Method of Selecting Desired Trait from Cell Plate is Patent Eligible

Rapid Litigation Management v. CellzDirect (Fed. Cir. 2016)

In an interesting decision, the Federal Circuit has rejecting a district court Section 101 invalidity finding.  On appeal, the Federal Circuit held that the claimed hepatocyte prep-method was “not directed to a patent-ineligible concept.”

The claim of the ‘929 patent is directed to a method of preparing frozen hepatocytes that can be thawed and re-frozen (at least twice) while remaining viable.  The claimed method is basically an artificial-selection approach of freezing-and-thawing a group of hepatocytes and then selecting the ones still viable.  The claims include a few additional details such as using density gradient fractionation (centrifuge) to separate the viable from nonviable; not plating the cells between the first and second freeze; and using a pooled preparation of hepatocytes from multiple sources. U.S. Patent No. 7,604,929.

After reading the claims, the district court found that the patent effectively claimed the ‘natural law’ that some hepatocytes can survive multiple freeze-thaw cycles.   On appeal the Federal Circuit disagreed with this characterization and instead found that the claims “directed to a new and useful laboratory technique for preserving hepatocytes.”

The inventors certainly discovered the cells’ ability to survive multiple freeze-thaw cycles, but that is not where they stopped, nor is it what they patented. Rather, “as the first party with knowledge of” the cells’ ability, they were “in an excellent position to claim applications of that knowledge.” Myriad, 133 S. Ct. at 2120 (quoting Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office, 689 F.3d 1303, 1349 (Fed. Cir. 2012) (Bryson, J., concurring in part and dissenting in part)). That is precisely what they did. They employed their natural discovery to create a new and improved way of preserving hepatocyte cells for later use.

Here, the court distinguished this invention from others – noting that the claimed application was not an “abstract mental process” but instead directed to a production method.  In trying to draw a line to protect important advances in science and technology, the court added to the oft-stated argument that a true application of Mayo/Alice would decimate the patent system:

Through the recited steps, the patented invention achieves a better way of preserving hepatocytes. The ’929 patent claims are like thousands of others that recite processes to achieve a desired outcome, e.g., methods of producing things, or methods of treating disease. That one way of describing the process is to describe the natural ability of the subject matter to undergo the process does not make the claim “directed to” that natural ability. If that were so, we would find patent-ineligible methods of, say, producing a new compound (as directed to the individual components’ ability to combine to form the new compound), treating cancer with chemotherapy (as directed to cancer cells’ inability to survive chemotherapy), or treating headaches with aspirin (as directed to the human body’s natural response to aspirin).

Method Claim: The court here distinguished this case from Funk Brothers primarily by indicating that the present case is about a method-of-producing while the Funk Brother’s invalid claim was directed to a product – namely a mixture of already existing bacteria. In that case, the Supreme Court expressly stated that it was not addressing the question of whether a method of creating the mixture might be patent eligible.

258 thoughts on “Method of Selecting Desired Trait from Cell Plate is Patent Eligible

  1. Not to take you on, Anon, but to throw in a charged term as “function,” indicates that you are part of the obfuscation. Should 101 be locked into the state of the art when it was enacted? Should it be locked into the concept of invention when our Constitution was enacted?

    101 is the wide door of admission, but must be evaluated by the signs of the times. We must consider, for example, whether an AI computer program can “invent.” I see no problem with 101, but inventorship issues may complicate matters.

    1. Richard,

      Your attempt at “signs of the times” runs smack into deliberate obfuscations of what the different sections of law are geared to.

      Do you understand the timeless nature of 101?
      The statutory categories do not change with time.
      The right type (and degree) of utility does not change with time.

      That is ALL that there is with 101.
      There is NO room for what you seem to want to insert. State of the art is distinct from 101.

      It is NOT me that you are “taking on” – it is the law itself.

      .

      As to this “new wrinkle” of inventorship, we can talk about that separately from the roles of 101 versus the rest of the statute.

      1. When did logic become eligible for patent protection?

        It’s not listed among the statutory categories.

        Tell everyone the answer, “anon”. You’re a super serious person!

        Surely it makes no difference that the ineligible logic is being performed by a prior art computer that was designed to carry out logical processing because — as you just told everyone — the statute is “timeless.” Right?

        So when did logic become eligible for patent protection?

        Oh, and before you try to get clever, remember that ball point pens and calculators are machines, too.

        I’ll cooked up a super huge bowl of popcorn in anticipation of your awesome answer. I’m sure it’ll be awesome because for the past ten years all of your answers to this question (and questions like it) have been totally awesome and super compelling.

        1. Logic? An information processing machine is logic? What? So, you told me before that logic is a writing on a piece of paper.

          You have no ethics or morals or intellectually honesty. You intentionally fabricate nonsense and misrepresent science for your goals.

          Now, MM, tell us what logic is and how a machine can be logic? Please also tell us whether or not other physical things could be thought of as logic in your twisted brain. For example, your twisted brain or a chair.

          1. tell us what logic is

            That’s in the dictionary. It’s reasoning conducted or assessed according to strict principles.

            how a machine can be logic

            A “machine” isn’t “logic”. But a machine can carry out logical operations.

            You could have also asked me “How can a pen and paper be logic”? Or “how can a calculator be logic”? Those would be equally silly questions.

            Let me know when you’re grown up and ready to talk seriously. I won’t hold my breath. In the meantime, enjoy watching more and more of your beloved junky logic patents getting tanked in spite of your (LOL) super serious “questions”.

              1. Anon, A machine that does anything remains a machine

                So?

                Tell me, anon, how many patents on the same machine can be allowed constitutionally within the meaning of the constitutional grant to Congress of the power to secure to inventors the exclusive rights in their discoveries?

                1. Same machine…?

                  Seems like (but you never actually get around to it) that you want to make an inherency argument.

                  Is that what you want to do?

                  (You are forgetting again about that crucial first step in your “just use” canard.)

                2. You attempt a canard with an example from outside of the Useful Arts (music). “Not even wrong” – Wolfgang Pauli is the simple, direct and on-point response.

                  Sorry Ned – that just won’t fly (remember: Person Having Ordinary Skill In The Art)

                  Try a different example. Maybe like “Nazomi v. Nokia” or “In re Alappat

                  (Not like we haven’t been on this Merry GO Round with you before….)

                3. But, Ned, a player piano DOES become a different machine when you adapt it to run the traffic signals at the local intersection.

                4. Fine, instead of a player piano, it’s a machine tool that does not become a different machine each time a new CNC pattern is coded into it. Useful Arts and all that.

                  The notion that a computer is a new machine with a new program is legally dead at both the CAFC and the USSC, although it will never die in these pages…

                5. Sorry Mr. Snyder, but you remain wrong. In re Alappat remains good law.

                  Your (machine tool example has already been commented upon – clearly, you have never actually worked in a machine shop and know nothing about tool wear and optimization of manufacturing elsewise you would not be so glib). But besides that, you are NOT addressing the new capability and you are only exchanging a “different pattern” within the SAME capability – your example just does NOT make the legal point that you think that it does.

                6. To laugh: yes I worked in a machine shop, among my many youthful labors. I understand what a CNC tool does and how it does it. The same tool does different jobs when loaded with different programming. Nice straw job to suggest that I think the whole field of machining is immune to patenting; of course there are many inventions to be had around a shop.

                  Let’s stick to the example- a machine tool and its programming do not make a new machine each time the machine is reconfigured. You may have a perfectly new, useful and fully described way to machine a part- and you may just get a deserved patent on the technique- but you wont be patenting a new machine.

                  What you purport to remain “good law” is utterly removed from actual words coming out of judge’s mouths in the cases reported here.

                7. “Let’s stick to the example- a machine tool and its programming do not make a new machine each time the machine is reconfigured. You may have a perfectly new, useful and fully described way to machine a part- and you may just get a deserved patent on the technique- but you wont be patenting a new machine. ”

                  That is only a point of view.

                  The fact that a new machine has components in common with an old machine, does not mean that the new machine is not new.

                8. Mr. Snyder, you completely missed the second part of my statement.

                  Try again.

                  And then after that, try to open your eyes to the terrain of law (as in In re Alappat)

                9. anon, let me just say this to all who care to listen. For the last ten years I have been trying to get anon to state on the record just what the holding of Alappat was. He will not do that.

                  Instead he declares everyone else wrong about this or that, and relies on Alappat. But it is abundantly clear that anon does not care to know what the holding of Alappat actually was.

                  Judge Rich, however, knew exactly what the holding was and discussed it in State Street Bank. It is not what anon thinks it is. Alappat did not hold that a programmed general-purpose digital computer is per se eligible as a new machine. The reason for that is because it was dicta, and a commentary on the patent offices reasoning. The holding in the case was that the means-plus-function claims covered specific disclosed circuits, and that even if the means-plus-function claim elements could read on programmed general-purpose digital computer performing the recited calculation in each means element, that the claimed apparatus remained a rasterizer of a graphics unit for a display. It was not simply a programmed general-purpose digital computer performing a calculation.

