Federal Circuit: Software and Data Structures Are Not Inherently Abstract

by Dennis Crouch

Enfish, LLC v. Microsoft Corp (Fed. Cir. 2016)

In a rare win for a software patentee, the Federal Circuit has rejected a lower court ruling that Enfish’s “self-referential” database software and data-structure invention is ineligible under 35 U.S.C. § 101 as effectively an abstract idea.[1]  The apparent saving-grace of the claims here is that the improvement is directed to the database operation and is not tied to the business improvement or economic activity.

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.

Accordingly, 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, embodied in the self-referential table.

. . . [W]e 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.

However, the court clear here that Software Claims are patent eligible (as long as they are not abstract):

[We do not] think that claims directed to software … are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.

I think it makes sense to begin with a look at the claims at issue for a moment.

In thinking through abstract idea step-one, the court considered Microsoft’s proposal that the claims are directed to “the concepts of organizing data into a logical table with identified columns and rows where one or more rows are used to store an index or information defining columns.”  Microsoft’s statement here is absolutely true, but the court rejects it as too “high level of abstraction” that is “untethered from the language of the claims.”  If the court followed that approach, it would render the step-one all but meaningless.

Now, all of this talk about the improved computer operation might make you think that the claims are rather complex. They are not.  Claim 17 of the ‘604 Patent, for instance simply requires a means for creating and indexing a self-referential logical table.

17. A data storage and retrieval system for a computer memory, comprising:

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; and

means for indexing data stored in said table.

In considering the claim, the court found that “the self-referential table recited in the claims … is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory.”  As such, it is not an abstract idea.

= = =

[1]  At issue are U.S. Patent 6,151,604 (claims 17, 31, and 32) and U.S. Patent 6,163,775 (claims 31 and 32).  Both patents claim priority to a 1995 back when Enfish was a vibrant dotcom.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

252 thoughts on “Federal Circuit: Software and Data Structures Are Not Inherently Abstract

  1. And in the blink of an eye, the CAFC finds another junky patent floating in the wake of Enfish:

    TLI Communications LLC vs. A Zillion Companies Who Actually Make Stuff

    Panel: Dyk, Schall, Hughes
    Here’s the junk claim:

    17. A method for recording and administering digital images, comprising the steps of:

    recording images using a digital pick up unit in a telephone unit,

    storing the images recorded by the digital pick up unit in a digital form as digital images,

    transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

    receiving the data by the server,

    extracting classification information which characterizes the digital images from the received data, and

    storing the digital images in the server, said step of storing taking into consideration the classification information.

    Got that? It’s the storage of images and some information about the images “offline.” Because sometimes the local memory is limited. And nobody knew that until these super smart “innoavators” filed their patent. Except not.

    From the case (applying Enfish — surely the only reason this wasn’t a simple Rule 36 decision because it wasn’t a close call):

    The specification does not describe a new telephone, a new server, or a new physical combination of the two [<— imagine that! focusing on the physical arrangement]. The specification fails to provide any technical details for the tangible components, but instead predominately describes the system and methods in purely functional terms.…. Put differently, the telephone unit itself is merely a conduit for the abstract idea of classifying an image and storing the image based on its classification. Indeed, the specification notes that it “is known” that “cellular telephones may be utilized for image transmission,” id. at col. 1 ll. 31–34, and existing telephone systems could transmit pictures, audio, and motion pictures and also had “graphical annotation capability,” … vague, functional descriptions of server components are insufficient to transform the abstract idea into a patent-eligible invention

    Much, much more to come ….

  2. As Night has it that I deliberately misrepresent the EPO line on software patents, I thought I would set out some basics, to make it easy for Night to pinpoint where the misrepresentation occurs.

    1. EPC Art 52 sets out the stuff that is not eligible. It includes the presentation of information, programs for computers and methods of playing games or doing business.

    2. GATT TRIPS prescribes that patents shall be available in all fields of technology. For the EPO, what the excluded items have in common is that they lack “technical character”.

    3. But Art 52 is an exclusion to be construed narrowly. Only the excluded stuff “as such” is ineligible. A computer or a data carrier does have technical character so if you claim that you escape the exclusion.

    4. Not that it avails you much, because you still have to get past the EPC’s equivalent of 102 and 103, and for the EPO the only sort of non-obviousness that counts is technological non-obviousness.

    5. What does the EPO mean by that? It means that unless you can present your claim as a combination of technical features that solves in a non-obvious way an objective technical problem, you haven’t established the requisite inventive step.

    6. The software that programs a computer might or might not solve a problem in technology. So a claim to a signal or a data carrier might or might not be allowable, depending on what the carried program achieves.

    7. So, the touchstone isn’t “abstract” or “something more”. Rather, the question is whether the claimed subject matter is a new combination of technical features that solves a problem in technology in a non-obvious way.

    8. Who would dispute that the EPO is TRIPS-compliant. Who will assert that the USA is still TRIPS-compliant?

    1. Interesting MaxDrei.

      The “per se and “as such” are effectively neutered by any scriviner worth their salt (I would have made your point 3 a sub-bullet under point 1 directly, but really not worth quibbling about).

      Which then reduces to “technical.”

      On that point, let’s be clear about the differences in the law as written by the different sovereigns, and (politely) remind people that here in the States, our sovereign has purposefully chosen the more broad Useful Arts rather than any more limited “Technical Arts.”***

      The EPO “equivalence” to our 102/103 then – keeping in mind the broader scope of the US sovereign’s choice of Useful Arts is not a true “equivalence. It would be a clear error of law to hold otherwise (let’s not mix apples and oranges at any level of a sovereign to sovereign comparison).

      To your point 6, our US Sovereign ALREADY distinguishes (incorrectly in my opinion, but I do recognize the controlling law) claims to signals (See In re Nuitjen). If you have a “beef” about disparity, this “signals” disparity can be clearly seen to be a different (or at least a sub) topic, which would draw a different case into the cross-hairs.

      The question then on whether the US is (not still – but rather now in addition to Nuitjen) TRIPS-compliant can – and should – be broken into the different segments of non-compliance.

      I do not think that you will find Night Writer disagreeing with you if you were to postulate that some of our more recent Court (and court) decisions exhibit a “broken scoreboard” result.

      Perhaps, given your long standing and widespread “influence” on the EPO side of the waters, you can persuade some of your clients to take a closer look at the apparent non-compliance with our broken score board, results driven decisions, and put pressure (through the TRIPS mechanisms) to fix the broken scoreboards.

      .

      ***we still have far too many people on these boards being purposefully deceptive as to this difference. Be that as it may, those who truly understand our US law, readily acknowledge and do not try to obfuscate about this difference in order to reach any of a desired philosophical Ends.

      1. Interesting, you say, anon. In what way? Is there something new in what I wrote? Isn’t it the same old same old needle stuck in the groove stuff you have been reading from me for years and years? And if it is, where then is the deliberate misrepresentation that Night Writer suddenly thinks he has spotted and for which utterance he calls for me to be banned from this blog? Is it apparent also to you? You and Night usually understand each other so well.

        Can you see it too? If so, do tell because, so far, Night Writer, having uttered his wild and vituperative accusation, has signally failed to substantiate it. If he carries on like that, perhaps he’s the one who should be banned?

        1. In what way?

          Read the rest of my post.

          Is there something new…?

          Yes – as I commented on in the rest of my post.

          Isn’t it the same old same old…?

          Not the new part that I comment on in the rest of my post. Some of it is though – your penchant for wanting to not recognize the difference in choices that respective sovereigns have made, for example.

          You were just given the definiton of abstract, by MDT. Is your memory that short?

          I will let Night Writer identify what he thinks he sees as being “intentionally misrepresenting.” The comment I replied to has its errors – but as I also mention, you do qualify the blanket statement of your point 1 with your point 3 (and I also draw your attention to your other – repeated in form – errors).

          What I CAN see – and what I have shared with you directly is that you are a relatively low intelligent person constantly shilling for the EPO way – or at least your version of what the EPO way is. You do this regardless of the number of times that I remind you of the differences in sovereign law. You do this is in a “throw the sAme CR@P against the wall manner that is beyond b0ring and tedious, showing yourself to be a person unwilling to learn.

          I also see you as someone who refuses to fully engage on items brought to the table of discussion, and then – without that engagement – will repeat your comments anew on some next thread, as if the comments were never made. THAT is a blight that should be stamped out. One does not have to be banned for that blight, but the drive-by monologue style can certainly be contained by the editor of this blog – if the editor truly wanted a better “ec(h)osystem.

          Maybe Night sees that too – I will let him comment on that.

          1. Well that was rather odd – the cut and past of ““You were just given the definiton of abstract, by MDT. Is your memory that short?”

            should have been:

            where then is the deliberate misrepresentation that Night Writer suddenly thinks he has spotted

  3. Rinse. Repeat.

    Paul Michel, former Chief Judge of the CAFC:

    After reading Enfish LLC, I conclude that, although labouring mightily to give clarity and administrability to Mayo/Alice, the court has failed to impart meaningful predictability to the vast expanse of computer or software-related patent claims. I estimate that hundreds of thousands of issued patents remain under a cloud of possible invalidity. That is even worse than being plainly valid or plainly invalid. The problem is that patent practitioners, examiners, judges, PTAB members and others charged with adjudicating eligibility or advising business executives cannot do so with any confidence at all.
    That is not the fault of the Federal Circuit, but of the Supreme Court which has “legislated” a two-step inquiry that is fundamentally flawed. At step 1, one must decide what a claim is “directed to”, a meaningless construct. So, in Enfish, the Federal Circuit tried to give it meaning by equating it with “focusing on” or “improving” compared to prior art, as revealed in the Written Description.
    The only clarity I discern is that, as in DDR, since the claimed invention in Enfish touts improvements in the functioning of the computer itself or solves a problem particular to the computer arts, it escapes Alice, step 1. But we already knew that. And, DDR remains one of only a very few decisions upholding eligibility and thus validity. This “safe harbour” looks exceedingly small to me. But, it is better than none.
    Therefore, innumerable claims issued before Mayo/Alice that were perfectively valid when issued will gradually fall, ultimately in massive numbers, because the Supreme Court suddenly, radically and retroactively upended the law of Section 101. That these two decisions pretend to follow Flook and Diehr is hollow because Diehr overruled Flook, as its authour (Stevens) made clear in his dissent in Diehr. When Mayo purported to reconcile Flook and Diehr, it was sheer sophistry. Then, Alice expanded on statements in Mayo and Bilski, compounding the chaos.
    In addition to pervasive uncertainty, we now face fundamental unfairness as 8,300 examiners, 275 PTAB judges, 1000 District Judges and other adjudicators cannot possibly apply the law consistently, and they are not. Many more thousands of patent attorneys cannot accurately advise clients, either. Their clients, likewise suffer both the uncertainty, which makes business decisions impossible, and unfairness, which adds considerable additional costs to securing and enforcing patents when the costs were already excessive, and now are indeed unbearable, in combination, by smaller entities. Yet, it is precisely those organisations (universities, research institutes, start-up, hospitals, emerging companies) that create most net new jobs, most economic growth, most new technologies.
    I am sure the Supreme Court did not intend or foresee these damaging effects. However, only it or the Congress can remedy the problem. The Federal Circuit has been rendered ineffective, trapped by Supreme Court decisions filled with loose dicta, some of it tracing back many decades, even to the 1800s. We can see its frustration in its plea for the eligibility of the health diagnostic method in Sequenom, while invalidating it.
    The recent “Guidelines” issued by the PTO are likewise unable to fix the problem; the PTO, like the Federal Circuit, has been given an impossible task: to make sense of illogical nonsense, unwittingly unleashed by the high court.
    Worst of all is that this entire episode was unnecessary. Bad claims are readily invalidated under sections 102, 103, 112. But, for whatever reason, Justice Breyer’s opinion in Mayo assumed that the 101 inquiry is “better established” and the other sections not up to the task. In my opinion, it is just the opposite.
    Even if the high court wanted to end the chaos, it could do so only gradually, one case at a time, over many years. Thus, as a practical matter, only Congress can end the nightmare, but it is still fixated on the greatly exaggerated, though real enough, “troll problem.”
    The Federal Circuit will continue, valiantly, to contain, limit and marginally reduce the harm. But, it will not be enough. That is the lesson of Enfish.

