader, let me remind you that you are reading about the lands of law, and you should be familiar (by now) that you need to understand the terrain within which you find yourself.

            Lose the proper context and you lose all meaning and relevance.

    3. 6.3

      Have been waiting for Mr. Europe to chime in with his “technical effect”, and now bitterly accepting that he was right. Seriously, though, I don’t think Hughes is purposefully avoiding the appearance of borrowing from Continental patent law, but instead the EU and US have independently meandered to something close to the right balance.

      1. 6.3.2

        Plus, HoPB, I do hope that you remember that it is not up to the judicial branch to write that type of changed statutory law…

      2. 6.3.3

        Not sure any “balance” is involved HoPB. Fact is that the Constitution allows the Congress to make patent law only to the extent that it grants exclusive rights within the ambit of the “useful arts” (and no further). Till now, SCOTUS has been dodging and weaving to avoid being pinned down on what today is NOT within the “useful arts” . Quite proper of the Justices to be reluctant to come up with a definition. after all, none of them is a writer of computer programs or has a PhD in pharmaco-genetics, and none of them possesses the power of foresight into how science and technology might develop, so they individually have no compass to help them see where to draw the eligibility line.

        But as you say, they and the CAFC are now feeling their way forward. My personal hunch is that the European case law since 1978 is helpful for them. I personally see EPC fingerprints all over recent American eligibility jurisprudence.

        I agree with Ned Heller, that the State Street decision 73uk-ed everything up mightily, and that Hotel Security will be referenced from now on with increasing frequency.

        1. 6.3.3.1

          HoPB, I should add that the “EU” law which you mention is the law laid down by the Technical Boards of Appeal of the EPO. The technical judges of the Boards of Appeal do have a science or engineering background that fits to the background of the cases they judge. Computer scientists judge software cases and biotech people do biotech cases. Their decisions are final. No court in the EU can reverse a TBA decision to revoke a patent for ineligibility.

          The Boards hand down more than a thousand decisions a year. They have been feeling their way forward, on eligibility, since 1978, free from the constraints of Binding Precedent. The corpus of case law is available for all (including people in the USA) in the White Book of the Established Caselaw of the Boards of Appeal of the EPO. It is ever more coherent and clear, with each new Edition of the book, so much so that European patent attorneys (and judges round Europe) now know what’s eligible and what not, with a high degree of certainty.

          1. 6.3.3.1.1

            What rubbish.

            The same old “stare decisis is bad, but lack of understanding of what state decisis means” from MaxDrei.

            The same mind not willing to understand his own inanity and instead constantly shilling for the EPO way.

          1. 6.3.3.2.1

            Also Maxdrie, if you limit by this, what about copyright of fictional novels? Are they “Science and useful Arts”?

            1. 6.3.3.2.1.1

              More interesting is whether there are arts that lie between the “useful” arts and the “fine” arts. The art of salesmanship for example. Or horse riding? For professional sports team trainers, the art of winning?

              1. 6.3.3.2.1.1.1

                See Demming and the general application of the scientific method to the “business arts.”

                This is “less interesting” than you want to kick up the dust pile about MaxDrei.

                1. Is everything patentable then, that results from use of “the scientific method”? How about the art of acting on stage?

                  link to en.wikipedia.org

                  Or is method acting an example of not only the fine arts and the useful arts but also any arts that happen to fall in between?

                2. You seek confusion instead of clarity.

                  Do you understand what is meant by the Fine Arts?

                  Do you realize that a method of fabricating a violin (think the loss of the Stradivarious technique) is not an item within the Useful Arts even as what is done with the instrument is within the Fine Arts?

                  This is really not as complicated as you want to pretend.

                  Stop kicking up dust.

                3. That came out garbled: the instrument and method of making: Useful Arts; the playing of that made item: Fine Arts.

        2. 6.3.3.3

          It is NOT a difficult line between Useful Arts and Fine Arts.

          There is no need to dissemble on this point.

    4. 6.4

      Max, I think you are basically right. This is an attempt at the European technological test.