                  However, in his mind, if not in his hopes, anon unbelievably, but predictably, believes that Alappat held that any programmed digital computer without more was a new machine within the meaning of 101 and patentable as such. Clearly, whether or not the patent office understood Alappat or not, this view is consistent with the practice of the patent office after Alappat, which simply asked that applicants recite in their claimed methods, whatever subject matter they were directed to, that they be conducted on a programmed digital computer for the purposes of passing 101. Thus the patent office felt controlled by the Federal Circuit dicta even if it was not a holding. Thus for two dozen years, until Alice, the PTO issued patents for anything and everything so long as one, in the claim, recited a processor.

                10. Ned you are so wrong in so many ways.

                  It is you that refuses to recognize the holding in Alappat, or that a case may have more than one holding.

                  Remember – ANY of the government’s arguments that would have “won the day” but we’re refuted by the court yields a holding.

                  Further, I have not been here for ten years, so you could not possibly have been arguing with me for ten years.

                  The time that I have been here, I have been clear and direct and held your hand through Alappat many many many times – and each time it is you that runs away at the critical point of understanding what that case means.

                11. One simply does NOT need to go to State Street to obtain the meaning of Alappat, and once again you attempts to put words in my mouth that I simply do not need.

                12. anon, since you reference MM’s behavior here approximately 10 years ago, I think that you were posting here at that time.

                  Regarding your hand holding, that is the point I am making here, anon. Despite my requesting you to describe the holding(s) in Alappat, you refuse to do so.

                  As to you point about “dicta,” I am not sure, no I am pretty sure, you do not know what you are talking about, especially with respect to Alappat. As I said, Rich knew what the holding was and paraphrased it in State Street Bank. It was not the dicta that you rely upon.

                13. You assumed wrong, Ned.

                  The ten year mark comes from Malcolm and the last time that Prof. Crouch posted a “gee, let’s make this a better ecosystem” thread (while ignoring the explicit advice I personally gave to him).

                  It was looking back at the full archives that revealed that the blight that is Malcolm has been consistent for over ten years now (ten years this past February).

                  As to hand-holding and you being adamant about my not teaching you the holding, you are also completely wrong. I have stepped through this many times with you and each time I point out that a holding in a case is anything that is necessary. When the government in Alappat took a multi-prong attack, EACH prong generated a holding.

                  What you constantly call “dicta” is not dicta, as it was necessary to defeat one of the government’s arguments.

                  What you :”know” is so absolutely wrong based on your unremitting bias.

                14. Anon, since you clearly do not understand Alappat nor the concept of dicta, let me just explain that the holding that even if a programmed computer were to be substituted for the claimed circuits as means-plus-function equivalents, the claimed subject matter was nevertheless eligible because the claim still was directed to a rasterizer. This is the holding of the court – and it was its self sufficient to address the patent office’s alternative theory regarding a programmed computer being means plus function equipment.

                  When you say the dicta was necessary, it clearly was not.

                  You have never actually addressed the Alappat case in any realistic fashion. You simply refused to address the holding of the case or to even discuss it. This has been going on for generations now. It gets old my friend.

                15. Exactly the opposite Ned – that’s why mentioned that you were employing the AccuseOthersOfThatWhichMalcolmDoes line of CRP. It is you that evidences a lack of understanding of what dicta is and what the government’s argument was that creates the holding in Alappat that you find inconvenient and wish to downgrade into mere dicta.

                  This is nothing more than your “6-is-a-genius-because-he-agrees-with-me” and “enjoy-Malcolm’s-swagger” twist that you do when something aligns with your Windmill chase.

                16. Let me note that Ned still did not answer my question about same machine and his lack of using the proper legal doctrine of inherency.

                  Clearly, the fact of the matter that a machine does NOT inherently have new capabilities created by the addition of the manufacture known as software indicates a fundamental flaw in his legal position.

                  He may not like my asking this question time and again, but he does have a level of control over the repeated questioning: all he has to do is engage the conversation in an inte11ectually honest manner, address the legal doctrine of inherency, and recognize that the ware that is software is patentably equivalent (and yes, let’s nip in the bud the detractors by noting that equivalence does NOT mean “the same as”) patentably equivalent to the other wares such as hardware and firmware.

                  So Ned, instead of kicking up dust, perhaps you would like to engage the conversation and (finally) answer points long presented to you.

                  (Full realizing that this is rather inconvenient for your Windmill chase, I will not be holding my breath for you to answer in an inte11ectually honest manner)

                17. Anon, the computer machine has no new capabilities simply by running new software. If, however, the machine is connected to external devices and controls them, this is not simply a computer doing calculations, but a computer controlling a larger system or process. There, when one changes the program one changes the system or the process, and makes something either new or improved.

                  All your examples of an improved computer actually are examples of a computer used in a larger system or process where the change in the software does affect the larger system.

                18. the computer machine has no new capabilities simply by running new software.

                  Bzzzzt – wrong.

                  Thanks for playing.

                  (You appear to be trying to do that “just run” without first changing the machine with loading software thing again – try to “just run” the machine without that first step and let me know how it goes for you. Maybe you can wave your magic wand, or call upon some witch spells to add the new capability to the old machine without first changing that old machine)

              2. That is correct anon, though a LEGAL CLAIM to a machine doesn’t always remain a LEGAL CLAIM to solely “a” machine. Sometimes a LEGAL CLAIM of this type is rather an attempt to patent the logic itself. As in, the claim itself is an attempt to patent upon the logic itself.

                Ala preemption.

                1. Ala broken scoreboards and mashing of wax noses.

                  (Preemption…? ALL claims preempt – that is what claims DO)

                2. No machine and machine component claims preempt logic either 6.

                  Broken scoreboards remain broken.

                3. “No machine and machine component claims preempt logic either 6.”

                  True anon, but LEGAL CLAIMS to machines and machine components attempt to do so all the time, routinely. Indeed, machines and machine components that exist irl or are imaginary don’t preempt anything at all.

                4. You are capitalizing “legal” as if your “claims” are somehow different than the claims I am talking about.

                  They are not.

                  Your point is simply off.

                  Further, your last comment is also off. ALL claims preempt. That is what they do.

                  What part of “all” are you not grasping?

                5. “ALL claims preempt.”

                  Claims preempt but components do not. Which is what I said if you read carefully.

                  “You are capitalizing “legal” as if your “claims” are somehow different than the claims I am talking about.”

                  I missed that you said claims in your response. Shoulda capitalized it.

                  What I should have said was:

                  “No machine and machine component claims preempt logic either 6”

                  Sure they do, such claims preempt logic all the time. Especially when made in the legal field of patent lawl. It is a routine occurrence and claims are routinely invalidated for this exact practice day in and day out right as we speak.

                6. If you are indeed moving the goal posts to discuss something that I am not discussing, then you need to be more clear.

                  As it is, claims can be classified as to being to any one of the statutory categories. In other words, your actual and direct words – in the context of our actual conversation – simply are not correct.

                  ndeed, machines and machine components that exist irl or are imaginary don’t preempt anything at all.

                  In the context of our conversation, machines DO preempt.

                  In the context of our conversation, machine components (manufactures) DO preempt.

                  Your attempt at playing too coy does not work. You only after the fact want to change the meaning of the conversation to somehow be talking about claim elements and not claims.

                  I missed that you said claims in your response. Shoulda capitalized it.

                  LOL – a better idea: you should read what I write instead of being too eager to play your coy games.

                  And you are still wrong about preempting logic.

            1. “Your “view” necessarily outlaws all engineering”.

              1. quotes around view. what does that mean? its not a view? its some kind of special view?

              2. so you can patent thinking engineering thoughts and doing engineering drawings?

              3. you can’t, so you realized your comment was junk, and followed it up 19 minutes later with “products of engineering”.

              What happened in those 19 minutes? Visited another fav website maybe?

              If MM thinks all products of engineering should be non-patentable, maybe he is just anti-patent? But of course he isn’t, that’s just your favorite brush when you have painted yourself into a corner, as usual.

          1. Good thing then Malcolm that Software is not logic.

            Explain it to your c0h0rts who have filed patent claims describing the claimed software as logic.

            After all, those people are super important. They make the world go round! Surely they know what they’re talking about.

            LOL

            1. See the comment about being colloquial – and as I have often reminded you: context and the Person Having Ordinary Skill In The Art.

              (You know, actual legal principles, and not your cheap short script twistings)

              1. So now your rebuttal is that your super genius c0h0rts are just using the term “logic” in a “colloquial” sense. In their patent claims.

                Sure, that makes a lot of sense.

                LOL

                Like I’ve said before: you guys will say literally anything when you’re backed into a corner. But you’re super serious people! We all have to pay attention to you.

      2. “Timeless nature of 101?” What?, Whoever invents or discovers a new and useful process, machine or compound of matter…?

        “Process?” That hasn’t changed in concept? A computer program is typically a process that is executed by a computer processor. This is a state of the art change in the understanding of the word, “process.”