  4. MD: when will SCOTUS announce that writing code is within the ambit of the Useful Arts and that under 35 USC 103 it is legitimate and meaningful to examine whether any particular sequence of code (or any particular math or equation) is or is not “obvious”?

    Ah, somebody dares to press up against the vaporous foundation. This is a great question. It’s also an old one.

    If “software that improves computing” is eligible technology for patenting, then surely the process of writing that software is an eligible process for patenting.

    More specifically, the process of writing some additional code and appending it to “improve the computing” of that old eligible code is eligible for patenting.

    So let’s say we have an eligible claim to a class of computer program that “improve computing”. Next someone finds a “bug” in the software falling so it doesn’t work in one or more particular contexts (a super rare occurence, right? but stay with me…). Can the “bug” be fixed without infringing the patent? Can the detection of the bug be claimed (presumably eligible, right)? Can the process of writing software to fix the bug be claimed (presumably eligible, right)? Can those claims be asserted against the manufacturer of the software, preventing it from fixing its software (presumably yes — if the problem was “obvious”, then the seller of the original software wouldn’t have sold the defective software in the first place … right?)?

    Promote the progress, indeed. But, hey, some “investors” need their “expectations” backed up so let’s pollute the system with this junk. What else could possible be more important?

    1. But, hey, some “investors” need their “expectations” backed up so let’s pollute the system with this junk. What else could possible be more important?

      Y
      A
      W
      N

      Malcolm being Malcolm (and being duplicitous about not wanting to provide patent protection to the form of innovation MOST accessible by the non-wealthy.

      Funny how he has NEVER adequately squared his predisposition against something that he paints as the opposite. That duplicity rings out every time he pulls that “wealthy” or “special” or even that “serious” item off of his short script. But does he care? Not at all.

      “Go figure Folks”

      1. the form of innovation MOST accessible by the non-wealthy.

        You still peddling that silliness?

        We should open the patent system up to claiming logic because “it’s MOST accessible to the non-wealthy”?

        What happens next, I wonder? Oh wait: we already know.

        The patent maximalists are truly amusing. As I’ve noted for years, they will literally do and say anything if they thinks it will keep their grifting schemes a tiny bit more viable for any length of time.

        Hey all you people in the vanishing middle class! Come and get your patents on logic and rules carried out “on a computer”! It’s the key to your happiness because every patent creates a job and without your contributions we’ll all end up like the Amish. It’s got to be true because The Most Important People Ever told us so, and they’re never wrong.

        1. I am not the one “peddling silliness.”

          That would be you and your attempt to make this out as some sort of 1-percenter G-g-g-grifter con sp1racy.

          1. some sort of 1-percenter G-g-g-grifter con sp1racy.

            It’s not a conspiracy. It’s just something that a certain class of wealthy entitled people do. And it’s pretty much all they do.

            You really haven’t noticed?

            1. LOL – next time grab a size or two larger tinfoil hat.

              Then think about the duplicity involved with your 1-percenter G-g-g-grifter con sp1racy wanting to have patent protection on the form MOST accessible to the non-wealthy.

              Clearly, you are missing a very easy piece of “logic” here.

              1. think about the duplicity involved with your 1-percenter G-g-g-grifter con sp1racy wanting to have patent protection on the form MOST accessible to the non-wealthy.

                I’ve mo idea how you find “duplicity” in that but I’m sure the answer is fascinating.

                Can you try plain English and declarative sentences?

  5. The wealthy professional shill known as former Chief Judge Michel (anybody know how much he gets paid to spew his bal0ney these days) is apparently still upset that the PTO isn’t granting more bingo management and “think about this correlation” patents.

    Maybe it’s time to get over that? The Federal Circuit has stuck its flag in the ground and it stuck it in the ground pretty much exactly where many of us predicted it would six or seven years ago (at least).

    The air is being let out of the balloon slowly and, unsurprisingly, it’s being done clumsily. It’s being done clumsily because of the lack of coherent reasoning that led to the inflation of that balloon in the first place. It’d be better for everybody to simply pop the thing but only the Supremes are likely to take that step and it’s not going to happen with Microsoft’s hand on the needle.

  6. Below Max is intentionally misrepresenting the law at the EPO. He should be banned from this blog for doing so.

    Ned is telling us that software is logic if it doesn’t go to the improvement of the operating of the computer and technical otherwise. What?

    We have entered the dark ages where unscrupulous practitioners can fabricate whatever nonsense they want with no consequences.

    Punish this behavior.

  7. The old maxim “Never say never” surely applies here. Thus, never say that a claim to a method of doing business will “never” be eligible or, here, never say that a claim to software will “never” be patentable. This one got through, perhaps because it has a March 1995 priority date.

    I can imagine a claim to new software that enhances images. Suppose the field of technology is imaging body tissue. We (Siemens perhaps) can improve data gathering, or it can improve data processing, to get sharper, better images. Why should its improved data gathering be patentable but its improved data processing not?

    The tricky bit is to formulate a workable rule that tells us when any given software claim is eligible. How long before such a workable rule emerges, I wonder.

    1. perhaps because it has a March 1995 priority date

      Aside from Malcolm’s incoherency, what does a priority date have to do with the 101 question vis a vis software?

      The tricky bit is to formulate a workable rule that tells us when any given software claim is eligible

      Not tricky at all. The rule is already there: utility within the Useful Arts.

      1. So far so good. But as to programs for computers, when will SCOTUS announce that writing code is within the ambit of the Useful Arts and that under 35 USC 103 it is legitimate and meaningful to examine whether any particular sequence of code (or any particular math or equation) is or is not “obvious”?

          1. That part of statutory law writing is NOT within the authority of the Supreme Court.

            Hint (again): look at utility.

            You’re doing that thing again when you spew nonsense and then follow up with silly innuendo. Do you have actually have any point to make? If not, then try to keep the flap shut so your foot remains out of it for a change.

            If “software that improves a computer” is eligible technology for patenting, then — according to your own “reasoning” which you’ve been trying desperately to shove down everybody’s throat since forever — then “writing code” is a useful technological “process” within 101. The Supreme Court doesn’t have to rewrite anything to reach that conclusion.

            How can it be otherwise, “anon”? Try plain English, using declarative sentences. Good luck.

            Now, if there’s something missing

            1. You’re doing that thing again when you spew nonsense and then follow up with silly innuendo.

              You are doing that thing again wherein you accuse others of that which Malcolm does.

              Try plain English, using declarative sentences.

              Been there – done that – and yet you seem unable or unwilling to understand and connect the dots.

              “Shockers”

              1. This is what straightforward reasoning looks like “anon”:

                If “software that improves a computer” is eligible technology for patenting, then — according to your own “reasoning” which you’ve been trying desperately to shove down everybody’s throat since forever — then “writing code” is a useful technological “process” within 101. The Supreme Court doesn’t have to rewrite anything to reach that conclusion.

                Go ahead and explain how this could possibly be incorrect, “anon.”

                This, by the way, is what a pa th0l0gical l i a r does:

                Been there – done that

                So go ahead and explain to everyone how — given your endlessly repeated arguments — it’s possible for “software that improves a computer” to be eligible for patenting but a “process comprising writing” that same software is not eligible for patenting.

                Or just admit that your position is that writing code should be eligible for patenting. Feel free to be ashamed about that position, if you like, and refuse to make that admission. We all understand how you feel.

                LOL

                1. Let’s see you move the goalposts back and finish discussing the first issue at hand, Mr. Br’er Rabbit.

                2. Let’s see you move the goalposts back

                  No goalposts have been moved.

                  Once again we see this weird reluctance to simply state your position on a straightforward question.

                  But you’re totally not evasive! Nope. You’re super serious. We all need to just listen. Asking questions is something those chattering little people do before they figure out whose ring to kiss. Right, “anon”?

                  C’mon, just put on the big boy pants and answer the question.

                3. no goalposts have been moved

                  Sure they have – you want to switch the topic to patents on methods of writing code. That’s not the topic under consideration.

                  Move the goalposts back and let’s finish the first conversation first.

                  After all, that’s what “big boys” do – and not try to play Br’er Rabbit as you are doing.

                4. you want to switch the topic to patents on methods of writing code.

                  I’m really sorry to have to break this news to you, but positing a question that arises directly and logically from a particular legal proposition isn’t “moving the goalpost” away from a discussion of that proposition.

                  It’s actually called “discussing the proposition.”

                  But we all know that a sincere discussion about the reasoning that’s been used to justify the patenting of logic executed “on a computer” is the last thing that the patent maximalists ever want to have. And we all know why that’s the case.

                  Please continue to avoid the question, by all means. Nobody is paying attention, as far as you know.

                5. You still are trying to move the goal posts – no matter how much lipstick you want to put on that pig, it still oinks.

    2. Software is logic Max? Wow, just nonsense. And the chair I sit on is a set of static equations. Is software physical? yes. Is logic physical? No.

      1. This is the other game the anti-patent judicial activist play. Software is no more logic than my chair is static equations. They have no argument to the contrary. None. Their only counter is blowing smoke.

    3. MD The tricky bit is to formulate a workable rule that tells us when any given software claim is eligible.

      The answer is almost certainly “never”.

      New software isn’t created in a vacuum. New software — the only kind that appears to be eligible now anyway — is created by modifying old software with “new” logic.

      So now we’re at a stage where the addition of a “new” logical step or rule to a set of existing logical steps/rules is eligible if the resulting claim results in an “improvement” to “computing” generally (as opposed to some other art field). The question is how long will it take the courts to determine that at least some “kinds” of data processing steps are so fundamental to computing generally that they can’t contribute to patentability in the computer context (just as they can’t contribute to patentability in the non-computer context).

      Remember: the game for patentees is to push everything into 103 where the courts created a playground for “experts” to kick up all kinds of dust. Regardless of whether you believe that 103 “works” or not, it’s incredibly expensive to litigate it. That expense rises exponentionally when the claims are drafted using “means” languge and it’s nearly impossible for anyone to figure out what steps are actually covered by the claim.

      This Enfish case is truly remarkable not only for the eligibility holding but also for the finding that Microsoft doesn’t even infringe this incredibly broad claim.

      1. LOL – “never” says the guy who is on record as saying that software per se is never eligible.

        But also cannot comprehend what “equivalence” means in the patent sense and is always kicking up dust on that point.

        “Go figure Folks”

  8. At # 11.1 Night Writer observes of this case:

    “I am not sure that is good news for software. Some of it is for sure. But, all this does is put us at the technological test of the EPO.”