      1. 6.4.1

        Night, I like your choice of the word “attempt”. A touch of irony in there, perhaps?

        You already know this but other readers might not: that the EPO eligibility test is “technical character”. The “technical effect” question doesn’t arise atv the EPO till you have got through novelty and have arrived at the final hurdle, obviousness.

        The elegance of the EPO route lies in the fact that “technical character” is an absolute and time-independent question whereas “technical effect” is not. It is relative, not absolute. You cannot assess “technical effect” except by reference to the prior art universe as it happened to be, one day before the date to which the claim is tethered.

        Of course, in England it has been said for years that this EPO route is “intellectually dishonest”. I suppose this is because the English cannot get their heads around the idea that something notoriously old like “A digital computer” could possibly meet a statutory eligibility requirement.

        I have no idea how opinion in the USA divides, as between the EPO (absolute) and the English (relative) approach to eligibility, but on this blog the disagreement seems to be visceral.

        1. 6.4.1.1

          ??
          Are you saying a claim that has passed the first filter of having the timeless technical character can still not pass because it may not have the (time-dependent) technical effect?

          If that is the case, does the difference come from different definitions of “technical”…? Or does the term – by itself – of “technical” nothing more than a nonce word and it is only the different phrases which have (different) meanings?

          Further, since the phrase apparently must have different meanings (as they must since they have different timing impacts), should the two terms be used in such a cavalier manner as to induce a lack of clarity between their two different legal functions?

          1. 6.4.1.1.1

            The answers are: yes, no, no, no. Subject matter that has “technical character” can still be not patentable because it is obvious. Under the EPC, that which is patentable has to be presented as the solution to a technical problem. The solution to a technical problem can be thought of as a “technical effect”. All the way through, “technical” has the same meaning. It’s like “useful arts Y/N” which you seem to think is dead easy to anwer.

            1. 6.4.1.1.1.1

              Sorry MaxDrei, but that is one answer that cannot be. You cannot have technical be both timeless AND time-dependent and still have it mean the same thing.

              You have to square the differences and you have not done so.

              (You get sidetracked with the second answer and the attempted insertion of obviousness, which would NOT address what I actually asked and itself confuses different legal meanings.)

              Try to stay focused on what I asked.

              And yes, the difference between Useful Arts and Fine Arts is rather clear. Not sure why you continue to struggle with this.

              1. 6.4.1.1.1.1.1

                I do not understand why you have such difficulty with “technical”. We distinguish today between useful arts and fine arts. Back when the Constitution was written, there was also a distinction between the useful arts and the fine arts. Are you saying that this distinction changes with time, that we categorize today as fine arts what was categorized back then as useful arts. Or vice versa? Did violin making ever belong to the fine arts or violin playing ever to the useful arts?

                Mind you, code (written by a human violin maestro) that instructs a robot to play a violin better than a human maestro, that would be really something. Does that coding belong to the fine arts or the useful arts?

                1. The “difficulty” that I am having is your attempt to define “technical” in contradictory terms.

                  I have no problem with the word itself – the problem is in. your use.

                  You are the one trying to have both time-less AND time-dependent meanings and not have any difference in the meaning.

                  Neat “trick” – just not logically possible.

    5. 6.5

      Max – does not this look rather like the UK Aerotel test under a thin veneer of US terminology? I’d be excited to hear your thoughts.

  14. 4

    Of importance to this analysis is that (1) all of the asserted claims in Enfish were means-plus-function claims, and (2) the Enfish specification contained detailed, non-generic structure corresponding to the “means” elements. As Professor Lemley predicted several years ago, this is a good way to save software patents.
    link to papers.ssrn.com

    1. 4.1

      Michael – Only some of the challenged Enfish claims included means-plus-function language. At issue in the case were U.S. Patent 6,151,604 (claims 17, 31, and 32) and U.S. Patent 6,163,775 (claims 31 and 32). I believe that the claims in the ‘604 patent all included MPF elements, but not the two asserted claims in the ‘775 patent.

  15. 3

    directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.”

    If you want to focus on “use,” may I recommend that 35 USC 100(b) be consulted.