        So, I discovered my AI computer program at night devised a new and useful program process in the morning, it would seem to me to be patentable under the wide gate of 101, despite SCOTUS divining detail devils. But really, 101 is not a stone tablet.

        1. Mr. Peterson,

          I do not know where you studied patent law, but your views are simply not in accord with the law or the history of the law.

          Further, as I have often corrected others, software is NOT the execution of software. The execution of software may be a “method,” but such is fully covered by the statutory law. See the Act of 1952, 35 USC 100(b).

          There is NO change per state of the art for 101.

          As I have already mentioned, we can discuss inventorship separate from this legal point if you desire, but you really should calibrate your understanding of the law properly first.

        1. Depends on whether you are talking about patent law pre-1952 when Congress had allocated authority to the judiciary to set the meaning of “invention” by common law or after 1952 when that ability was stripped in response to a Supreme Court that was too anti-patent.

          The difference between common law and statutory law is critical to understand for this conversation, as is the history leading up to and including the Act of 1952.

    2. Richard, your comment about an AI making inventions reminds me of a post I made a couple weeks ago that got swallowed by the filter in which we were discussing inventions made by animals.

      Imagine the explorer who discovers in the Amazon a type of spider making an intricate web of superior properties. Not only is material improved, but the design is radically different.

      Is this web a product of nature, a phenomena of nature, the invention of the spider, or the discovery of the explorer? All interesting questions.

  2. @MM

    “Anybody have any thoughts on method claims that purport to cover the use of certain data sources “directly” or “indirectly” for performing a calculation, where the claim fails to recite a specific calculation?”

    Given that I started work when dinosaurs were still to be found in the London area, I am old enough to remember electro-mechanical desk calculators. Very large machines they were, and heavy to carry from room to room. One of the advanced features on some calculators was a square root key, but the ability to calculate square roots was relatively new at that time.

    So would a claim have been acceptable reading: “An electromechanical desk calculator including keys for entering a numerical value, a key for commanding a square root calculation and a display for showing the results of the calculation”?

    Any patent examiner would have required the claim to be amplified with specific detail of the mechanism involved sufficient that the step forward created by the inventor could be understood. And if the inventor had the idea of calculating cube roots as well, it would not suffice just to say that the calculator incorporates a cube root key because that would be a mere idea. It would have been the mechanical detail that converts the idea into a technical reality which could have provided the basis for a (possibly quite broad and generic) patent.

    It is not clear that any different principles should apply now that we have microprocessors and software instead of the mechanical devices still in use in the early 1960’s. The question: “If I were doing this with cogs, wheels and electric motors instead of electronically, would my device have been adequately described and specified?” is one that we and our clients should ask ourselves more often. And if we respond to the answers that we find, it is possible that the scope for Section 101 objections would be reduced because the defined processes or apparatuses would be clearly useful, transformative and patent eligible.

    1. Any patent examiner would have required the claim to be amplified with specific detail of the mechanism involved sufficient that the step forward created by the inventor could be understood

      Would such need be in the claims, or in the specification?

      Our US sovereign simply does not require that CLAIMS be in such “objective physical terms.”

      1. Our US sovereign simply does not require that CLAIMS be in such “objective physical terms.”

        Unless you speak of 112(f), yes they do.

        As to 112(f), even though they are limited to the corresponding structure, the claim itself is truly uninformative of the inventive advance and therefor fails the intended notice function of claims. It is almost like prior practice of yesteryear of simply referring to the invention as described in the specification. The point of the claims is to put the novelty in the claim itself.

        1. You know full well Ned (at least you should), that my comment on this topic is NOT limited to 35 USC 112(f).

          Don’t be a st00ge.

          (Your Windmill Crusade against 112(f) goes without any specific comment, as your lament needs to go to Congress, not me)

        2. Reply caught in filter: Ned CLEARLY I speak of this point of law beyond 112(f).

          Your Windmill Chase against that section of law needs to be taken up with Congress as they (also) clearly do not agree with you (I see that you STILL have not learned your lesson from losing that case).

    2. And ask yourself if this type of rejection is truly a 101 section – or a 112 section.

      Conflation here is quite the issue Mr. Cole. How one arrives at a given ends (the means) is critically important.

    3. The question: “If I were doing this with cogs, wheels and electric motors instead of electronically, would my device have been adequately described and specified?” is one that we and our clients should ask ourselves more often.

      No doubt about that.

      Ask your clients if they know the answer to the question: “Can I claim a new motor merely in terms of its new functionality?”

      Be sure that you know the correct answer first.

      1. Be sure that you know the correct answer first.

        That “correct answer” surely is not one optional claim format being treated as if that one optional claim format was the only “legal” claim format, is it Malcolm?

          1. Why should I “try harder” when you are the one with a (well-worn) incorrect answer?

            The work here that needs to be done, is by you.

            Try harder

            Indeed – just not how you meant it.

  3. We all know one cannot protect an “idea,” but the skilled patent practitioner attempts in claim drafting to protect foreseeable embodiments of an idea. Predicting the future, so to speak.

    Perhaps, in judging patent eligibility, a baseline state-of-the art should be established. Akin to a 103 consideration, it could draw from up-to-date publications as well as formal references. Also, akin to a Markman hearing, it would go a long way down the road to an eventual 103 and infringement resolution.

    In its current state, the patent system is a train wreck.

    1. You missed a fundamental item concerning eligibility: it is not a function of state of the art.

      (You must have gotten caught up in all of the purposeful obfuscation going on)

      1. You missed a fundamental item concerning eligibility: it is not a function of state of the art.

        LOL

        And in other news from Anon’s Fantasy Planet, you can’t “dissect claims.”

        LOLOLOLOLOL

        It’s 2016, folks. And the bl0gtr0ll “anon” is still here, still pretending that he doesn’t get it. Or maybe he really is that d u m b. Who can figure out the answer? It’d be irresponsible to speculate.

        LOL

        1. …says the BIGGEST “blog tr011” of them all.

          Maybe you missed my polite answer to your question on the number of your dissembling posts….

          That AccuseOthersOfThatWhichMalcolmDoes is easily the number one blight on that short script of yours.

          It.
          F001s.
          No.
          One.

    2. Except there isn’t a problem with patent law only the judges that are ignorant of the law and judicial activist trying to burn the system down.

      Scope of enablement.

      If you claim too broad and someone invents something nonobvious within the scope of your claims, then your claims can be invalidated.

      That is the way patent law is supposed to work.

      1. I’m not sure I buy that as a rule, but that’s the interplay of enablement and coverage of claims when it comes to infringement. The law has forgotten equity. As they say in relationships, “it’s complicated.”

        1. Not sure what you mean by “the law has forgotten equity.”

          Do you understand the difference between statutory law and common law?

          Do you understand where equity comes into play?

          1. With the merger of the courts of law and equity in the federal court system, equity is forced out of play in the patent system where form over substance rules.

            The doctrine of equivalents, surely an equitable principle, has been shrunk to a literalism.

            An IDS, once a voluntary form, now is an avenue of forfeiture of rights if not filed to claim priorities. The government for its convenience is setting up a punitive system for the inventor. It is a game not worth playing.

            1. Your “merger” view is just not correct.

              Here is an example of statutory law (through the Constitution SOLELY to Congress) being appropriately shared with the judicial branch in order to bring in equity:

              35 U.S. Code § 283 – Injunction

              The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

  4. Anybody have any thoughts on method claims that purport to cover the use of certain data sources “directly” or “indirectly” for performing a calculation, where the claim fails to recite a specific calculation?

    e.g., “A method of determing a value related to exercise, comprising (a) collecting a first parameter directly from a piece of exercise equipment and (b) collecting a second parameter derived indirectly from a passanger in or on said piece of exercise equipment and (c) performing a calculation using said first and second parameter, wherein said calculation results in said value related to exercise.”

    Seems like ineligible junk to me, and it doesn’t seem that it would matter what kind of old equipment is recited, or whether it’s “wireless” or “remote” or anything else. But there must be tons of junky claims like this out there already, and probably tons more still bobbing along in the mucky b0tt0m of the system.

    1. MM, the claim seems to be stated at such a high level of abstraction that is little more than an idea. If the court is into “abstract” in its traditional sense from Morse, then I would say yes, the claim is ineligible.

      But, trust me, the patent owner will try to read into the claim the details probably disclosed specification regarding the parameters and the calculation so as to make the claim more “definite.” While I understand that the Federal Circuit permits this, or lease has permitted this in the past, is quite apparent that the claims before they are construed are completely incomprehensible in terms of what the invention could possibly be. I do not know how these kinds of claims could possibly pass Nautilus.

      1. Ned: I think it is stated at a high level. Me too lazy to go to prior art. Me thinks no good. Me judge.

        What a bunch of scum.

        What about trying to apply patent law. Scope of enablement. 103 arguments. You know. Law.