    I think he’s wrong. Never mind how much of current USPTO scrutiny of patentability is inspired by the EPO line, I see no sign of it at the Federal Circuit.

    For the EPO, you have to find in a “field of technology” the subject matter put up for patenting. Software is logic not technology.

    For the EPO, the only stuff that’s patentable is a combination of technical features which solves an objective problem in technology in a non-obvious way.

    One would think that the judges at the CAFC could relate to that. But only if somebody briefs them on it, and who’s going to do that, I wonder.

    1. Software is logic not technology.

      Simply wrong.

      For the EPO, the only stuff that’s patentable is a combination of technical features which solves an objective problem in technology in a non-obvious way.

      Are you really trying to tell me that the EPO does NOT issue “software patents”….?

      Really?

      MaxDrei, you have zero credibility.

      1. Depends what you mean by “software patent”. Take Diehr. Rubber molding was old. What was new (if I understand it right) was to run the machine according to the Arrhenius equation. So, a software patent, one of the kind the EPO recognises as eligible.

        1. …and yet to people like Malcolm, Diehr was wrongly decided.

          Maybe you want to play cheerleader to Malcolm once again on a point that you “disagree” with him about, eh MaxDrie?

    2. Max, you are intentionally not telling the truth. You know full well that software patent are issued at the EPO regularly and that one portion of the technological test at the EPO is whether they improve the performance of the computer as in this case.

      1. Night, you are a constant drum, banging loudly, and with only one song: business methods are patentable subject matter.

      2. I don’t draft, prosecute or litigate software cases but I suspect that Enfish might be a good vehicle for debating patentability under the EPC. Does the claimed subject matter (despite what Judge Hughes avers) really result in a better-performing computer. My hunch is that, if the truth be told, it does not.

        1. Max, I have prosecuted patent application similar to Enfish before the EPO. They were granted. Similar argument as to this one. And—what are you even talking about. Do I have to dig out cases? Your comments are so out of bounds it is ridiculous.

          Max, what? The test before the EPO for technological in a case like this is it directed to improvement of the performance of the computer? Do you question that?

        2. I don’t draft, prosecute or litigate software cases but I suspect

          No sh!t.

          And yet, you have a “surprisingly” strong (wrong) and closed-mind as to the topic.

          Why is that?

    3. Dennis once asked me what I thought was the problem with this blog. Well, it is people like Max, Ned, and MM getting on here and repeatedly pushing propaganda and not law.

      1. It is NOT that an alternative “End” is desired – it is that the means to that desired End involves duplicity and chicanery and a refusal to actually address the counterpoints raised.

        And yes, I do mean that the word “address” means to address in an inte11ectually honest manner and not divert, avoid, run away from, or twist beyond recognition.

        One simple point (for example): Using the patent law concept of inherency, does the first computer have “already in there” ALL future improvements to the machine coming by way of the manufacture known as software?

    4. Max, I have been a system programmer — before I went to law school. I wrote an OS.

      In doing so, I tried to make my code as efficient as possible in order to take as few steps as possible in order to run faster.

      Now it seems to me that code that runs more efficiently, runs faster, etc., is exactly the kind of subject matter that should be patent eligible. It is technically better.

      Enfish’s invention is this. It is technically better.

      Ditto Versata’s code. Better, faster, extremely valuable for that.

      These inventions are more than just logic. They involve significant improvements in functionality.

      1. >>These inventions are more than just logic. They involve significant improvements in functionality.

        This statement evinces such an ignorance of computer science that I don’t believe you have a degree in computer science. You sound like one of those self taught people that never really understood the subject matter but could code. OK coder Ned.

      2. >>These inventions are more than just logic. They involve significant improvements in functionality.

        This is a belly laugh. Code that doesn’t improve the functioning of the computer is logic, but other code is logic. LAUGH! There is no “logic” in that statement at all.

        But, then when your ilk claims that logic is graphic shaped in a certain way what can we expect.

      3. Ned you have an advantage over me, with your experience of writing an OS. Now I can see that a better OS makes a better computer. But I’m not sure that a better database program results in a better computer. I’m thinking that, instead, it makes a better database program.

  9. Below is an ethical man’s reaction. Lemley is unfit to shine his shoes.

    After reading Enfish LLC, I conclude that, although labouring mightily to give clarity and administrability to Mayo/Alice, the court has failed to impart meaningful predictability to the vast expanse of computer or software-related patent claims. I estimate that hundreds of thousands of issued patents remain under a cloud of possible invalidity. That is even worse than being plainly valid or plainly invalid. The problem is that patent practitioners, examiners, judges, PTAB members and others charged with adjudicating eligibility or advising business executives cannot do so with any confidence at all.
    That is not the fault of the Federal Circuit, but of the Supreme Court which has “legislated” a two-step inquiry that is fundamentally flawed. At step 1, one must decide what a claim is “directed to”, a meaningless construct. So, in Enfish, the Federal Circuit tried to give it meaning by equating it with “focusing on” or “improving” compared to prior art, as revealed in the Written Description.
    The only clarity I discern is that, as in DDR, since the claimed invention in Enfish touts improvements in the functioning of the computer itself or solves a problem particular to the computer arts, it escapes Alice, step 1. But we already knew that. And, DDR remains one of only a very few decisions upholding eligibility and thus validity. This “safe harbour” looks exceedingly small to me. But, it is better than none.
    Therefore, innumerable claims issued before Mayo/Alice that were perfectively valid when issued will gradually fall, ultimately in massive numbers, because the Supreme Court suddenly, radically and retroactively upended the law of Section 101. That these two decisions pretend to follow Flook and Diehr is hollow because Diehr overruled Flook, as its authour (Stevens) made clear in his dissent in Diehr. When Mayo purported to reconcile Flook and Diehr, it was sheer sophistry. Then, Alice expanded on statements in Mayo and Bilski, compounding the chaos.
    In addition to pervasive uncertainty, we now face fundamental unfairness as 8,300 examiners, 275 PTAB judges, 1000 District Judges and other adjudicators cannot possibly apply the law consistently, and they are not. Many more thousands of patent attorneys cannot accurately advise clients, either. Their clients, likewise suffer both the uncertainty, which makes business decisions impossible, and unfairness, which adds considerable additional costs to securing and enforcing patents when the costs were already excessive, and now are indeed unbearable, in combination, by smaller entities. Yet, it is precisely those organisations (universities, research institutes, start-up, hospitals, emerging companies) that create most net new jobs, most economic growth, most new technologies.
    I am sure the Supreme Court did not intend or foresee these damaging effects. However, only it or the Congress can remedy the problem. The Federal Circuit has been rendered ineffective, trapped by Supreme Court decisions filled with loose dicta, some of it tracing back many decades, even to the 1800s. We can see its frustration in its plea for the eligibility of the health diagnostic method in Sequenom, while invalidating it.
    The recent “Guidelines” issued by the PTO are likewise unable to fix the problem; the PTO, like the Federal Circuit, has been given an impossible task: to make sense of illogical nonsense, unwittingly unleashed by the high court.
    Worst of all is that this entire episode was unnecessary. Bad claims are readily invalidated under sections 102, 103, 112. But, for whatever reason, Justice Breyer’s opinion in Mayo assumed that the 101 inquiry is “better established” and the other sections not up to the task. In my opinion, it is just the opposite.
    Even if the high court wanted to end the chaos, it could do so only gradually, one case at a time, over many years. Thus, as a practical matter, only Congress can end the nightmare, but it is still fixated on the greatly exaggerated, though real enough, “troll problem.”
    The Federal Circuit will continue, valiantly, to contain, limit and marginally reduce the harm. But, it will not be enough. That is the lesson of Enfish.
    Paul Michel, former Chief Judge of the CAFC

    1. Judge Michel again looks at Alice as radical. The problem really is not with Alice, but with Bilski because that Court chose not to define what it meant by Abstract. Enfish, in my view, is a major case for clarifying things. Landmark, in my view. It will be cited from now on, worldwide. A great case.

      IMHO, The two step approach is correct because it deals with ineligible subject matter in the claim. Enfish make it clear that step 1 involves ineligible subject matter. Thus, a claim directed to subject matter other eligible does not invoke step 1.

      So what is ineligible — we go with examples from the Supreme Court and the Federal Circuit. Price, Risk, Math, Rules, Information, Data, Printed Matter, laws of nature.

      Except for laws of nature, everyone should be able to see the pattern of the examples. All involves the meaning something. Even math. What is a “1,” for example. Numbers are abstract, and always have been.

      The view that the sky is falling is not held by all. Clearly Walls Street, so adversely affected by business method patents, did not see State Street Bank as a step forward.

  10. Below is Lemley’s reaction. So, a computer that can drive is a “general idea using computer technology.” Lemley said software has no structure and his functional paper is filled with misrepresentations. Lemley also will not debate nor respond to criticism of his rants nor defend his cites which do not support what he says they do.

    I think the Federal Circuit will increasingly seek to distinguish between software patents that seem directed at real improvements in computer technology and those that simply claim the implementation of a general idea using computer technology. The court viewed this claim as directed at real technology. I think it also helped that the claim was a means-plus-function claim, so the actual technology disclosed in the specification got read into the claim.
    Professor Mark Lemley, Stanford Law School

    1. Notice too the intentional conflation of 112 with 101 with Lemley. It is shocking that a person who has so regularly misrepresented science and the facts has a good reputation with the SCOTUS. It is an indication of ignorant the justices are of science that they don’t see that Lemley is a pseudointellectual backing the anti-patent crowd.

  11. While searching for my summary of oral arguments in the Enfish case, I discovered that Patently-O is now archiving the comment (at least publicly) for only 6 weeks. After that time, only the posts themselves are accessible (the oldest viewable comments as of today are from the third week in March 2016, or thereabouts).

    Thankfully I archive most of the more interesting exchanges (for future reference). So here’s my write up. I did remember correctly that the MS attorney was not well-prepared and the panel was hostile from the beginning.

    Unsurprisingly, MS never argued that software should be ineligible. They expressly stated, in fact, that they were not arguing that. But it’s equally clear that, for whatever reason, the panel here realized that they would have difficulty finding both that these claims were ineligible and defending what would remain of “software” patents.

    Anyway, here’s the write-up:

    Moore, Taranto, Hughes

    The super serious question before the CAFC: are new information organizing “structures” (e.g., new tables) eligible subject matter?

    Enfish attorney, completely missing the fact that the “narrowness” of a claim, by itself, isn’t relevant to eligibility:

    “If the district judge had characterized the claim as a claim to “a single table self referential database” there would have been no need to move to Mayo step 2.”

    Even if the district court’s characterization was accepted, “at step 2 the court should have but failed to grapple with the single table self referential data structure.”

    Enfish doesn’t dispute that people have been organizing tables using header rows for thousands of years. Enfish, of course, doesn’t bother to explain why — given that undisputed fact — numerous applicants haven’t rushed to the PTO to patent “new table structures” until rather recently in the history of system.

    The alleged invention is a table that includes at least one instance of “self referentiality”. On a computer.

    At around 14 minutes into the argument there’s this exchange:

    Question from judge (Hughes): If I was the first to “innovate” the relational database and I described it in a fair degree of detail, could I get a patent on it? (note: the “complete” concept of relational databases is widely credited to EF Codd of IBM; the concept was never patented nor was a patent applied for; Codd, of course, defined his data management system as a set of rules governing the logic used to manage data within the system).