    What is – in plain English of the words of Congress – that is found there:

    and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    Emphasis added.

  16. 2

    If only the judges would read Hotel Security. All of the answers lie within that opinion.

      1. 2.1.1

        So this Ned’s infamous Hotel Security case. Seems to me, the opinion is more relevant to (today’s) 103 than 101.

        “If at the time of Hicks’ application, there had been no system of bookkeeping of any kind in restaurants, we would be confronted with the question whether a new and useful system of cash-registering and account-checking is such an art as is patentable under the statute. This question seems never to have been decided by a controlling authority and its decision is not necessary now…”

        1. 2.1.1.1

          Pilgrim, the issue of whether the system, if new, would patentable subject matter, was not decided there, true. But the “art” of the claim was old and means not new.

          What the case stood for is the approach.

          1. 2.1.1.1.1

            Ned – please update your understanding of the law – in particular 35 USC 100(b).

            Thanks.

            1. 2.1.1.1.1.1

              ps…

              As to the “approach” – you STILL are not getting the exceptions to the printed matter doctrine – as I explained to you with the very easy to understand Simple Set Theory.

              1. 2.1.1.1.1.2.1

                Ned,

                You continue your anti-Rich scape goating.

                The appearance that I am “pedal[ling] Rich-ism” only because we both are using as our principal source of law the actual law passed by Congress.

                Your wanting some other law, some pre-1952 law and the “ability” of the Court to use the common law evolution t001 to define “invention,” is one of your major problems.

                Once you realize just how much your desired ends drive you deep into the weeds, then you can appreciate what actually happened in history and apply the words of Congress.

                1. Real Estate lawyers, anon, pride themselves on drafting clear title documents. Patent attorneys pride themselves on drafting vaguely, functionally. Who benefits. Patent lawyers who litigate the proper boundaries in court.

                  Our profession is a fraud, largely, anon. Aided and abetted by the likes of Rich.

                2. Absolutely wrong Ned – the ladders of abstraction are NOT for obfuscation but for the full value of the innovation.

                  You need a new profession if you are harboring so much disdain for what YOUR job is.

                3. The fraud here is you Ned – as you purposefully ignore what Congress did, and then try to scapegoat Rich for what Congress did.

                  You do know that you have an ethical responsibility to not misrepresent the law in your advocacy efforts, right?

            2. 2.1.1.1.1.3

              100(b) is a tautology that partially defines a process as a process. It’s a virtually useless statute because “improvements” are already covered under 101.

              anon answer preview “wrong. holiday inn. terrain. sun tzu. congress. wide gate. printed matter”.

              1. 2.1.1.1.1.3.1

                It appears to be a tautology for you because you do not understand the historical context.

                It is most definitely NOT a useless statute.

                That you think it so is more an indicator of your lack of understanding than anything else.

                Instead of the glib “answer preview,” spend a little more time critically thinking about the law as written – and do not be so quick to dismiss it.

    1. 2.2

      Gary, it is interesting that we have had 40+ years of angst since Benson, when the law had already considered the issue of claims that had mixed subject matter, some eligible, some not. Hotel Security.

      This case led directly to the well known printed matter doctrine. If anything, the two lines of authority need to be reconciled. Since Mayo, the courts are moving ineluctably in that direction, giving no patentable weight to conventionally recited, but otherwise eligible subject matter.

      1. 2.2.1

        Ned – your “version” of the printed matter doctrine is alarmingly lacking some rather fundamental aspects.

        See again my Simple Set Theory explication which provides that proper understanding.

        1. 2.2.1.1

          anon, your continued defense of Rich’s view of the world is somewhat like those who talk about the War of Northern Aggression and who will not accept the results of the Union victory.

          1. 2.2.1.1.1

            It is NOT a defense of Rich, Ned – (please stop your attempts to scape goat) – but rather, it is a defense of the Act of 1952 as written and passed by Congress (the appropriate branch of the government, sanctioned by the Constitution to write the statutory law that is patent law).

            That Judge Rich knew the law far better than any other judge (or Justice) because he helped write it is just icing on the cake (not the cake itself).