        1. Absolutely Night Writer.

          This is nothing more than an “Ends justify the Means” of obfuscating and conflating the different sections of law in order to try to take an “easier path.”

          This per verts the law, plain and simple.

          The Act of 1952 took a single paragraph and changed the law so that there were now different sections of law to handle different things.

          As a result, the section that was fashioned into 101 was meant as a Open Gate and contained two mere things:
          – Fit loosely into at least one of several statutory categories
          – Have the right type and degree of utility.

          Nothing More.

          It is only through the legislating from the bench and the (at times blatant) disregard for the separation of powers that we have this mashing of the nose of wax of 101 patent law.

          The Court needs to be reminded of its one (fleeting?) moment of lucidity from Chakrabarty:

          The unambiguous language of § 101 fairly embraces respondent’s invention. Arguments against patentability under § 101, based on potential hazards that may be generated by genetic research**, should be addressed to the Congress and the Executive, not to the Judiciary.

          …and of course, this:

          What is more important is that we are without competence to entertain these arguments — either to brush them aside as fantasies generated by fear of the unknown or to act on them. The choice we are urged to make*** is a matter of high policy for resolution within the legislative process after the kind of investigation, examination, and study that legislative bodies can provide and courts cannot. That process involves the balancing of competing values and interests, which, in our democratic system, is the business of elected representatives. Whatever their validity, the contentions now pressed on us should be addressed to the political branches of the Government, the Congress and the Executive, and not to the courts.

          ** One can easily fill in ANY imagined danger in place of “patent medicine” that might fit any particular Windmill chase such as “business methods” or “software patents]

          ***That “urging” comes fast and furious from “friends” who are like those feeding an addict. “Briefs” that sidestep any legitimate treatment as “evidence” of a sort.

          Those that wish to elevate the Court above the Constitution and the checks and balances meant to contain ALL three branches are akin to drug pushers. These should be considered even lower than the snake oil salesmen of yesteryear.

        2. NWPA: functional claiming is the basis for the greatest software industry in the world! Without our ideas of what computers could be doing, how would silicon valley implement anything? Scope of enablement!

          1. Bob,

            Can you clarify what you mean by “functional claiming”…?

            Some use that term a bit too loosely and would mean claims ENTIRELY in function.

            Some would include terms and descriptions in claim elements that sound in function (the ones who demand “objective physical structure” throughout a claim.

            What do you mean by your use of that term?

            Thanks

        3. Well Night, it remains my view that O’Reilly v. Morse was a case essentially about section 112, and not about 101.

          But, would you agree, at least in principle, that claiming the idea of doing something without including in the claim any of the novel means or methods actually invented by the inventor for carrying out the idea is claiming in the abstract and therefore in violaton of 112? Such a claim would cover not only the means or methods disclosed, but every other means for achieving the same result regardless that the application does not describe the nor enable them. This is the very definition of a 112 violation.

          1. A LOT of the current mess of 101 would have been avoided if the Court did not try to (implicitly at first and later explicitly) re-write 101.

            The “problem” Ned with 112, much like the “problem” with 103, is that such just do not lend themselves to the mashing of the nose of wax and the legislating from the bench that the Court is addicted to.

            You add to this problem with your treating the Court as if they can do no wrong with the statutory law that is patent law.

            Which is exactly why it is beyond sad that you are the one with a potential case before that Court that has a separation of powers element. You cannot seem to understand that ALL three branches of the government are BELOW the Constitution and that the checks and balances of the separation of powers applies FULLY to all three branches including the Supreme Court.

            Yet you would persist in placing illicit power with them when that merely is convenient to how you would want the statutory law to be.

    2. 8818932 B2

      1. A method for creating a predictive model, the method comprising the steps of:

      determining trends and patterns in electronic data, using at least a first machine language algorithm;

      refining the determination of the algorithm;

      searching for social models that describe the identified trends and patterns using at least a second machine language algorithm;

      verifying causal links;

      constructing at least one model about human node behavior and interactions;

      utilizing the social models to do at least one of the following: validate hypotheses, predict future behavior, and examine hypothetical scenarios;

      automatically updating predictions when new data is introduced;

      using probabilistic techniques to learn hierarchical structure in unstructured text;

      continuously updating a set of themes;

      examining grammatical rules of each component of text;

      matching grammatical constituents to semantic roles; and,

      reorganizing data into clusters of entities with common attributes.

      Not a j0ke, folks. This is real.

      We now you return you to the regularly scheduled programming where “experts” pretend to be “relieved” that stuff is still eligible for patenting. They’re very serious people! We all have to pay attention to them.

      1. every step is a mental process.

        Not so mike.

        While at first sniff, it does appear so, one must remember to step into PHOSITA‘s shoes and not fall prey to the the anthropomorphication trap.

        Phrases such as:

        – using at least a first machine language algorithm;
        – using at least a second machine language algorithm
        – automatically updating
        – continuously updating

        taken by that selfsame Person Having Ordinary Skill In The Art reflect that these steps are NOT mental steps or mental processes, even as the language “sounds in” human action.

        Would it make a difference if the claim states “a machine that…”…?

          1. What changes everything is the requirement to view the claim through the eyes of the Person Having Ordinary Skill In The Art.

            Something you OUGHT to know, but something that never seems present in your short script comments.

            “Go figure Folks.”

    3. How about scope of enablement? And how about finding prior art and making 103 arguments rather than a w@nker saying that he thinks it is easy ’cause he thinks he is smart. I can’t believe that our patent system has been hijacked by such a low life like you MM.

    4. Everyone should notice how MM and Ned do not apply patent law, but rely on the madness of Alice. Sickening that our patent law is controlled by anti-patent judicial activist. These people should take their arguments to the Congress and stop trying to 1ie about science and patent law.

      So, Neddie — the anti-patent judicial activist with no ethics–tell us about enablement.

      1. Night, enablement of what, precisely? As I have often said, if the “what” is known, just naming it or referring to it functionally is all that is required.

        Thus a machine can be made up of a number of parts each known and each described functionally.

        But if the part is new, unknown, one must claim what it is, not what it does.

        1. Ned,

          Your “version” of the law is simply not what the law is.

          You offer a false premise here as some type of misdirection. You echo the optional claim form of “objective physical structure,” and you well should know that such is MERELY an option.

          Much like your other claim form canard, the Jepson style, these options are not – and thus cannot – be the “law” that you wish to be.

        2. Ned, that isn’t the law. That is your continued nonsense. This is your misreading of Haliburton that you know is wrong and overruled.

          Moreover, your analysis of a claim that your brain could do it so it is obvious or land grab is ridiculous and offensive. Machines are being claimed that perform similar functions as our brains. The ease with which our brains can perform a function is irrelevant to building a machine to perform the function.

          Ned, you have this whole anti-patent judicial activist ideology built up that you know is counter to patent law. You are like a sicken$$. Benson is the core of all evi1 in patent law and it is your bib1e.

          1. Night, As usual, and you share this with anon, you say that I am wrong about the law of functional claiming or about Halliburton without ever saying why I am wrong of what the law is exactly.

            We know that prior to Halliburton, that one could employ functionally expressed claim elements in a combinaton, but they were construed to cover the corresponding structure, materials in acts described in the specification. Effectively, 112(f) simply codified the existing law.

            Now when I say that one cannot functionally claim an invention, what I really mean by that is that one cannot get the full scope of the functional claim, but one only gets the corresponding structure and equivalents in any case.

            To the extent that you disagree with this, please say so.

            1. No Ned – the use of terms sounding in function is NOT limited to 112(f).

              We have been over this countless times.

              That you attempt to prevaricate AGAIN is without ethics.

  5. Can we please label these boards the “All MM All the Time” boards? As of when I’m writing this, MM has the top 6 posts from 17.2-19. And none of them have anything to do with the posted topic.

    You keep losing those of us who actually want to discuss the topic at hand. There’s too much noise here to really do that. I’m trying to find any other board to examine. Here’s one:

    link to swipreport.com

    But they don’t allow comments. I keep going there, though, as at least it’s an opinion without the same person posting over and over and over and…

    1. It is clear that Malcolm does not like the topic of this thread and is overwhelm with feelings that he has to compensate in order to show that he is still the (self-appointed) guardian over certain fields of rye.

      Post 13.1 still fits.

      1. Malcolm does not like the topic of this thread

        LOL

        I’m loving the topic of this thread. I pointed this case out to Dennis a long time ago as a far better case for “drawing a line” than Sequenom.

        I’m so sorry that the decision doesn’t fit into yours (and Noonan’s) silly narrative about “everything is ineligible so we have to overturn Prometheus and Alice!!!” Really, really sorry about that.

        LOLOLOLOLOLL

        1. How many off topic posts do you have in your “discussion” here?

          (those would be called “noise” by any reasonable mind – but please continue to LOL away)

          What a putz.

          1. How many off topic posts do you have in your “discussion” here?

            I don’t know. Why don’t you count them all and tell everybody?

            Because you’re a s00per serious person.