    MS Attorney non-answer: “It would certainly be a very different case from this one.”

    Judge Taranto: I’d at least need a better answer than that. You know that there is tremendous uncertainty about what constitutes an abstract idea. Most of our cases and all of the Supreme Court cases have been about objects of the claims that are easily distinguished from this one. The object of this claim is a kind of software improvement to computer functionality. It is something like a fresh question for us. I need help in understanding how to think about the Supreme Court abstract idea concept when the whole point from beginning to end of the claim is an improved internal process in the computer using completely old hardware.

    MS Attorney: “Um … I would take the court to the Versata case. In that case [starts to explain]…”

    Judge Taranto: “Right, yeah, but see that’s one of the cases like all of our post-Alice cases where it’s perfectly easy to say that the object of the claim is the creation of legal intangibles — which is contractual relationships to people. We don’t have that. So I’d like to put those cases aside. I don’t think — tell me if I’m wrong — that we don’t have a case that is specifically about internal, internally processes of a computer using old hardware that make the computer function better.

    MS Attorney: “With respect I’d still the court to look at Versata and claim 17 ….”

    Judge Hughes: “But Versata is basically a business method that could have been taught on the street. … I agree with Judge Taranto that case is of very little relevance…. That’s why I asked you about relational databases … where those are something specific to the computer world that are novel and patentable … These types of databases I don’t see as having been done prior to the computer world. So … can you give me another try at one? So, if have you have the prior art relational databases, and not in some very general sense of using tables with tabs and columns on a computer — because that seems abstract to me — but defined in a certain way — “X number of databases working relationally in a certain way” — the way the prior art works — why wouldn’t that be patent eligible?”

    MS Attorney: “If we had a relational database and you were claiming the relational database techniques, you would be far less abstract than the claims are here. And if I could just have the court indulge just one comparison to relational databases and the claims here it would be this: the claims and the specification teaches that the benefit of the invention here is to leave all of the relational database rules aside. Instead of having many tables where you try to claim like [i.e. similar] things together you are supposed to throw everything into a single table, a single logical table — any kind of record can go in there, and therefore it’s going to be a sparse matrix, you’re not going to try pack everything in like a relational database would …”

    Judge Hughes: “So it’s a new kind of database!”

    MS Attorney: “The specification suggests it’s different from a relational database … and the question we think this is the critical question: is that teaching part of the claims? We suggest that the answer is “no” for two reasons.”

    Judge Hughes: “Well you can answer that but I’m not sure I’m going to agree with you on that. It seems there’s enough in the “self-referentiality” ….”

    MS Atttorney: [irrelevant hooey deleted]

    Judge Hughes: “This doesn’t sound at all like a 101 argument to me.”

    MS Attorney: [more irrelevance]

    Judge Hughes: [interrupts] “Okay this is not being very helpful to me. So let’s just assume I don’t agree with your reading of the claims. I find that the claims specifically incorporate one database with self-referentiality. Why isn’t that a new database that is patent eligible under 101?”

    MS Attorney: “The question then becomes, with that assumption, what are you asking the computer — which is admittedly generic — to do. And here the computer is being asked to do things that people can do. A person could take data and organize it into two columns and two rows and have those rows be self-referential in the manner in which the claim is taught and therefore the claim is abstract.”

    Judge Hughes: “I get that. I see … and I do think that like Versata and some of those cases if all you do is take some kind of method that’s done and ‘do it on a computer because it works faster and better’ then that’s ineligible. And I see some aspect of that here but I also I see your friend’s argument that this doesn’t just do that. It improves the way the computer itself operates — it takes less memory, it makes the database work better. To me it’s not solely the case about taking something and do it on a computer, it makes the computer work better, too. I still don’t understand — assuming I read the claims in a more specific way than you do, why that’s not enough under Alice because the brunt of your argument leads me to the suggestion that computer software is just not patentable at all.

    MS Attorney: That is not our position ….

    Judge Hughes: Let me ask you this hypothetical then. Do you think the invention in the specification would be patentable if claimed properly?

    MS Attorney: If claimed properly, you certainly could have a patent …

    Judge Taranto: How would you do it here?

    MS Attorney: You could start, first, by claiming exactly what was taught in the specification. That would be a good start. And you would need to get to something that … you would need to claim the invention from the point of view of what was different and new that made the computer better, faster, and stronger, instead of claiming something that a person could do outside the context of a general purpose computer. That would make a difference. It makes a difference under the court’s precedents. And here, again, the specification teaches something: it suggests that you are going to get benefits if you have a single very large table. The patent claims just talk about a computer and “a table”, which could be “one or more” — you might follow the requirements of the claim limitations for one of your tables and not for others and therefore miss the benefits entirely. The claims reach that far because they are drafted in an abstract way and that’s what leads us into the Alice problem.

    1. MM, great summary. Comments like these need to be preserved on the public record just as much as the opening post.

        1. I am more than certain that you took a few “liberties” with that “transcript.”

          (and I am more than certain that you have no idea what my “favorite case” is)

  12. I assume everyone understands the the term “logical” in the claims is synonymous with “digital” (and even to “binary” given the realities of computer circuits).

    The CAFCs analysis is heading down the right path—the claim may be 101 eligible but obvious as hell in view of 1960’s technology, maybe even 1950’s.

  13. Note that they are acknowledging the equivalence of software and hardware., which is science realty. We really need to find a way to punish those that continue to knowingly make statement that are against what we know in science to try to further their cause. No punishment would be too small. Disbarment should be a minimum. I think both Ned and MM should be reported to their state bars for continuing to make false statements.

    “Nor do we think that claims directed to software,
    as opposed to hardware, are inherently abstract and
    therefore only properly analyzed at the second step of the
    Alice analysis. Software can make non-abstract improvements
    to computer technology just as hardware
    improvements can, and sometimes the improvements can
    be accomplished through either route”

    1. Software can make non-abstract improvements to computer technology just as hardware improvements can

      There’s a lot going on with this statement but I suppose the biggest problem is the phrase “just as”.

      A set of instructions can make a “non-abstract improvement” to a cook’s dinner preparation “just as” an improved utensil can. So what? Those instructions are still ineligble.

      What the CAFC is habitually unwilling to confront is that programamable computers are different. As opposed to newly designed computers with new tangible hardware that can be described structurally (just as every other machine can be), programmable computers present a completely different set of issues to the system. And that’s because “new” logic and and “new” information — as opposed to new machines — are both ineligible for patenting, for lots of great reasons.

      Ignoring that fact and choosing to ge nuflect instead towards “investors” who insist that their logic is “special” and requires patent protection has never served the CAFC or the patent system well, and it never will.

      1. MM, just yapping over and over that X is a Y is meaningless. Can something physical be logic? No. Is “software” physical? Yes.

        Please stop your unethical behavior.

        1. Can something physical be logic? No.

          Graphite on a piece of paper in the shape of “If X, then Y” is physical.

          It’s also an example of logic. And it’s not eligible for patenting.

          Anything else you want to add?

          1. an example of logic

            Y
            A
            W
            N

            See Hat Band Case.

            Oh wait, you have already volunteered an admission against your interests as to knowing and understanding the law as demonstrated there.

            Oopsies for you.

      2. that can be described structurally

        Malcolm insists on making an issue that an optional claim format is just that:

        optional.

        Take a hint, Malcolm, the moment your “logic” necessitates something as optional to no longer be optional, your “logic” is in the weeds.

        Instead of merely repeating your vap1d short script ad infinitum, ad nauseum, perhaps you want to first FIX that logic and come up with something that does not fall apart at the mere thought of a whisper of a wind.

        Either that, or the “good professor” should set up a separate page for the massively repeated “arguments” that never seem able to come out and deal with the counter points presented….

        1. “anon”: an optional claim format is just that: optional.

          Does anyone ever wonder why super serious “anon” never comes out and says (1) what’s the other “option” for a claiming a new manufacture or composition and distinguishing it from the prior art? and (2) what restrictions are placed on that other “option”?

          I don’t.

  14. Ned: computer software that improved the utility of a computer as a tool is technological

    I got some bad news for you and the CAFC: at best, the answer to that question depends on exactly what “improvement” is being claimed.

    Logic isn’t eligible subject matter for patenting. That’s an unfortunate fact that the CAFC just glosses right over in their zeal to coddle the shrinking portion of the software-patenting community that, for whatever reason, doesn’t turn the stomachs of most people.

      1. the claims aren’t directed to logic.

        Sure they aren’t! They’re “data structures.”

        link to en.wikipedia.org

        [A] data structure is a particular way of organizing data in a computer … Data structures can implement one or more particular abstract data types (ADT), which specify the operations that can be performed on a data structure and the computational complexity of those operations. … The implementation of a data structure usually requires writing a set of procedures that create and manipulate instances of that structure. The efficiency of a data structure cannot be analyzed separately from those operations. This observation motivates the theoretical concept of an abstract data type, a data structure that is defined indirectly by the operations that may be performed on it, and the mathematical properties of those operations

        And there’s nothing logical about those “operations”. Right?

        Sure there isn’t.

        1. “Logical about” is not “logic.”

          Engineering (you know that thing), is also “logical about” – and you seriously are not considering they anything related to engineering should be off limits to the patent system, are you?

          Or do you want to continue to dissemble like you have been like for the past decade…?

          (Yes, that last question was rhetorical, and is more a comment about the “ecosystem”)

          1. Engineering (you know that thing), is also “logical about”

            Logic is everywhere! Yes, it’s true.

            That’s part of the reason that logic isn’t eligible for patenting.

            Just so nobody is confused by your dust kicking (and let’s face it: pretty much nobody is except for the perpetually confused choir you are preaching to): I’m not suggesting that new compositions, machines and devices that are “engineered” are not eligible for patenting. Not even close.

            But keep pretending otherwise if it makes you feel better. The sky might seem to be falling from your perspective. But in reality, all that’s happening is that a curtain that should never have been opened is slowly being drawn closed again.

            1. One of the reason that logic isn’t eligible for patenting.

              Great.

              Now I we can get you to stop dissembling that software is logic (because, as you know, it is not).

            1. Your categorization of people dodges the point that you aren’t discussing the actual claim at issue. I cannot be a maximalist if I believe that 112, 102 and 103 can handle each of the judicial exceptions applied to 101 to knock out the same exact claims that you dislike. You’re just wrong about 101.

              1. I cannot be a maximalist if I believe that 112, 102 and 103 can handle each of the judicial exceptions applied to 101 to knock out the same exact claims that you dislike.

                Well, this claim managed to squeak by 102 and nobody disputes that prior art tables comprised pluralities of cells where those cells referenced other tables or cells in other tables.

                Was there some reason to believe that a table couldn’t comprise a cell that referenced another cell (or cells) in the same table?

                Did someone suggest that it couldn’t be done because it would violate the First Law of Table Operations or something like that?

                Obviousness would seem to present some rather severe problems for logic, particularly functionally claimed logic. But maybe these inventors were super d00per revolutionaries who changed the way people do things.

                Oh, right: except Microsoft doesn’t infringe. Oops.

                1. Nice dust-kicking Malcolm.

                  But for all your whining, it appears that you only make “I invented that”s case.

                  Just because the other avenues were not tried here does NOT mean that those other avenues would serve their function without the mis-application of 101 according to your desired ends.

                2. So, because you can’t find a 102 anticipatory reference, you must pull out the 101 “kill everything and let God sort ’em out” stick? You even admit that obviousness could be an issue, but I guess actually finding the art is too hard.
                  I think your analysis simply confirms that the current 101 jurisprudence is based in laziness.