            1. 2.2.1.1.1.1

              That Rich help draft the ’52 Act does not ipso facto make him an expert on the law. Federico seemed, at least to me, better versed. Certainly, guys like Curtis and Walker were well versed. No doubt Rich knew a lot. But his understanding of the law was very shallow. Just reading his descriptions of the Supreme Court jurisprudence on invention and 101 shows how profound his misunderstanding was.

              On functional claiming: True, functional claiming of elements was pandemic prior Halliburton. What Rich never seemed to get even despite the construction of such elements to cover corresponding structure and equivalents, the rule from Westinghouse, providing functionally defined elements at the point of novelty made the claims indefinite, exactly as the Supreme Court explained.

              1. 2.2.1.1.1.1.1

                You CONTINUE to want to act as if the Act of 1952 did not happen.

                It did.

                And one of the drivers was that very same “Supreme Court ‘invention‘ jurisprudence that had F A 1 L E D to make what Congress had previously supplied to to the courts: any clear common law evolution of the word “invention.”

                It is not Judge Rich that suffers from a shallow reading of the law, Ned – it very much is you.

                1. Rich was at war with the Supreme Court. They wanted definiteness. Rich wanted functional claiming. They wanted inventions within the useful arts. Rich wanted nominalism – a formal obeisance only. They wanted inventions that improved. Rich wanted inventions that were different.

                  They is little doubt that Rich penned Benson, State Street Bank, Donaldson and the very troublesome dicta in Alappat that relied on the rejected heresy of In re Barnhart.

                  Then we had decision after decision regarding prior art and 103 that had to be legislatively reversed.

                  The man was a beast.

                2. Definiteness?

                  What a joke.

                  They had their chance and messed up so badly that Congress took action.

                  That was 1952.

                  You are still in denial over this fact.

                  The Supreme Court is the beast – wanting its fix of the addictive power of setting innovation policy from the bench. Wanting to NOT have certainty, so that the lack of certainty means that they must be involved again.

                  Criminy man, open your eyes and look at what is happening right now with the Office “guidance,” and the “development” by the inferior courts.

                  Your misplaced fealty IS the problem. Why is it that you have refused to share the words of your oath as an attorney? The oath that places the each (and every) branch of the government UNDER the Constitution and does not place the Court above the law?

                  Your “aim” is as misbegotten as it is clear.

                  As to “improvement” versus “different,” you only reveal that you do not understand innovation and the “different” IS “improvement.” You abide by fallacies like “linear advancement” and “static universe” and have no real appreciation of the actual wonder and beauty of innovation – innovation by the “merely” different, innovation such as breakthrough innovations that OFTEN are “worse”” than the status quo, but yield sharper improvement curves.

                  Time to wake up, son.

                  Time to unclench your eyes.

                3. dicta in Alappat that relied on the rejected heresy of In re Barnhart.

                  More revisionist B$ from you.

                4. As I just said to Maxdrie, it is “Science and Useful arts”. If you are going to quote constitution, please do it properly?

                5. They wanted inventions within the useful arts. Rich wanted nominalism – a formal obeisance only.

                  Absolutely wrong. You are now (purposefully?) obfuscating the two different sections of 101 – utility and statutory category; and the recent court decisions show the opposite of what you claim.

                  Your “just nominalism” claim is pure CR@P.

                  The law (and Rich’s view of the law) never eliminated either of the two items in 101. Utility was always still present. On the other hand, the mashed nose of wax desired ends driven malarkey we now have prevents items that clearly have both utility and statutory category passage as somehow not eligible due to the “magic” “Gist/Abstract” sword.

                  Open your eyes Ned. It is the Court that has removed the words of Congress, making the meeting of the statutory category aspect void (and not even addressing the utility component).

              2. 2.2.1.1.1.1.2

                “Just reading his descriptions of the Supreme Court jurisprudence on invention and 101 shows how profound his misunderstanding was.”