            1. The poker tell of “serious.

              Thanks for the confirmation Malcolm, although it was not needed.

              (You might have to take off your shoes to count them)

            2. Since you asked so “nicely” (and noting that PatentBob was NOT the first person making the comment), I did a quick count for you.

              You had posted 16 times up to the point that the comment was first made by tourbillion concerning your “marching and chowder society blog.”

              After that point, you had posted an additional 37 times. That is 53 direct posts by you. As I noted at 13.1, you readily Accuse Others Of That Which You Do.

              Further, the number of my posts that come directly from responding to Malcolm’s nonsense are 24 (not counting today’s posts). That’s a total of 77 out of the pool of 153 comments directly linked to Malcolm noise.

              Do you want to take a guess as to how many of those literally HALF of all posts actually are on point to the Rapid Litigation Management v. CellzDirect case and how many constitute your mere “discussion” noise?

              .

              As previously suggested to Prof. Crouch, this type of carpetb0mbing with repeat monologue short script items CAN be effectively neutralized. Just set up a different page on this blog where such ad nauseam ad infinitum monologues are shunted to.

              All that would take is a grad student and a pizza over the weekend 😉

              And note, one past attempt (the DISQUS system) at making this a better “ecosystem” had a functionality that aggregated every post by each “guest” so that it was easy to see in one place just how much of this type of propaganda was being spewed.

              That is, unless one opted for the most extreme level of “privacy.”

              Gee, now who exactly opted for that?

              The plain matter of fact here is that readily available steps to actually making this place a better “ecosystem” are NOT being taken in regards to one very particular person – and that particular person has been documented to be causing the very same type of blight for a FULL DECADE now.

    2. those of us who actually want to discuss the topic at hand

      Nobody’s stopping you from discussing anything, PB.

      Of course it helps if you have actually have something interesting and insightful to offer. Or you can just screech “everything is ineligible because nobody understands Alice!” over and over and see what happens.

    3. “But they don’t allow comments.”

      And thus they will never be very popular. Free speech, it kinda sux like that.

  6. Over a year ago:

    link to businessinsider.com

    “It’s impossible to comment on how good [Thereanos’ “techn0logy”] is going to be — it may be wonderful and it may bomb, but I really can’t be more definitive because there’s nothing to really look at, to read, to react to,” says Dr. David Koch, president of the American Association for Clinical Chemistry and a professor at Emory University.

    What? Didn’t Dr. Koch read the patents???????

    Flash forward to this morning:

    link to nytimes.com

    United States regulators have banned [prolific inventor] Elizabeth Holmes, the chief executive of Theranos, from owning or operating a medical laboratory for at least two years, in a major setback for the embattled blood-testing start-up and its once widely lauded founder.

    Making stuff that actually works is hard. But that patent portfolio has got to be worth zillions! This is just another example of a “disruptive innovator” being punished by established players like Walgreens. And what’s with all this regulation anyway? Everyone knows the US has the greatest software patents in the world and they aren’t regulated at all.

    1. Re: “What? Didn’t Dr. Koch read the [Thereanos] patents???????”

      The PTO does not, and cannot, examine medical apparatus or methods claimed in patents for medical efficacy. That is the job of the FDA. [The applicant, in some cases, may present such data ex parte [unchallenged] for arguments to distinguish cited prior art references.] It rarely even challenges physically impossible claimed inventions such as perpetual motion machines.
      P.S. as to medicines, note the old disparaging term “patent medicine.”

          1. I see that 6 is lamely trying out Malcolm’s short script of AccuseOthersOf ThatWhichMalcolmDoes…

            It does not work for him, 6; what makes you think that it would work for you?

            1. I tell you that you need to look into a cure for lameness that used to be available and you respond with a lame pshycopathism? Lulz, anon, that’s making your problem of being lame worse bro, not better.

    2. Yeah I read about that a long time ago.

      SCOPE OF ENABLEMENT!

      Where’s NWPA to crow about the scope of enablement when you need him?

  7. Noonan: the Federal Circuit may have engendered a glimmer of hope that it will once again take up its mantle of patent law expertise regarding the proper judicial interpretation of Section 101

    Because there was no hope before! Kevin Noonan told us so.

    Give us a break, already.

    1. “these claims are related to methods for producing a tangible thing (hepatocyte cultures), not diagnostic information. This distinction remains the one constant between those claims invalidated under Section 101 under recent Supreme Court precedent.”

      Nobody could have predicted that!

      What other shocking developments are forthcoming, I wonder? It’s just totally impossible to predict any of this stuff.

  8. More laughable flailing on the patent world’s second biggest stage:

    (IPLearn-Focus, LLC v. Microsoft Corp)

    link to courtlistener.com

    This is how it plays out when the s0ftware junk patent luvvers who post here get before the CAFC and make their “best” arguments. It’s a farce.

    The most “interesting” part of this otherwise inane oral argument is the “argument” by the tr0ll’s attorney that “conventionality” is somehow different from non-obviousness. The “argument” made was that “conventionality” is a higher bar than that required to show non-obviousness. The judges were correctly baffled by this assertion, as the assertion has no basis in any of the Supreme Court’s rulings.

    Live and learn, people.

    Other “highlights”:

    Attorney’s statement: “there is no evidence that using two sensors was conventional”. <— LOL Yes, folks, he was born yesterday!

    1. A couple others points that fall out of this (and other) oral arguments:

      1) Microsoft’s attorneys are severely compromised and they regularly go out of the way to make thoughtless, nonsensical concessions that achieve nothing.

      2) Judge Moore needs to drink a lot less coffee. Nobody cares about how awesome it would be if you had a computer to watch your kids.

      3) There are a number of CAFC judges who are still deeply confused about the underlying principles and policy behind having any kind of subject workable subject matter eligibility test. Comp00ters and r0b0ts are s00per shiny! We can’t deny patents on new functionalities because … shiny!

    2. Tr0ll attorney: “It was not conventional to have an optical sensor attached to a computer in 1996.”

      That seems like a sanction-worthy assertion before a Federal court.

      Get his b0ttom-feeders out the system, please.

      1. Okay, that’s pretty funny. Someone needs to show this attorney an optical mouse from the mid-80’s and ask him to repeat that assertion.

        1. Has anon hijacked Dobu’s account? Clearly the attorney was referring to cameras, not mice….. and are you sure about optical mice in the 80’s? I was picking lint off of mouse balls well into the 90’s…

          1. You’re right regarding optical mice. While they were developed in the early 80s, it looks like they came out commercially in ’99.

            (Though as long as we’re talking about “optical sensors”, infra-red interfaces for keyboards and remote controls were definitely commercially available in the 80s.)

            As the claim seems to have been about “imaging sensors” specifically, it’s probably better to point out that web cameras became commercially available in ’94.

            1. The Xerox STAR office workstation came with a mouse that detected movement via an optical image sensor. And yes, this was back in the 80’s.

              It probably would not be practical to use that mouse’s image sensor as a camera, though.

            2. web cameras became commercially available in ’94.

              But let’s face it: nobody knew that you could collect image data using such a camera, and then determine stuff with the data. That didn’t become clear until, like, 1997.

              Plus some of these claims use two cameras which is s00per crazyee techn0.

              1. The Wikipedia page for web cameras states that the “QuickCam” was released in 1994, and several of the page’s sources confirm that it was released in 1994. It’s definitely possible there were other less popular cameras released before that camera.

          2. Has anon hijacked Dobu’s account?

            LOL – still feeling the sting from the other thread on your being called out for being silly and not understanding the discussion was related to the law of 103, Les?

            Not only do you step f00lishly in an attempt to str1ke back at me, you are slammed by the good Count becuase you cannot be bothered to check the state of the art in the comment under discussion.

            More thinking and less emotion from you will help that problem of yours.

            1. 1. I wasn’t striking back at you. I was playfully poking fun at you. Didn’t they do that back when you were in the service Francis?

              2. A don’t view a civil response to a civil question as being slammed. That is what happens during a conversation.

              Lighten up Francis.

              1. Your “poke” missed – and missed badly (as noted by my poking you back Francis).

                What you view as a slam is quite meaningless, seeing as you are the one being slammed, and you are quite oblivious to it.

                You are just not the sharpest pencil in the box.

                1. I asked a question. Both Bob and Dobu answered it. How, by any stretch of the imagination is that a “slam?”

                2. Has anon hijacked Dobu’s account?

                  Is that how you “JUST” ask a question?

                  What a nimr0d.

                3. Are you saying I was slammed in regard to that question?

                  No matter, that was just a little ribbing…If Dobu “slammed” me on it, I didn’t notice.

                  This is the question to which I was referring: are you sure about optical mice in the 80’s? I was picking lint off of mouse balls well into the 90’s…

                  Dobu and Bob responded with civil, if conflicting comments. I did not feel “slammed” by either of them.

                4. Once again, you not noticing is just not material – you are just not one of the sharpest pencils in the pencil box.

                  The “little ribbing” was entirely misplaced – as I poked back at you.