                3. Misusing and misshaping one section of law to attempt to do the job of a different section of law should be anathema to any and all attorneys who respect the law and the rule of law.

                  Those who understand that innovation cannot be known a priori readily recognize that 101 must be written in a wide open welcoming gate manner.

          1. Well… it really is, though. (As do all of the independent claims, which present different statutory classes but identically structured claim bodies.)

            The claims in this case have two functional elements: “configuring said memory according to a logical table” (i.e., store the table), and “indexing data stored in said table.” Really, that’s it for functionality. Almost the definition of generic language in the software arts.

            The rest of the claim – which the Federal Circuit explains at length – is this:

            > 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; …

            There’s absolutely nothing functional there. It’s 100% about the structure and logical relationships of the fields.

            It is certainly an interesting idea, and well-distinguished from normal-form relational databases. But this *is* about the storage and formatting of data, not its use.

            On the one hand, I’m very pleased to see the Federal Circuit unequivocally state some basic truths about the computing arts:

            1) Software is not just not categorically exempted from eligibility; it is a first-class citizen in the set of patent-eligible technologies, on par with computing hardware.

            2) In many cases, software and hardware not only functionally equivalent but fungible, so one cannot assert different legal principles for these two fields of technology.

            3) The mere fact that claim elements are software does not render them per se abstract, so Step 2A of Alice (which the opinion incorrectly describes as Step 1) cannot be skipped using a basic observation that the elements may comprise software.

            All well and good, and absolutely needed to be asserted. But on the other hand… was this a good case to make those arguments? In view of that claim above, which actually doesn’t involve software (beyond two very minor functional limitations), but simply data formatting?

            This is the type of claim that I’d have presumed to be easily invalidated under Alice (as well as the printed matter doctrine of ages past). And I wonder whether the nature of this particular claim will prompt en banc review.

            1. Points (1) and (3) are conclusory baloney, nothing more than the CAFC sending a shout-out to its perpetually coddled children.

              As for (2): In many cases, software and hardware not only functionally equivalent but fungible, so one cannot assert different legal principles for these two fields of technology

              In “many cases”, they’re not “equivalent” at all and, in fact, they’re about as different as two “things” can be. “Fungibility in some cases with some other distinct eligibile subject matter” has never been proposed as a test for eligibility. And it’s never going to be a test for eligibility.

              1. “Fungibility in some cases with some other distinct eligibile subject matter” has never been proposed as a test for eligibility. And it’s never going to be a test for eligibility.

                You do know what fungible means, do you not?

            2. David Stein, “This is the type of claim that I’d have presumed to be easily invalidated under Alice (as well as the printed matter doctrine of ages past). And I wonder whether the nature of this particular claim will prompt en banc review.”

              David, I am glad the court has come around to this view. Now they have to go back and fix Versata. The claims in that case were not about price calculations so much as about improvement data processing methods that vastly sped up the time for determining price.

              1. Ned, I agree that we absolutely need more positive guidance about Step 2B.

                Too many examiners are still ostensibly applying Alice by ginning up a three-word oversimplification of the invention (“the claims are directed to the invention of calculating and storing data”) – without identifying which claim elements that oversimplification encompasses – and then tacking on a summary dismissal with a blanket statement that the rest of the claim doesn’t provide “significantly more.” Full Stop.

                The really old-timer prosecutors, those whose experiences date back to the 80’s, describe the old examination system as little more than a set of checkboxes: “Claims ____ are [ ] ALLOWED [ ] DENIED.” It’s troubling to see some patent examiners engaging in the same process today, and just dressing it up with pages of boilerplate MPEP citations.

                1. Yeah, David, the OA’s of old listed the references like they do now, and OAs were written by hand in small boxes like this, A v. B, under 103. I think typewritten OA’s began when the PTO “modernized” and bought some word processing systems. But it was not until the ’90s when the examiners were given their own PCs that the reasoning behind the OAs began to be written down.

                  So you see, the “quality” of OAs seem to track the availability of those dastardly computer resources.

                2. Ned,

                  That clearly is NOT the meaning of what David provided.

                  Stop playing like Malcolm – it is not becoming.

    1. Software is not logic – but you already knew that, didn’t you pumpkin?

      Didn’t you learn that from your attempt to protect a different aspect of software with copyright…?

      😉

      1. Software is not logic

        And now the l y i ng.

        Too funny.

        Nobody can see your self-serving l i e s, “anon”! We’re totally not paying attention, as far as you know.

        LOL

          1. Well, somebody’s not telling the truth because there’s skilled people all over the Internet saying that software is logic. They even name their products “logic this” and “logic that.”

            And then there’s you saying the opposite.

            Gosh, it’s like some sort of credibility context. Who will win, I wonder?

            LOLOLOLOLOL

            1. “skilled people all over the internet”…

              LOL – those lemmings are NOT the standard of IN THE ART, and your rather kindergarten approach of “B-b-b-but they use the word ‘logic'” just does not understand how that term is differently used in the different context.

              Or did you already know this and just want to continue dissembling like you have been for a decade now?

              1. “skilled people all over the internet”…

                LOL – those lemmings

                Oops, I forgot: patent maximalists are the most important people in the world! People who write software for a living just don’t understand. If only they would just bow down and worship their masters, all these problems would go away.

                1. Moe of that vap1d and empty “most important” short script….

                  Maybe try to reply with something, Malcolm.

                2. Moe of that vap1d and empty “most important” short script….

                  Says the deeply serious super important guy who knows — he just knows it! — that everybody else in the world is a “lemming.”

                  LOLOLOLOLOLOLOL

                3. More of that vap1d and empty “super serious” short script….

                  Maybe try to reply with something, Malcolm.

    2. People who push obviously false (scientifically so) claims like “software is logic” should be disbarred. Your statement MM is as nonsensical as me saying the chair I am sitting on is static equations (which aren’t patentable.)

      Just outrageous that people just push this nonsense to the uneducated masses. You should be ashamed of yourself MM for being an unethical.

        1. Who says MM is a member of any bar?

          We’ve got super serious people here, folks. Very thoughtful and filled with very, very deep insights.

          We have to pay attention to them. They’re very important. After all, without them and the super awesome innovations in logic that they know just must — must! — be eligible for patenting, the world will stop turning, nobody will write new software, and we’ll all revert some iron age civilization like the Amish. After all, they told us so! And they’re very serious indeed. Totally not self-interested hacks.

          1. And right on cue, the short script of “serious”….

            Great ecosystem Prof – Malcolm being Malcolm is just A whole different matter…

          2. MM – There’s zero slight in my question. Are you a member of legal bar? Are you a member of the federal patent bar? I’m not as up to speed on your background as others on this blog.

            1. 6 claims to know who Malcolm is.

              (Doubtful, of course)

              Prof. Crouch DOES know who Malcolm is.

              (as he does with every single poster – if he so wanted to know – but certainly those posters of any vintage that have been around at least through the attempted-Ecosystem-betterment of the DISQUS era).

              Frankly, I don’t care one iota who Malcolm is.

              On the other hand, his rampant and long standing blight of the manner in which he posts – that is a different story.

              Do you know that on the last attempt at “Ecosystem-betterment” it was shown that Malcolm has been employing the same noxious tactics since February of 2006? From the very start !

              That’s a solid Decade of Decadence.

              So Iit, when you attempt to “reason” with Malcolm, just remember that you are dealing with someone who simply does not know or recognize reason – and simply will not change.

        2. He did.

          Perhaps impliedly, as no reasonable person maintains they are an attorney and are not a currently active bar member.

          To do that would be dishonest at best and at least unethical.

          Besides, Prof. Crouch knows who he is, and surely (or is it Shirley..?), Prof. Crouch would not brook such deception, would he?

          1. Remember folks: this bizarre speculation is totally not a silly sideshow to avoid directing attention away from a completely unsuppportable position. Nope! These are very serious people and they’d never play those kinds of games.

            Software is logic. Of course it is.

            Programmable digital computers carry out information processing logic on information, according to instructions that are written in a language that the computers in question are designed to accept. The instructions tell the computer how/when to perform specified data processing actions in response to received information. That’s logic.

            1. speculation….?

              In what way?

              All I am doing is pointing out what you yourself claimed.

              And then pointing out the problem that necessarily stems from that very same claim.

              What you are attempting to define as “logic” just is not so. Your “software is logic” suffers the EXACT same fault as those whom would characterize software as math.

              You cannot obtain a copyright on math – nor on logic.

              Further, your characterization falls FAR FAR FAR short in that “logic” as you are using that term, would deny ALL engineering disciplines the opportunity to enjoy patent protection.

              Quite simply, directly and unequivocally, Malcolm, you are wrong.

              1. “anon” your characterization falls FAR FAR FAR short in that “logic” as you are using that term, would deny ALL engineering disciplines the opportunity to enjoy patent protection.

                Doubling down on the nonsense really doesn’t help you, “anon.” Your strawman wrestling is barely amusing.

                You cannot obtain a copyright on math – nor on logic.

                But you can certainly copyright certain expressions of math and logic. It’s not clear why you think this is relevant to the discussion, and it’s even less clear why you think it bolsters your position with respect to patents that protect math and software.

                As everyone knows, the problem with the computer-implemented patent claims that you l0ve is so much is that they either come nowhere near describing the “things” (<— adopting your position, purely for the sake of argument) that actually work, or they are just examples of ancient logic "scrivened" into a new context where everything is shiny and new again because … "investor expectations!" And that's never going to change.

                But I'm curious — are you giving up now on defending Alice-type junk? Is this "improving the computer" turf where you're "staking your claim", if you'll pardon the expression?

                1. …and yet more of the same AccuseOthersOfThatWhichMalcolmDoes….

                  You really do need a different script, Malcolm.

                  Show me an expression of math that earns copyright – and please, do not dissemble and try to move the goalposts to a book of math – we both know that the copyright there is in a different aspect than the math itself.

                  As to some projected sense of “shiny and new because of investor expectations, please do not attempt to twist “things” into something that I have never stated.

                  As to “re you giving up now on defending Alice-type junk? – another rhetorical “twist,” as we both know that I am not “giving up” on something that I do not engage in: the “defending” of your “Gee, look at this bad claim” game. Maybe – just maybe – you will focus your energies on tackling the substantive law that I DO discuss, and address the counter points at that level, someday.

                  Of course, that will demand a different “logic” from you and you will have to put away your tired and rather vap1d short script.

                  But given your celebrations of a Decade of Decadence, I will not be holding my breath.

                2. Show me an expression of math that earns copyright – and please, do not dissemble and try to move the goalposts to a book of math

                  He’s very serious, folks! Totally not a hack.

                3. Deflection with the empty “serious” rhetoric….

                  Y
                  A
                  W
                  N

                  You just have got to do better than that Malcolm.

      1. Got that, folks?

        Asserting that “software is logic” is “nonsensical.”

        So say the people who insist that software must be eligible for patenting. They’re very serious! We have to pay attention to them.

        1. Under MM’s view of logic, every method that involves a structured decision process is unpatentable. Then, of course, every method implemented by a designed circuit would now also be ineligible under 101 according to MM. Such clear misrepresentation of law (and btw ignorance of the nature of technology) is the sine qua non of malpractice and unethical misrepresentations. Most likely, though, MM is not a patent lawyer, which would explain a lot.