                I don’t know about that Ned, I think it was more deliberate attempts to switchero things than his “misunderstanding” any of it. I wonder if Rich was more conservative or liberal. Frankly I think he was likely more liberal, because that is the kind of tactic they employ. Or at least are employing in my lifetime. Observe now the bathroom debacle where the left is trying to argue that its “gender discrimination” based on “sex” to ensure that people of a certain sex are policed to use their own bathroom. Of course when that law was passed there were people stating that the left would eventually try to use the law this way, and the left at the time was like NAH BRO DON’T BE CRAZY. But then a few decades go by and they conveniently “reinterpretate” the lawl so that what they said would be absurd is now not absurd. I don’t even care about the bathroom issue, but the tactic itself is of interest to me, and this “tactic” is apparently an old one generally used by the left.

                1. 6, you might be right that Rich knew exactly what he was doing. There is no question that he did when he proposed 112(6) to overrule Halliburton so that patent attorneys could continue to claim the invention functionally — where the exact scope of the claim would be left to the litigator — never mind that such claims are inherently indefinite. They just make patent attorneys rich. The client is initially happy to get such apparently broad claims. But, patent litigators have a field day trying to confine the claim to its right scope. They get rich too. Rich. Rich. Rich.

                  If you read the testimony regarding Halliburton before Congress, you will see a lot of folks testifying that functional claiming makes claims clearer. How they had the b@lls to do that in face of a Supreme Court case that held just the opposite, is a wonder.

                2. “If you read the testimony regarding Halliburton before Congress, you will see a lot of folks testifying that functional claiming makes claims clearer. How they had the b@lls to do that in face of a Supreme Court case that held just the opposite, is a wonder.”

                  /facepalm

                3. There is no question that he did when he proposed 112(6) to overrule Halliburton so that patent attorneys could continue to claim the invention functionally — where the exact scope of the claim would be left to the litigator — never mind that such claims are inherently indefinite.

                  Although I do agree that those claims result in endless back and forth arguments and make litigators rich, I don’t see how they’re inherently indefinite. In fact, they’re narrower than similar claims that aren’t interpreted under 112(6), since they don’t get the full scope of potential equivalents under the DoE – accordingly, at a minimum, they’re more definite than any other claim that can cover equivalent structures including those present both before and after the issuance of the patent.

                4. Abstract,

                  If the claim itself is supposed to inform one of the metes and bounds, functional claims do not do that. One never really knows what the claims actually cover until one litigates. They potentially cover the entire gamut of the claimed functional range.

                  The ABA IP Committee called for a repeal of 112(b) on the grounds that functional claiming made claims inherently indefinite. Claims can be word for word identical, but still cover different subject matter. We used to joke that all disk drive inventions could be claimed with the same claim, simply varying the corresponding structure. There is a sick truth in this.

                  Functional claiming an invention does not tell the reader what the invention is, let alone inform him of its metes and bounds. They are inherently indefinite.

                  Now, if the functional claim actually covered everything they said they covered, they would at least be definite. They would still have to be enabled and supported with an adequate written description. But at least they would be definite.

                  But if they were functional at the point of novelty, they would also be invalid under United Carbon, Burr v. Duryee and O’Reilly v. Morse.

                  “Under these circumstances the broadness, ambiguity, and overhanging threat of the functional claim of Walker become apparent. What he claimed in the court below and what he claims here is that his patent bars anyone from using in an oil well any device heretofore or hereafter invented which combined with the Lehr and Wyatt machine performs the function of clearly and distinctly catching and recording echoes from tubing joints with regularity. Just how many different devices there are of various kinds and characters which would serve to emphasize these echoes, we do not know. The Halliburton device, alleged to infringe, employs an electric filter for this purpose. In this age of technological development there may be many other devices beyond our present information or indeed our imagination which will perform that function and yet fit these claims. And unless frightened from the course of experimentation by broad functional claims like these, inventive genius may evolve many more devices to accomplish the same purpose. See United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236; Burr v. Duryee, 1 Wall. 531, 568; O’Reilly v. Morse, 15 How. 62, 112-13. Yet if Walker’s blanket claims be valid, no device to clarify echo waves, now known or hereafter invented, whether the device be an actual equivalent of Walker’s ingredient or not, could be used in a combination such as this, during the life of Walker’s patent.