  9. Check out this morning’s arguments in Arendi T.R.O.L.L. v. Apple:

    link to courtlistener.com?

    After listening to dozens of these “do it on a comp00ter” troll attorneys kick up dust in the CAFC’s face, certain patterns begin to emerge. One pattern is that the tr0ll attorneys often come across as ingratiating and smug. Another pattern is lame attempts at humor. Another pattern is pretending that everyone was born yesterday. It all seems so familiar …

  10. Cox Communications, Inc. v. Sprint Communication Company was argued Monday morning. It’s an interesting case, it was well-argued, and the issue gets right to the heart of the strange special treatment given to computer-implemented claims.

    Oral argument can be streamed here:

    link to courtlistener.com?

    Summary of district court decision here: link to law360.com

    “The claim language and the specification do not provide structural limitations for the ‘processing system’ and do not inform those skilled in the art about the scope of the invention with reasonable certainty,” Judge Robinson wrote. “The limitation is indefinite.”

    1. Sprint’s representative claim here (link to google.com ; US 6633561)

      1. A method of operating a processing system to control a packet communication system for a user communication, the method comprising:

      receiving a signaling message for the user communication from a narrowband communication system into the processing system;

      processing the signaling message to select a network code that identifies a network element to provide egress from the packet communication system for the user communication;

      gnrating a control message indicating the network code;

      transferring the control message from the processing system to the packet communication system

      receiving the user communication in the packet communication system and using the network code to route the user communication through the packet communication system to the network element; and

      transferring the user communication from the network element to provide egress from the packet communication system.

    2. Key statement in specification here:

      The present invention represents a fundamental and powerful departure from previous telecommunications technology. By separating the communications path from communication control, the CCP [communication control processor] can utilize different networks, and network devices, intelligently.

      In other words, this CCP device is teh awesomest thing ever. But, structurally, it’s a black box that performs the recited functions, because the claim says so.

      Sprint states that the term ‘processor” just means “a computer.” The term was used, apparently, because otherwise the claim could read on human activity. And that wouldn’t make sense because it’s the device that is teh awesomest thing ever. But describing that device structurally …? Just too darn hard, apparently.

      Look for the CAFC to punt this back down to the district court judge with an opinion that is clear as mud.

    3. I listened to the oral argument. It pertains to whether or not “processing system” is definite. The district court had held that the term was indefinite. The appellee affirmed that everybody knew that a processing system was a computer. The patent owner argued that the invention was in the method, and the claim only required that the method work with a processing system, which can be any computer.

      When I see in this case is the Lemley argument that “computer implemented” method claims are effectively indefinite by claiming all implementations (read programs) while having invented only one.

      Prediction: the District Court will be overruled. The invention is in the method, and historically method claims are independent of any particular apparatus.

  11. Anyone know the average time between arguments and decisions for patent cases at the CAFC? I’m curious how much longer we will have to wait before McRo drops.

    1. It appears that the rule 36 decisions are made right away. If a decision is going to require an opinion, it takes approximate 2 to 3 months. If there is a dissent, and 1 to 2 more months.

    2. If I had to take a guess, the delay with McRO/PlanetBlue is the result of one of the judges trying desperately to shoehorn the decision into DDR/Enfish. That’s pretty much impossible to do with any integrity but a judge who really, really, really, really wants that claim to be eligible is going to try really, really, really, really hard to make it happen. If that judge is on the majority, the case has a good chance of ending up in the Supreme Court where it’s going to be smacked down so it not only has to achieve the impossible but it has also look good. That’s a tall order.

      If I’ve got my timeline correct, McRO/Plaent Blue was argued before the Enfish decision was published so that might have slowed things down.

  12. This morning’s argument in IPLearn-Focus LLC v. Microsoft is almost certain to be a laugh riot. Get a load of these junk claims, righteously tanked under 101 (Summary Judgment) by the Honorable James Donato (N.D. Cal):

    link to google.com

    US8538320

    1. A computing system comprising:

    a display;

    an imaging sensor; and

    a processor coupled to the imaging sensor and the display, the processor to:

    analyze at least the first set and the second set of measurements; and

    determine whether to change what is to be presented by the display in view of the analysis.

    Whoo hoo! S00per d00per techn0! Oh wait — I forgot to include that s00per special sauce: what is the “sensor” measuring? Here it is: to sense a first feature of a user regarding a first volitional behavior of the user to produce a first set of measurements … the first feature relating to the head of the user, and the first set of measurements including an image of the first feature, wherein the system further to sense a second feature of the user regarding a second volitional behavior of the user to produce a second set of measurements

    Got that? It looks at your head and then it looks at some other part of your body for “features” related (somehow) to “volitional behavior”. What’s “volitional behavior”? Well, the geniuses who wrote the patent forgot to define that term (surprise!) but we’re told that includes “concentration-sensitive behavior” such as “facial expressions.” Oh, and there’s also some bal0ney limitations about the the sensor being unattached from the observed person’s body (look ma! no wires! wowee zowee!).

    What possible point could there be in appealing this decision? Are the attorneys doing the work for free because they blew so much sunshine up the behinds of their client at the district court level? Might as well just take tens of thousands of dollars and just set it on fire.

    District court decision here: US8538320

    1. …and yet another off topic sniff from Malcolm…

      Thank goodness you two aren’t “hijacking the thread” or anything like that.

      Indeed.

      I wonder how little chowder and how much marching is involved in Malcolm’s club.

      No wait, I don’t wonder because I don’t care about Malcolm’s little club.

      :-)

    2. It seems the claim fails, Malcolm, because it ends with the determination step without actually doing anything thereafter. I think an eligible process can include viewing images then analyzing them provided that something useful is done with the sensor data.

      Your point about overall vagueness, particularly the vagueness of the volitional behavior is well taken.

      1. To be eligible, the claim would need to end not just with doing “something useful” but doing something inventive and useful.

        For instance, “emitting ‘WAKE UP’ out of speaker directed at said user” certainly wouldn’t suffice.

        This claim — and the zillion claims like it — are just junky “do it with a robot” claims. They take everday tasks and logic (“how do I decide when to turn my steering wheel”) and pretend that it’s “innovative” to “do it with a robot with a POWERFUL COMPUTER BRAIN”. Well guess what? It’s not innovative. It’s junk. Collect data with a sensor, analyze and determine stuff, then act accordingly. That’s not innovation. That’s junk.

        Fyi, I pasted the wrong link to the district court decision. Here’s the correct link: link to docs.justia.com

        1. XKCD…

          (and of course, the implicit “proxy” by Malcolm for the human brain is the errant anthropomorphication that is simply misplaced in patent law)

          Yay ecosystem and happy Decade of Decadence.

          1. I’m sorry, “anon”, but your annoying squeaky voice was drowned out by the steamroller of legal progress and common sense. Can you scream louder? The sky can’t hear you.

            1. Sky…?

              LOL / that “steamroller” thing you are thinking of is the broken scoreboard.

              Guess what?

              Scoreboards have been known to be fixed.

              Your “fait acompli” is NOT.

                1. LOL – the garble can still be translated:

                  The “warlords” (the Royal Nine at war with the plain words of Congress in 101) will be “nixed” (the ultra vires scrivining of the “warlords” will be eventually negated – the scoreboard will be fixed.

                  That is the desire of all who recognize the sanctity of the Rule of Law and understand the separation of powers and proper place of what the Constitution dictates for this specific statutory law (versus the untowards intrusion of common law).

        2. MM, take the motion sensor. It turns on lights when you enter a room and it turns off lights if there is no movement detected for a period of time. Would you say that a claim to this use of a motion sensor is ineligible?

          1. Would you say that a claim to this use of a motion sensor is ineligible?

            As you’ve broadly described it, yes. It’s also obvious as heck (unsurprisingly).

            Not just “turning off lights”, by the way. Also “turning off air conditioning” or “heat” or “computer monitor” or anything else that might “save electricity” when nobody is in the room (“lack of motion” being the indicator, in this case).

            And the same logic would apply to tank a similarly broad claim to the use of a generic “heat-detecting sensor” or a generic “body odor detecting sensor” to determine whether there is anybody in the room.

            1. He did not ask about patentability (obviousness) Malcolm – he asked about eligibility.

              Stop conflating for a moment and take the time to read Nead’s direct and simple language.

              You DO know the difference, right?

              1. He did not ask about patentability (obviousness) Malcolm – he asked about eligibility.

                And I answered Ned’s question.

                Please learn to read English, and please try extra hard to get a l i f e.

                1. Your “answer” was NO answer.

                  Nowhere did you actually discuss eligibility – beyond the one word “yes.” The rest of your v0mitfest was to the conflation.

            2. MM, Reading between the lines, turning lights on and turning them off depending on whether the room is occupied is notoriously old. Adding that it be prompted by a motion sensor would add nothing if the motion sensor were also old.

              But is this does sound in 103. Everything in this claim is otherwise eligible subject matter.