          1. K Under MM’s view of logic, every method that involves a structured decision process is unpatentable.

            Wow. Beat that strawman! Watch the straw fly!

            Does it make you feel good? Apparently it must.

            every method implemented by a designed circuit would now also be ineligible under 101 according to MM

            Just claim the circuit itself, in objective structural terms, then you needn’t bother with the method claims.

            Oh but wait! That’s “difficult”. And “expensive.”. And that claim
            “wouldn’t be worth anything”. People could “design around it.” And it’s not something that would be easy for a speculating b0ttom-feeder to sit at home and scriven up.

            So let’s just make a gaping exception and let you claim pure logic, with a few magic words tossed in, and watch the system implode.

            1. The only “strawman” Malcolm is the one that you are concocting in order to NOT recognize a fundamental fact of reality: software is merely a design choice with equivalences (in the patent sense – and yes, to forestall the deceptions, this does NOT mean “the same as”) of hardware and firmware.

              1. software is merely a design choice

                Sure it is! You could build a computer from scratch that does nothing except re-calculate the space you need for the next ten years of Justin Bieber CD releases based on his annual production rate, or you could write a program that does it for you.

                Just a “design choice.” Right.

                1. Brush away the (merely attempted) ad hominem, and there is no point in your reply, Malcolm.

                  Maybe you want to try something different – something that actually addresses the fact that software IS equivalent to (and note the patent sense here and that this is not “the same as” that is being required) hardware and is equivalent to firmware.

                  The definition and use of “wares” should be giving you an ample enough clue – but you are going to have to unclench your eyes and approach this in an inte11ectually honest manner in order to grasp that clue.

                2. The definition and use of “wares” should be giving you an ample enough clue

                  Houseware is equivalent to software. Got it.

                3. “You could build a computer from scratch that does nothing except re-calculate the space you need for the next ten years of Justin Bieber CD releases based on his annual production rate, or you could write a program that does it for you.

                  Just a “design choice.” Right.”

                  … Malcolm, was this purely facetious or do you not know about FPGAs? I know your lobbying area is primarily pharmaceuticals, but are you really that ignorant of computer hardware?

                4. but are you really that ignorant of computer hardware?

                  Yes.

                  (in about as short and declarative sentence as possible)

        2. Certainly software contains logic. But the two are distinguishable. You can buy a software product and you can transmit that software over a wire. Logic is not a product, nor is logic capable of transmission over a wire. These are facts.

          1. Iit,

            He is not addressing that difference of being “applied.” Just like – nearly exactly like – the plain fact that “math” is different from “applied math” (otherwise known as engineering) – and also different from the philosophical MathS – a tale for another day, or you can peruse the archives at your leisure.

  15. And so the 12 step recovery from Alice-abuse accelerates. First the PTO guidance on May 4 and now this. Very salutary. Only 10 steps left to go.

    Of course, law without limiting principle such as jurisprudence based on an undefined concept can never stand for long any more than constant drinking can be maintained for long. For the software patent haters: lie down, take two aspirin, and drink nothing but soda water for the next little while.

    1. “Accordingly, 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, embodied in the self-referential table”

      I am not sure that is good news for software. Some of it is for sure. But, all this does is put us at the technological test of the EPO.

      1. Were you surprised to see that mental processes were never discussed in the opinion? I think distinguishing software claims from natural phenomena, fundamental economic practices, and mathematic formulas is fairly straight forward. Distinguishing them from mental processes is much tougher. I wish they would have at least brought up the mental process doctrine and explain why it doesn’t apply here. By the way couldn’t the “means for configuring” be a human?

        1. Mike,

          Guess what I have suggested about that very same “mental steps doctrine”….?

          Do you really think that an honest and full discussion of a doctrine that is now being misshapen (like a nose of wax) and bears strikingly little resemblance to its original intent would be forthcoming on this blog? Especially when the “favored narrative” would have to drastically change?

          (do not hold your breath)

        2. Mike, if the meaning of something is part of the claim, I think there might be a problem. Here, meaning is not part of the claim or the invention.

          An OID is a pattern, like XXXYYTT. Could be anything. The illustrations shown in the opinion uses sequential number. But the claim does not require that. All that is implicitly required is that each OID be different.

    2. lie down, take two aspirin, and drink nothing but soda water for the next little while.

      These little steps backward are just part of the process. The trajectory hasn’t changed.

      The redoubtable efforts of the CAFC to drive the eligibility goalpost into the ground at “improvements in computer logic” isn’t exactly helpful to the tiny community of vociferous maximalists who dream about reversing Alice and Mayo. That unpleasant fact may have escaped your attention but it hasn’t escaped the attention of others.

  16. This is the technical test at the EPO that should be applied at step one of Alice. So, the way to think about what just happened is that now the technological test puts you away from Alice, but all the other stuff (such as business methods) must still go through Alice. So, this is a giant help.

    In this case, however, 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. Accordingly, 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, embodied in the self-referential table

    1. We do not read Alice to broadly hold that all improvements
      in computer-related technology are inherently
      abstract and, therefore, must be considered at step two.
      Indeed, some improvements in computer-related technology
      when appropriately claimed are undoubtedly not
      abstract, such as a chip architecture, an LED display, and
      the like. Nor do we think that claims directed to software,
      as opposed to hardware, are inherently abstract and
      therefore only properly analyzed at the second step of the
      Alice analysis. Software can make non-abstract improvements
      to computer technology just as hardware
      improvements can, and sometimes the improvements can
      be accomplished through either route. We thus see no
      reason to conclude that all claims directed to improvements
      in computer-related technology, including those
      directed to software, are abstract and necessarily analyzed
      at the second step of Alice, nor do we believe that
      Alice so directs. Therefore, we find it relevant to ask
      whether the claims are directed to an improvement to
      computer functionality versus being directed to an abstract
      idea, even at the first step of the Alice analysis.

    2. The “divide and conquer” that you worry about between Pharma and electronic/software is “not ok” with you, but the “divide and conquer” between technical arts and anything else in the Useful Arts is…?

      Please tell me that you are not being infected with the Ned “6-is-an-Einstein-because-he-agrees-with-me” syndrome.

      1. anon, :). You are correct that the “divide and conquer” should bother me. But, doesn’t change my analysis of what this is. You are right, though, that Taranto is going to use this as legislation for a technical test. just give short shrift to anything that fails this test.

        No doubt this is another giant leap backwards.

    3. the plain focus of the claims is on an improvement to computer functionality itself

      It’s logic, applied to data tabulation.

      1. “It” doesn’t matter what it is so long as it is any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. I’d say that it’s an improvement for a process or a machine. Is it new? That’s for 102.

        1. iit “It” doesn’t matter what it is so long as it is any new and useful process,

          Well, that’s absolutely incorrect and not even worth arguing about.

          Got anything else?

      2. “…logic, applied to…”

        Software is not logic.

        (that little thing about “applied” has a MUCH bigger impact than you want to let on)

        But thanks for stopping by and dissembling yet again.

        1. Software is not logic.

          LOLOLOLOLOLOLOLOLOLOLOLOLOLOL!

          Like I said: these people will do and say literally anything if they think it will prevent their little universe from slowly swirling down the drain.

          Let’s just continue to watch it swirl and have a laugh. After all, it’s almost Friday.

  17. If this case is right, and I think it is, then the decision in Versata was wrong. They cannot be reconciled.

    Versata’s invention was directed to improved software that vastly sped up a prior process, albeit to produce the same price calculation as before, but sooner. Such improvements are technological.

    1. The result is correct.

      The reasoning, at least so far as it is presented in the article above, is absurd.

      1. The result is correct.

        The reasoning, at least so far as it is presented in the article above, is absurd.

        Attorneys, ladies and gentlemen.

        1. Random,

          Do you not seem able to fa thom what the expression “The ends do not justify the means” may mean?

          Not saying that such is what Les is actually doing, but your “re bu ttal” is a mere shade of that phrase.

        2. Random – I don’t understand the point or comment you are making here. Please spell out the point you are trying to make.

  18. This is an odd one for them to be making a “statement.” Pfaelzer already said in her underlying opinion that she was in no way saying all SW is “abstract.” In fact she was one of the few reasonable D Ct jurists (Hughes/CIT) before she passed away on the 101/SW interplay.

    Taranto continues to befuddle with his inconsistent mindset. Here he signs on to an opinion which says

    “we are not persuaded that the invention’s ability to run on a general-purpose computer dooms the claims”

    yet just the other day in another case during oral argument he chastised the inventor and told him unequivocally the SCOTUS said such creatures were categorically unpatentable

    to a person they all seem to be playing one giant pretzel logic game where they pretend they know what are doing, when in fact not a one of them has any clue how to decipher the nonsense “abstract idea” foisted on us by the patent-clueless 9

    1. To be very fair to Judge Taranto, he is one of the judges whom I have heard explicitly acknowledge during oral arguments that he finds the new Alice requirements confusing and hard to apply. In other words, he is not “pretend[ing he] know[s] what [he is] doing.” He freely acknowledges that he is largely at sea with the new law.

      It does not work, when you have to decided an actual case in front of you, however, to throw up your hands and say “I do not know.” You can hardly blame them for not putting their frustration with this muddle explicitly into today’s opinion.

      1. Honestly, the fact that Judge Hughes authored this opinion was the most surprising aspect. I had gotten the impression that he was a thorough-going software skeptic. I see that I was wrong, because you certainly cannot say that this opinion was merely compelled by precedent.

        1. Greg, He concurred in the 101 holding in Versata, so this represents a sea change in his views.

          I can only hope that I had something to do with this as I have been arguing here and elsewhere that Versata was wrongly decided because the improvement in Versata was an improvement in software processing that made the price calculation faster. Given that no one can mistake me for a rah-rah pro business method patent kind of booster, I can only hope that someone who read my posts began to understand why Versata was wrong and why improvements to software processing can and should be patentable.

          This is literally a great case, IMHO. Landmark.

      2. Ned, if you will notice, I said he signed on to the opinion, not that he wrote it – but one wonders, if he believes what he said just a few days ago, what kind of cognitive dissonance is he practicing

        1. JNG, something has changed his mind. It looks like the judges had a real heart-to-heart discussion on this issue, and Versata, I hope.

          Landmark case, here.

          1. something has changed his mind. It looks like the judges had a real heart-to-heart discussion on this issue

            I don’t think anything has changed.

            To this panel, the claims in this case just looked more like those at issue in DDR relative to those at issue in Alice (or the reams of similar computer-implement junk that are tanked by the CAFC every week with Rule 36 opinions). I’d say that in some ways, these claims are “better” than DDR for the purposes of the discussion, at least in terms of the “pure” generality of the “improvement” in tabulation logic that’s described.

          2. Also, Pfaelzer specifically said she was imposing the presumption of validity to 101, which is something most other courts are NOT doing. Why could they have not have made SOME kind of illuminating comment there to harmonize this? Its like Russian Roulette depending on which judge you get (although I suspect the opinions are results-oriented)

          1. What was the context?

            Maybe something about housewares…?

            😉

            Oh, you mean that only other people should be concerned with context, eh?

    2. JNG they all seem to be playing one giant pretzel logic game

      That seems inevitable when discussing a self-referencing table.

    3. JNG: “we are not persuaded that the invention’s ability to run on a general-purpose computer dooms the claims”

      yet just the other day in another case during oral argument he chastised the inventor and told him unequivocally the SCOTUS said such creatures were categorically unpatentable

      What case are you referring to? What was claimed?