                  13*13 Had Walker accurately described the machine he claims to have invented, he would have had no such broad rights to bar the use of all devices now or hereafter known which could accent waves. For had he accurately described the resonator together with the Lehr and Wyatt apparatus, and sued for infringement, charging the use of something else used in combination to accent the waves, the alleged infringer could have prevailed if the substituted device (1) performed a substantially different function; (2) was not known at the date of Walker’s patent as a proper substitute for the resonator; or (3) had been actually invented after the date of the patent. Fuller v. Yentzer, supra, at 296-97; Gill v. Wells, supra, at 29. Certainly, if we are to be consistent with Rev. Stat. 4888, a patentee cannot obtain greater coverage by failing to describe his invention than by describing it as the statute commands.”

                  Halliburton at 12-13.

                5. Ned,

                  You keep on wanting to use abrogated case law – as if the Act of 1952 did not happen.

                  It happened.

                6. Abstract, I normally think of software claims as methods, so generally there should be a direct correspondence between the claim and the spec so that reading the claim will fairly tell one exactly what the invention is.

                  But software seems to be an exception to the more general rule.

                  But we’re talking about means-plus-function claims, and whether claiming structures functionally is always inherently indefinite, so we’re referring to system claim counterparts to those software method claims, no? The idea being that claiming means-for-[software result] is indefinite because there are infinite ways to achieve that result?

                  That seems to be more of a distinction of claiming a result rather than a process. For example, regardless of whether my claim recites “obtaining a result of four from a mathematical calculation” or “means for obtaining a result of four from a mathematical calculation”, there’s an infinite number of ways of getting to that result. But a claim reciting “subtracting one from five” or “means for subtracting one from five” (with such means described in the specification) may be broad and widely known, but is not indefinite.

                7. Functional claiming an invention does not tell the reader what the invention is, let alone inform him of its metes and bounds. They are inherently indefinite.

                  Ned, I certainly agree that functional claims can be indefinite. But, not all functional claiming is inherently indefinite. For example, a means-plus-function claim to a software module is limited to the particular algorithm disclosed in the specification, under WMS Gaming. If the specification is sufficiently definite, with a detailed flow chart or pseudocode, for example, then the claim is not indefinite, merely because it could cover the same function implemented in C+, PASCAL, or Java. For example, a flow chart showing specific decisions and bit shifts of a multi-stage adder may provide definiteness to a claim reciting “means for adding two digital signals”, while a flow chart with boxes that merely say “evaluate a mathematical function” and “provide output” would not.

                8. Even outside of 112(f) the use of terms sounding in function (as opposed to claims TOTALLY functional) are permitted. See Federico.

                  All you are seeing here is Ned’s usual overblown hyerbolic windmill chase.

                9. Does Federico say that between where he says the limits of functional claiming aren’t clear, and where he commits heresy against reading “the claim as a whole”?

                10. Neither – it is when he says that Congress purposefully allowed terms sounding in function while discussing what is now 112(b), quite outside of the discussion of what is now 112(f).

                11. Sincere question:

                  Is this the commentary to which you refer?

                  link to ipmall.info

                  The discussion of 112(2) appears to be extremely limited. Does he obliquely refer to 112(2) in the section you’re referring to?

                12. Abstract, I normally think of software claims as methods, so generally there should be a direct correspondence between the claim and the spec so that reading the claim will fairly tell one exactly what the invention is.

                  But software seems to be an exception to the more general rule.

                13. The execution of software is not software (no matter what you may choose the think, eppur si muove)

                14. anon,

                  really? You won’t comment on whether or not we’re talking about the same document?

                15. “Bob,”

                  Not the version that I have – I will check my records to see if it has the same content.

  17. 1

    “In other words, are computers merely being used to do another task? Or is the claimed invention something that makes a computer itself work better? If the former, the subject matter is patentable; if the latter, the claim must be subjected to Mayo Step-2. ”

    Shouldn’t “former” and “latter” be reversed?

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