              But, if the specification disclosed some novel algorithm to be used in conjunction with the system, claiming the invention at such a high level would be to claim an idea, the result of the invention, not the invention itself.

              There does seem to be some confusion between eligible subject matter and obvious subject matter. Hopefully the Federal Circuit eventually will make sense of this all.

              1. Ned,

                That “confusion” is on purpose.

                Maybe (once again) you want to go back and read the material that I provided to you on the reason why 103 was created and carved out of that single pre-1952 paragraph….

  13. The “interesting” thing in this MM marching and chowder society blog is that this decision is regarded by the reporter as being “interesting”. Well, yeah, I guess when the Supreme Court overrules Congress and the plain meaning of Section 101 through undefined judicial legerdemain, any invention that is accorded patent-eligibility is “interesting”.

    1. What find “interesting” too is that the power elite don’t get the relationship between them taking the law in their own hands (and money) and disenchantment of the vast majority of Americans.

      Also, MM chants on here that the rich are the ones that push patents, and yet the software industry grew to the best in the world by a factor of 10 with software patents. And, the people that are trying to get rid of software patents are giant corporations that are monopolies or near monopolies in their field and who have stated that their biggest fear is small companies innovating.

      Incredible the power of K Street.

      As for this case, I think you are right that the Fed. Cir. sees that their credibility is nearly zero and that the SCOTUS is less than zero.

      1. Malcolm’s dichotomies (unresolvable as anyone with half a brain can see that he is only interested in spewing propaganda) are well known and quite evident when one looks at points as the ones that you and I often post in rebuttal to Malcolm’s nigh constant drive-by monologues.

        What is “interesting” is why the certain sAmeone “Echoes” continue to lap up the philosophical dredge in the face of what is surely obvious.

        The “software must be bad” and “business methods must be bad” quite ignore the larger dynamics of the patent system and how that system works.

        Malcolm’s tactics of propaganda are not new, are not interesting (in the actual meaning of that word), and can be easily moved out of the way of any actual discussion on the merits of patent law.

        But
        That
        Won’t
        Happen

        1. We are in a post-reality world right now. Fanciful models of reality are used to justify policies and consequences and reality mean nothing.

          We have to realize that it is the entire country that has gotten like this not just patent law.

          1. The biggest example on this blog is MM repeatedly saying the rich are the ones that want patents and yet all the evidence is that the rich (monopoly international corporations) are the ones pushing all the anti-patent legislation. That is factual.

            1. Totally not rich guy Nathan Mhyrvold just called. He wants you to taste the hamburger he’s been cooking for the past ten days at 120 degrees F.

              1. There are going to be a few counter examples, so what? It is large system. It would be shocking if there weren’t.

                But even so, none of them compare with the international corporations and the 100’s of billions in the bank. They are all saying this innovation thing we will take care of it. Trust us.

                MM you are a joke.

                1. There are going to be a few counter examples, so what? It is large system.

                  “We’ve acquired 70,000 patents and patent applications over our company’s lifespan. Today, we have approximately 40,000 in active monetization programs that span 50 technology areas…and rising. ” <– from the Intellectual Ventures website

                  So what? So much for your assertion about "all the evidence." That's "so what."

                  I could easily spend all morning here watching you walk backwards as you choke on your foot. But Soros doesn't pay me enough for that anymore. LOL

                2. Malcolm,

                  His comment about “all the evidence” was to those pushing the legislation.

                  Your “evidence” isn’t even in the right ballpark.

                  Try reading a little more carefully instead of being so eager to show some people are (somehow) “bad” for wanting patents.

                  The fact that even wealthy people or even Big Corp still recognize the advantage to having some parents does NOT – in any way – detract from the argument as to who wants to eliminate or diminish the strength of patents.

                  Of course, you do (or at the very least, should) already know this, and it is only your (obviously) dissembling dust-kicking on display here.

                3. the argument as to who wants to eliminate or diminish the strength of patents.

                  LOLOLOLOLOLOLOLOL

                  “Argument”?

                  LOLOLOLOLOLOLOLOL

                  You and your fellow l 0 sers have been trying to demonize “Big Corp” forever. But you’re just a pack of hypocrites.

                  You and all the rest of the patent tr0ll ap0logists are going to continue to reap the whirlwind and get your junk shoved back in your face because nobody on the planet deserves to fail more than you do. Let us know how the b0ttom tastes. You’re the expert.

                4. I don’t work for “Big Corp”, “anon”, and I never have.

                  And I don’t know many people who do. But I do know tons of people who woud love to see the patent system fixed to eliminate software and business method junk. Very very few of those people are wealthy, by any definition of the term. If that fixing means that ign0ramus “ap0logists” like you and NWPA and your well-known heroes are effectively l0cked out of the system, well, that’s a wonderful side effect.

                5. MM,

                  1) How do you account for the fact that the greatest software industry in the world by at least a factor of 10 has grown up under the patent system and yet now you say it is toxic?

                  2) Google is the number one corporation that is trying to weaken the patent system. Google has admitted its number 1 existential threat is a start-up with a new way to search the web–their lobbying has effectively killed this threat by permitting them to copy.

                  3) Intellectual Ventures is something new, but why is it bad? Is IBM bad? Why? All the evidence — like real stuff like the health of the innovation engine –says it isn’t bad.

                  4) Be real. The patent system is becoming a tool for large corporations only (real evidence supports this. I have seen real studies by business schools illustrating this.)

                6. Malcolm replies with the non-sequitur of “I don’t work for “Big Corp”, “anon”, and I never have.” and completely misses the point presented.

                  Try again slick.

                  Instead of trying to kick up dust with some odd “I know groups of people,” try staying on point.

                7. Night, regarding “great software industries,” and patent protection, let me tell you Night that you have no idea what you are talking about. None.

                  The big boys rely on so-called externalities to lock in markets, and to extend monopoly positions to collateral software.

                  DOS produced Windows, Windows -> Word, Word -> Office, etc.

                  When Gates went after Netscape using his contract tricks, the government actually had to step in. Just think what would happen to Apple if Gates were able to cut off Apple’s access to Word and Office?

                  Patents are all but necessary, I believe, to protect startups from predators like Gates. i4i is just one example of the phenomenon. Versata another.

                  Big software my A$$.

                8. Ned,

                  Your view on software (including the example of i4i) shows that you just have ZERO grasp of the discussion here.

                  Not that such surprised anyone really, the flash of shiny “anti-software” and Ned is entranced.

                9. NWPA the greatest software industry in the world

                  If ours is “the greastest software industry in the world” then I’d h@te to see what the worst one looks like.

                  From the consumer side, at least, I can tell you that this industry sxcks. Bigtime.

                  How much of that sxckiness is/was due to junk patents keeping common sense and logic out of the public domain and/or inflating prices for decades so the worst patent attorneys who ever worked in the system can stuff their pockets with cash? A heck of a lot, I’d say.

                10. “anon” try staying on point.

                  LOL

                  So says the know-nothing blogtr0ll playing pattycake with his bff NWPA.

                  Thank goodness you two aren’t “hijacking the thread” or anything like that. Because you’re totally not a couple of hypocrites.

                  LOLOLOLOLOLOL

                11. More Mindless Malcolm AccuseOthersOfThatWhichMalcolmDoes/

                  Y
                  A
                  W
                  N

                  (still nothing from you on point)

                12. With all due respect anon, you generally have no idea what you are talking about, and your posts attacking people like me are without content other than vitriol.

                13. Absolutely untrue Ned – you are sticking too close to Malcolm and his ways are rubbing off on you.

                14. My “attacks” on you – to use your words – are typically so well founded that you have NO ANSWERS to the points that I present and you end up merely running away.

                  No Ned – it is clear that I have a much better grasp of patent law (and relevant history of patent law) than do you.

                15. anon, as you said, you only ask questions and make no statements. You add nothing to any conversation.

                16. Wrong again Ned – I never said that I only ask questions.

                  Further, the fact of the matter is that my counter points are made and then I ask questions of you concerning those counter points.

                  THAT is what prompts you to run away.

                  The drive-by monologue effect is witnessed because you DON’T respond to the counter points and blindly re-post your positions ad nauseum and ad infinitum AS IF the counter points were never presented.

                  You just clench tight your eyes and ramble on. When this is pointed out and you are asked to actually join a dialogue, THAT is what goes unanswered.

                  So your accusation of not contributing is not only absolutely wrong, it is reversed since your drive-by repeats are what are not contributing anything.

                  Pay attention son.

                17. anon, let us just leave at this: with me you do not normally engage in dialogue. You simply ask questions

                  And, even if you do not believe me, most of the time, I have no idea what you are talking about.

                18. anon, let us just leave at this:

                  NO.

                  Why leave it at something that is simply NOT correct?

                  I have provided you MUCH MORE than just questions Ned.

                  I have held your hand through step by step discussions. I have provided you very easy to understand Set Theory explanations. I have provided you with key writings.

                  I have put questions to you BECAUSE you have purposefully avoided the necessary conclusions of our dialogue.

                  Time and again.