      Certain acts performed on a computer are “categorically unpatentable.” Nothing in this case changes that fact.

        1. JNG: if it just a program that runs on a ge neric computer, its not patent eligible.

          Well, Taranto’s right in the sense that “process this information content, using a ge neric computer programmed to perform that processing” is going to fail 101 if the right arguments are presented and if the CAFC is following Alice and its own precedent.

          Taranto’s position — and I’m not defending it — is that the type of information processing logic claimed here is “different” from those “ge neric computer” type claims because it “improves” “computing” across the board, as opposed to merely describing a “new” data processing use for a pre-existing computer (e.g., a computer using the “old” table “structure” that don’t “reference themselves”).

          Soon enough, the CAFC will recognize the wall they’ve backed themselves onto. Then they can decide whether to dig a new tunnel or just wait gracefully for the firing squad to do its work.

        2. That’s not Taranto. Reyna, Wallach, and Hughes are on that panel. Wallach and Hughes are speaking at the time you reference. Hughes seems to be the person you are talking about, but you are not correctly characterizing his statement.

  19. The middle paragraph of pg. 11 (partially quoted above) is obviously correct – software is essentially a method, and not all methods are abstract ideas. But the court picks a pretty terrible hill to die on here, because while it’s true that the claims are not “a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation” it’s really hard to argue that “considering information in a unified manner rather than a series of segregated pieces of information” isn’t an abstract idea, and the claims are just a general-purpose computer tacked on to that.

    There’s also no analysis as to why it meets the “computer functionality improvement” test, either. I mean obviously it has utility, but this isn’t a utility challenge. If utility was sufficient to get you out of Step 1 of Alice we’d have no Alice procedure at all. I love the dividing line the court makes: “Here, the claims are not simply directed to *any* form of storing tabular data, but instead are specifically directed to a *self-referential* table for a computer database.” As if distinguishing between “self” and “other” is anything other than an intrinsic idea act.

    In short – right legal idea, wrong application of it.

    1. Software is NOT a method and it is about time that “mode of ease of discussion” is put to rest.

      Execution of software is a method.

      There is a very real and fundamental difference – notwithstanding the fact that an invention may be fully capable of being described in the different statutory categories and that it is merely easier to talk of software in “action” terms.

      A problem (of course), is that the difference in reality (and well known to PHOSITA) is that certain ideologies use the “ease” to introduce obfuscation and FUD.

        1. “writing” is a form of manufacture.
          “for a computer” means that the manufacture is a machine component.

          You are doing that “leaking” thing again, Malcolm.

      1. Again anon, the only manner in which you can validly describe software is by reference to algorithm, which is a series of steps.

        Riddle me this – if you’re right in the patent law context, why is it that Claim 17 (a system claim) was defined in claim construction as being drawn to four method steps, and that construction was upheld by the CAFC?

        Like Les always does, you’re arguing about the real world without reference to what the patent law requires, which would be fine if we were discussing something elsewhere than a patent law blog. Software is obviously a “thing” while the execution of software is a “process” but under patent law, the description of the “thing” requires definition by “the process that will occur.” It is impossible to draw a valid system or CRM claim that doesn’t include the method claim constructed in it.

        1. It was not the Claim 17 system that was construed as being drawn to four method steps. It was the “means for configuring” that was drawn to the four method steps. The claim as a whole requires more than just the configuring means.

          1. It was the “means for configuring” that was drawn to the four method steps.

            What’s the corresponding physical structure of those steps?

            Answer: there isn’t any, at least none that can be objectively deduced from the recited steps.

            1. “What’s the corresponding physical structure of those steps?”

              A processor configured to perform those steps…. as anyone of even just ordinary skill in the art would understand after reading and understanding the specification.

                1. What level is required? Remember, the PTO whines constantly about the excessive length of patent applications. Accordingly, we provide only the level of detail required to allow one of ordinary skill in the art to make and use the invention without undue experimentation. And we do that in the specification, not necessarily in the claims. The claims are more of a finger print, something to compare things to (in the prior art and in the future art) to see if they are examples of the claimed invention.

            2. You don’t need a corresponding physical structure, you only need corresponding structure, and the structure itself can be algorithm. Meaning no hardware needed.

        2. “Like Les always does, you’re arguing about the real world”

          ROFLPIMP

          Well excuuuuuse me, for being so reality based…

          In the future, I’ll try to go through the looking glass once in a while….

          1. The fact that you don’t see it as a problem IS the problem Les. You routinely give a “thing” that, to you, *should* be patentable, and then discuss the thing absent claims, as if the law is applied to the thing and not the claims put before you.

            You can create a concrete cotton gin, and some more particular claims drawn to it may be eligible, but other claims drawn to a wider scope may be drawn to a field or an abstract idea. That doesn’t make the gin eligible or ineligible, it just makes your claims eligible or ineligible.

            Making a cotton gin doesn’t mean I’m entitled to any scope which encompasses my cotton gin. The Wright Brother’s plane doesn’t entitle me to any scope I want covering their flight-related discovery. The concrete thing in the world and the legal claim are not the same thing. Anon was doing the same thing you do – talking about the real world software and ignoring the fact that the only way to receive a patent for software is to disclose the algorithm method steps that the software runs.

            One cannot validly claim novel software without disclosing a method. Software claims are inherently method-based claims, even when they are put into system or CRM form.

            1. As long as the courts are making ridiculously broad pronouncements such as : a machine for doing something we have declared to be an abstract idea is also abstract, I have license to respond in kind.

            2. “One cannot validly claim novel software without disclosing a method. Software claims are inherently method-based claims, even when they are put into system or CRM form.”

              Fair enough. But a method WAS disclosed in Alice and recited in quite a bit of detail in the claims. It still got 101’ed…

              1. The funny part I see in Alice is that most of the claims therein didn’t actually recite the steps as being performed by a computer, the computer was read into the claims.

        3. Again anon, the only manner in which you can validly describe software is by reference to algorithm, which is a series of steps.

          First, this is not true**, and second, you are confusing the easiest way to understand as being something that it is not.

          The execution of software is not software.

          You really must be able to grasp this fundamental fact if you want to partake in a discussion in any meaningful way.

          ** I have poked Malcolm in the eye previously with his penchant for making one optional claim format to be something MORE than merely optional by pointing out that a “software claim” COULD be claimed in purely “objective physical structure” of a disk (or cd) with ALL of the physical structure painstakingly (and mindnumbingly) recited in a single claim that would stretch for tens, hundreds or even thousands of pages. Such WOULD satisfy Malcolm’s wayward desire and defeat your supposition here, but would be the epitome of not being able to EITHER be examined readily or understood easily.

          You really need to come up to speed as to why IN THE ART controls the claim form, and why your desire to be lazy AND want to misapply the law for this particular art field simply is a nogo.

    2. Random, the court never got to step 2, finding the claims were not directed to a patent-ineligible subject matter such as a law of nature, products of nature or abstract idea such as price, risk, or mathematics.

      This approach is fundamentally correct. I have been saying this for a while now that step 1 is really an inquiry into whether the claim is directed to something otherwise ineligible.

      Now, computer software that improved the utility of a computer as a tool is technological and is directed to an improvement to machines qua machines. That is the fundamental finding of this court. I strongly approve.

      1. As I said, the approach is fundamentally correct – you don’t always have to get to step 2. Their reasoning and the facts in this particular case do not support their conclusion in step 1.

        The only thing this applicant did is take multiple tables, which previously existed on their own, and knitted them together. It would be equivalent to me saying “I note that the prior art is for work data files to be kept in a folder called ‘Work’ and personal data files to be kept in a folder called ‘Personal’ but I have noticed that you reduce the operating time and increase the efficiency of the computer if you store your work and personal files together in a single folder, as that reduces processing required to access both types of files.” Is it true that in some cases, you increase the speed of the computer by storing files in a single folder? Of course it is. Clearly my “invention” has utility. Does that make my invention a computer-functionality-increasing invention? Not really. My invention is a different manner of associating information, which just happens to manifest in a computer context. So is this one. In other words, this is kind of a case where Digitech controls – the claim is directed to a new association of information, and that is not an eligible act.

        1. Random, it may involve a new association of information, but it is really directed to computer database structures that are ways of organizing date efficiently for retrieval. This is the kind of invention, improvements in the utility of computers as machines, that the patent laws were intended to protect.

    3. Have you analyzed the case cited to for the “computer functionality test”? Analyze that claim or claims sometime to see if they’d be invalid under Alice (hint: they probably would be). Here they are for your perusal:

      5,111,310 (claims 1 and 2)

      1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

      2. The method of claim 1, wherein said blue noise mask is used to halftone a color image.

      5,341,228 (claim 11)

      11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

      These are the claims in Research v. Microsoft, 2010-1037, cited to (indirectly) by the SC in Alice for the proposition of “The method claims do not, for example, purport to improve the functioning of the computer itself. See ibid. (“There is no specific or limiting recitation of … improved computer technology … ”)”. If you follow “ibid”, you arrive at these claims.

      Are these claims patentable under Alice. My opinion is that they are not. Therefore, it’s impossible to interpret what is meant by “improving the functioning of the computer itself”.

      Yet another reason why Alice is so hard to decipher.

      1. PatentBob: it’s impossible to interpret what is meant by “improving the functioning of the computer itself”.

        Oh, I disagree.

        But it is a very silly test for deciding subject matter eligibility. That will become clear to everyone quite quickly.

        1. This may be the first post you’ve made that I agree with….well, all but this part ” That will become clear to everyone quite quickly.” as it has been one of the tests for a coupla years now…

          1. it has been one of the tests for a coupla years now…

            DDR isn’t quite a year and a half old and most claims presented to the CAFC don’t even come close to the sorts of claims at issue in DDR. But that doesn’t stop the plaintiff’s attorneys from insisting that their claims fall within the scope of DDR (and in nearly every instance, the CAFC believes those attorneys are wrong but most of those cases issue as Rule 36 opinions so we really don’t know why those claims aren’t deemed to “improve the function of the computer itself”).

            Now, the claims here seem to me to be more clearly examples of “fundamental” improvements in computer logic relative to the claims in DDR which were, as I recall, more Internet-centric. Had this case come first, I think there’d be a real question as to whether DDR’s claims would fit the bill.

            Regardless, the bottom line is that “improving the function of the computer itself” is not — and can not be — the litmus test for determining whether a description of information processing logic “on a computer” is eligible or not. That’s because, as with everything else, it’s the nature of the recited improvement in view of the prior art that matters, not the utility of the “claim as a whole.”

            1. “That’s because, as with everything else, it’s the nature of the recited improvement in view of the prior art that matters, not the utility of the “claim as a whole.””

              Not in the 101 analysis.

  20. This case will stick in the craw of the anti-software-patent folks. It’s possible that this case will eventually be overruled by the present Supreme Court, but the analysis doesn’t directly offend the teachings of Alice. Can’t wait to see how this decision holds up.

    1. Indeed, I cannot imagine a more emphatic slap-down to the idea that software is ineligible per se post-Alice.

      1. Greg: I cannot imagine a more emphatic slap-down to the idea that software is ineligible per se post-Alice.

        LOL

        The arguments for the ineligibility of software have little or nothing to do with anything in Alice, and there are no counter-arguments in defense of the eligiblity of software presented in this decision. There’s just the usual conclusory statements, built on a foundation of magic dust.

        1. First, zero people (as far as I can tell) on this blog are arguing for the patentability of software in its pure form. The foundation on which pre-Alice decisions were based was the language of Sect. 101 – machine, process, composition of matter, improvements thereof, etc. Those in favor of barring entire categories of statutory subject matter rely on judicial exceptions to this statutory foundation. Clearly the foundation of the actual statutory language is stronger than any judicially created exception. Now, that IS logic.

          1. Those in favor of barring entire categories of statutory subject matter rely on judicial exceptions to this statutory foundation.

            Depends on the subject matter in question.

            Without the baked-in “exceptions”, of course, 101 is a complete j0ke.

            1. But, is anyone here actually arguing that pure software is patentable? I’m not making that argument. Can you point to where someone is making that argument. In each case, I believe the claims that are being argued for patentability are physical objects or methods.

              1. Software per se is not patent elligible under 101. But this depends on what it means to in fact be “claiming software.” Software is not a machine, manufacture, composition of matter, or a process. Take the following example :
                1. Software that when executed by a processor, cause the processor to perform xyz steps.

                In this claim, the software does not fit any one of statutory classes statutory classes. Thus one does not even get to the Alice inquiry.

                But that does not mean that you can’t couch software into one the classes of statutory subject matter by reciting, for example a “non-transitory computer readable medium” having instructions thereon that when executed cause etc. Software when executed causes a process, but software itself is not a process.

                The reason I reference the above is because I think courts and scholars alike incorrectly reference a claim as “claiming software” when the claim does not in fact claim software. A method claim claims a method, an apparatus claim claims an apparatus. If I claim a system comprising a processor configured to perform X process, the claim is still an apparatus claim, not a process claim. I am not claiming a process. I am claiming an apparatus that is capable of performing X process.

                Similarly, if I were to draft a method claim comprising receiving, by a processor, X information, this does not mean that the claim is “claiming a processor” rather, I am “claiming a step” that is performed by a processor.

                I miss the days where statutory classes meant something.

                1. I disagree. Hard drives, dvds, cds, those are manufactures. Software is ephemeral when not tied to a substrate; a hard drive storing software is a manufacture. Which is why you can’t patent a signal but you can patent a non-transitory media that includes the signal.

                2. The thought of software is not software.

                  Software IS a manufacture – your “agreement” is just not necessary.

          2. I invented that,

            “Those in favor of barring entire categories of statutory subject matter …”

            I am sure you are not listening to the people with whom you do not agree. I seem to have to explain my position time and again. Either people do not understand it, or they refuse to listen.

            I rely on the four categories to determine that music is not one of them, that math is not one of them, that risk is not one of them, that price is not one of them, etc. That people nevertheless argue that claims directed to inventions of this ilk are nevertheless patentable is something I do not get. They cannot be serious. There is no support in the statutes or the law for their position. No exclusion is necessary. Music, risk, price, math is not a machine, manufacture or composition. The do not involve methods that improve any of these. They are completely non statutory to begin with. No exceptions are required.

            1. I am sure you are not listening to the people with whom you do not agree.

              Ned doing his best Malcolm impersonation….

              That’s pretty ballsy Ned – or pretty shameless.

  21. So Moore et al seemed to have put all their chips on “logic is patentable.” That’s certainly one way to proceed down the inexorable path with one conclusion. Somebody had to make the call.

    I wish I could find my summary of the oral arguments in this case. There buried somewhere in the archives here. My memory is that Microsoft did not perform well, and probably their briefs were also lacking.

    As for this from the opinion:

    Nor do we think that claims directed to software … are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis.

    Note that there is a complete lack of support for the conclusion. It’s “just so”. The best the panel can come up with is this:

    Software can make non-abstract improvements to computer technology just as hardware improvements can

    Lots of abstract ineligible stuff “can make non-abstract improvements” to existing systems. “Utility” isn’t the test for eligibility.

    1. “I wish I could find my summary of the oral arguments in this case. There buried somewhere in the archives here.”

      Too bad you didn’t store them in a database that has memory configured 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; and means for indexing data stored in said table.

      If you had, you could find them in a jiffy.

      😛

    2. “… did not perform well, and probably their briefs were also lacking.”

      Can anyone guess why this particular defendant didn’t want to perform well on Sect. 101 subject matter eligibility?

      1. He argued that the claisms fail 101 because the claims were “recited in an abstract way.” The second he said that the judges jumped all over him.

  22. the plain focus of the claims is on an improvement to computer functionality itself, not on … other tasks for which a computer is used in its ordinary capacity.

    Like animating cartoons, using a well-known computer and a well-known “data sttructure”?

    The CAFC has been taking its sweet time writing its opinion in that case …

    1. …as long as the Executive Office in its reply to Ron Katznelson and the “Tr011” propaganda justification…?

  23. 17. A data storage and retrieval system for a computer memory, comprising:

    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; and

    means for indexing data stored in said table.

    Setting aside the “OID” limitation for the moment, am I correct that this “logical table” (a distinct class from all the “illogical tables” out there!) reads on a table with four cells?

    1. Clearly it is not intended to be used in a four cell table, but yes, I would agree it READS on a four cell table with nothing but OIDs in it.

      1. Clearly it is not intended to be used in a four cell table,

        Where do you find that “clear intent”? It’s certainly not in the claim.

  24. Sigh…..

    “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.”

    So, if the claims were further limited to require economic data be stored at certain intersections of certain rows and columns, then the claims would be directed to tasks for which a computer is used in its ordinary capacity and the claims would therefore be directed toward something abstract?

    Furthermore, instantiating arrays and indexing data within those arrays is not a task for which a computer is used in its ordinary capacity?

    What utter nonsense.

    But thanks for trying fellas….

    1. if the claims were further limited to require economic data be stored at certain intersections of certain rows and columns, then the claims would be directed to tasks for which a computer is used in its ordinary capacity and the claims would therefore be directed toward something abstract

      If we accept this holding at face value, the applicant in this application could claim an infinite number of specific “downstream” applications for its new and non-obvious “specific data structure”.

      But remember: the application describing that “specific data structure” is now prior art against everyone else. There’s no type of information content (e.g., “economic data”, “grandma’s favorite DVD data”, “cancer correlation data”) that isn’t adaptable to that “specific data structure”. Moreover, an independently filed claim that differed only from claim 17 by the description of some data content would certainly be ineligible according to the exact same reasoning that a claim reciting an old computer database storing “new” medical information is ineligible.

      1. I’m not sure what your point is. But I believe your last sentence is incorrect.

        What apparently made claim 17 eligible is that the index number (row and column IDs) are actually stored in the table. After all, there is nothing new about a grid of rows and columns, logical or otherwise.

        So, the type of data (IDs) stored is what made it eligible. The claim doesn’t recite a special characteristic for the IDs, so, the claim reads on integers (1 for column 1) 2 for column 2 etc…

        If storing integers in a table is eligible, then surely storing medical data of a particular type and in a particular organized pattern in adjacent cells who add an additional layer of eligibility or would be eligible itself in a later filed application.

        1. Les: What apparently made claim 17 eligible is that the index number (row and column IDs) are actually stored in the table. After all, there is nothing new about a grid of rows and columns, logical or otherwise.

          So, the type of data (IDs) stored is what made it eligible.

          Unfortunately, that’s just an argument that the CAFC completely botched this decision (no surprise there).

          If storing integers in a table is eligible, then surely storing medical data of a particular type and in a particular organized pattern in adjacent cells who add an additional layer of eligibility or would be eligible itself

          No, that’s not how it works. According to that logic, any old manufacture for storing information (e.g., a “book”) could be repatented by reciting the storing of some non-obvious information in the manufacture. And we know that’s not true. Information is ineligible for patenting and can’t serve as the basis for distinguishing a claimed information storage process or system from a prior art system.

          1. Your strawman is showing, as you are (again) forgetting the distinction between Set B printed matter and Set C printed matter – that functionally related thingie. 😉

            1. I cannot remember which (B or C) is the one you use to describe the problematic set, but in any case, Les’s example above falls in the problematic set. A claim to a self-referential table that is distinguished from Enfish’s table only in that the newly claimed table contains medical data would surely be dependent on the content of the writing, which is the forbidden no-no in “printed matter” fights.

              I agree that there are claims that recited “printed matter” where the printed matter is given patentable weight, but this would not be one of them.

              1. I did not propose a claim to printed matter. Only a claim similar to the one declared allowable, that arranged medical data in an efficient manner for some medical purpose.

                1. Er, o.k. I do not really understand that response, but perhaps that just indicates that I did not really understand your earlier proposed “storing medical data” example.

                  Please excuse the interruption.

    2. Les, I was about to say something similar. But the point here is that the software problem was addressed and solved, not a problem about pricing or risk or something like that.

      People do their clients no favors when they have a technical invention and limit it to a specific application like computing prices. It only confuses, and that is why Versata lost.

      1. “But the point here is that the software problem was addressed and solved, not a problem about pricing or risk or something like that.”

        That may have been the point, but I don’t understand why data storage problems are fair patent game but price determination problems and risk mitigation problems are not. The distinction is arbitrary and capricious. Data structures are building blocks of what ever…at least as much as hedging is.

        1. Les, the distinction is hardly arbitrary since the basic inquiry regarding step 1 is whether the claims are directed to something eligible.

          Improvements to computers and computer technology is clearly within the four classes.

          Improvements a method of balancing risk, calculating price, math or the like are not within the four classes because risk, price, math, etc. are not machines, manufactures or compositions.

          1. “Les, the distinction is hardly arbitrary since the basic inquiry regarding step 1 is whether the claims are directed to something eligible.”

            Your entering into a whirl wind of circular logic. The arbitrariness is in the declaration that solutions to problems related to pricing and risk mitigation are not eligible but problems of data storage are. They are all human activities… and the claimed table is nothing but “organization” thereof….

          2. “Improvements a method of balancing risk, calculating price, math or the like are not within the four classes because risk, price, math, etc. are not machines, manufactures or compositions.”

            Those are but three of the categories Ned.

            They are METHODS! (which are squarely withing the forth category).

            Are you just yanking my chain?

            1. Les,

              You should be aware of Ned’s predilection of treating that first category as only a sub-category of the other three “drop on your toes” categories.

              He has never accorded full weight to that category as able to stand on its own.

            2. Les, I have tried to patiently explain the history and origin of “Art, process and method” to you. The terms do not cover any steps regardless of what they do. The terms only cover a step or steps that relate in some way to manufactures, which can include machines or compositions. Broadly, Art means using the powers of nature to produce a new result. In Bell telephone, it meant making a modulated electrical signal from sound.

              Surely you do not see the powers of nature at work in improving price, or risk or math. Simply adding the use of conventional items like hammers, nails, generic computers or the internet, or the like to something otherwise unpatentable cannot transform the ineligible into the eligible.

              1. Ned – your version does not accord with reality (your version is nothing more than trying to elevate MoT into more than just a clue).

                Your “patience” is called something else – and it is not a virtue.

              2. “Surely you do not see the powers of nature at work in improving price, or risk or math. Simply adding the use of conventional items like hammers, nails, generic computers or the internet,”

                Not that I accept your teachings Ned, but for the sake of discussion, of course I see the powers of nature (e.g., electricity) at work in a computer implemented method of improving price, or risk or math. Where a computer had not been used to do the particular kind of improving before, we likely have a patentable method and a patentable machine.

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