                  Maybe I would not ask the questions if you just buckled down and answered them – and answered them fully and in an inte11ectually honest manner – free of your desired Windmill Chases.

                  Your “plea” of “I don’t know what you are talking about” is NOT accepted.

                  You know full well that our dialogue and the necessary conclusions from that dialogue highlight the fact that your Windmill Chases are NOT in accord with the law as written by Congress.

                  What next? Your feigned umbrage?

                  We’ve been there and we’ve seen that.

          2. Who said this?

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

            1. Some politician totally unassociated with patents and patent law.

              Not sure what your point is there, Mr. Snyder.

              Are you trying to say that there is NO reality because one side – or the other – can claim that they are the side that “understands” reality?

              That’s a tangential way to want to have ALL viewpoints that can be expressed accepted as somehow equally valid because they can be expressed.

              Such is utter dross.

              1. The most powerful man in the world for 8 years (and quite powerful for four more after that) said it. I assure you his purview covered the patent policy of the entire executive branch and then some.

                My point is that power as exercised is the only reality that counts, and all the scholasticism in the world about laws and doctrine is just so much decoration in many instances, which can drive… ahem… certain people into intellectual cul-de-sacs disconnected from the aforesaid reality.

                1. Might does NOT make right, and your misplaced idealism of said individual merely displays your lack of touch with reality.

                  “Purview” that.

    2. Hey, tourbillion, if you want to listen to one of your fellow s00per d00per “confused” patent tr0lls fall flat on his face, listen to today’s oral argument in Affinity Labs v. Amazon.

      Here’s the junk claim:

      1. A media system, comprising:

      a media managing system maintaining information about available media content;

      a website provided in association with the media managing system;

      a log-in resource accessible via the website and configured to facilitate a logging in by a user; and

      a portion of the website that is customized for a given user and presented to the given user only after the given user has logged in, the portion configured to present a library of the media content that is available to the given user and a collection of selectable features comprising:

      (1) a browse feature that facilitates navigating through the library for a given piece of the media content based on at least one of a title and an artist; (2) a listen feature that facilitates requesting of a streaming delivery of an audible media that is in the library; and (3) a store feature that facilitates adding of an additional media to the library; and

      an application for use with a wireless handheld device that has a display, the application operable when executed by the wireless handheld device to present a graphical interface that includes at least a partial representation of the portion of the website that is customized for the given user.

      The attorney for the tr0ll pretty much throws a word salad at the panel and their reaction can only be described as a combination of abject boredom and pity. “It’s all so unfair!” he cries. “We didn’t get our due process!”

      Try not to laugh as the tr0ll’s attorney characterizes this junk as “a completely different paradigm” from what “existed” at the time. Customized interface! Personalized library! Purchased content! Oh, it’s all so s00per d00per techn0! What would we do without these brilliant “innovators”? They were the first to “disclose” to the PTO the “cool” idea of having a s00per portable personalized custom music machine. With an interface so … so you can use it. Look, mom: no wires! And there’s music coming out! Wowee zowee! Here’s a picture of some boxes that sets forth the “structure”.

      LOL

      1. MM, I will give this a listen. I have a hard time understanding just what argument can be made with a straight face at this stage in the game.

        1. These tr0lls just wanted the merry-go-round to spin a few more turns. They were “owed” that, apparently, and the district court judge didn’t spend enough time listening to their story before pulling the switch on the guillotine.

      2. Earlier in the morning in the Affinity v. Direct TV case, Mr. Morton was asked (I think going after the question of preempting the general notion of providing regional broadcasts outside the home region),

        “It strikes me… why isn’t it fair to say that, with no technological intervening process disclosed… you’ve announced that the solution to the problem is that you’ve solved the problem?”

        1. Mellow, I was going to post this observation as well. It is clear at least how this judge is voting.

          Problem, people in Houston could not listen to stations in Seattle — the inventor’s Dad had moved and missed his former stations. Solution, stream them to one’s mobile device using an app.

          Court to attorney: is that it? Where’s the new technology?

          Attorney to Court: We agree that streaming was old. We just had the idea to allow streaming of the remote station to one’s phone.

          So, we surrounded this idea with commonplace things like servers and logins that are normally used to do these kinds of things — and voila — we have a patentable invention.

            1. Reminds me (a bit with the logic) of those three very very simply things that we keep on re-using

              Which reminds me that you’ve been bringing up that ridiulous “it’s all protons” simpleton “argument” for years and not a single judge has debased himself by relying upon it. What a surprise.

              LOLOLOLOLOLOLOLOL

    3. any invention that is accorded patent-eligibility is “interesting”.

      Careful there tour billion, this patent has not yet appeared before the Royal Court.

      1. Everything is ineligible! Everything is ineligible!

        Keep up the cheerleading, “anon.” You guys are super serious.

        1. Maybe you think that that quote never happened (and want to ignore the context with which this remark is firmly associated with)…

          Pull your head out Malcolm.

          LOL – the “tell” of “super serious”

          Yay ecosystem – happy Decade of Decadence.

  14. It seems like a year ago, in their arguments attorneys talked about what references “taught” or “disclosed”. Now the majority of what I see talks about what the references are “directed to”. Is there some effort going on to further muddy the waters of the “directed to” component of the Mayo test?

    1. I am picking up the emotion of “damm scriviners won’t stop scrivining,” and I have to wonder what Bob feels is the “state” of muddiness in the water from the Court and its (undefined) “directed to” pseudonym for “Gist.”

      Care to clarify that particular waters, Bob?

      1. Ah. I suppose then it should be interpreted as a tiny protest, rather than a deliberate obfuscation, eh? That’s fair.

        1. Once again Bob, please clarify the “original state,” to which your “emotive” accusations of “obfuscation” and “further muddying” are ‘directed to.’

          It is difficult to attribute your post to anything other than a typical “those who want patents must be bad” feeling based on the way that you are posting.

          It is entirely unclear what your view of “fairness” even means.

  15. Judge Prost writes:

    [P]atent-eligibility does not turn on ease of execution or obviousness of application.

    and somehow this off-handed comment is taken as an 11th commandment handed to Examiner Moses.

    Reading statements in context is key. Prost’s statement is true to the extent that “It’s easy!” and “It’s obvious!” are not tests for eligibility per se. But her statement is true only to that extent.

    The fact remains — and it’s always going to remain — that the eligibility of claims will quite often “turn” on the “ease of execution” or “obviousness of application” because many claims will do nothing more than recite (1) obvious subject matter followed by (2) a non-obvious but ineligible element. We can describe those claims in the following manner:

    A method comprising
    step W
    step X
    step Y
    and ineligible step Z (e.g., thinking a non-obvious thought about the meaning of the result of step Y).

    Now, if steps W, X and Y turn out to be non-obvious and otherwise eligible, then the entire claim is eligible. The details (i.e., the “importance” of the “meaning”) of the otherwise ineligible (standing alone) step Z (as set forth) are irrelevant.

    But if steps W, X and Y are obvious, it’s equally true that the addition of the otherwise (standing alone) ineligible step Z that I’ve set forth — no matter how non-obvious or “important” the “meaning” is — renders the claim ineligible.

    Note the difference between the two claims (the obviousness of a portion of the element) and the different results (one is eligible; one is not). So you can see that eligibility can and will “turn” on the non-obviousness of the claim. This is pretty easy stuff to follow. Plus I’ve been explaining it here for about almost a decade now.

    1. Translation:
      “Wah, this does not fit my purposeful obfuscations.”

      There is no possible “context” to achieve the spin that you want to achieve Malcolm.

      1. Go ahead and ask Prost about this directly. She’s pretty smart. She’ll confirm what I’m saying.

        Or you can waste your client’s money and watch the claims blow up in your face. Then act surprised as you run to the bank.

        [shrugs]

  16. Haven’t read the claims yet but from what D says about the subject matter being claimed it sounds eligible to me.

  17. Slightly OT but here’s your next Rule 36 opinion upholding a district court’s finding of ineligibility under 101. Look for it by Friday or early next week.

    16-1004 TDE Petroleum Data Solutions v. AKM Enterprise, Inc.

    US6892812

    link to google.com

    This morning’s oral argument can be streamed here: link to courtlistener.com?

    Judges: Lourie, Wallach, & Hughes

    1. An automated method for determining the state of a well operation, comprising:

    storing a plurality of states for a well operation;

    receiving mechanical and hydraulic data reported for the well operation from a plurality of systems; and

    determining that at least some of the data is valid by comparing the at least some of the data to at least one limit, the at least one limit indicative of a threshold at which the at least some of the data do not accurately represent the mechanical or hydraulic condition purportedly represented by the at least some of the data; and

    when the at least some of the data are valid, based on the mechanical and hydraulic data, automatically selecting one of the states as the state of the well operation.

    From an eligibility perspective, there’s nothing special about “oil well states.” Or the “state” of your bank account. Or the “state” of your 3-D animated character’s mouth.

    1. Perhaps so MM, but at least you have to give them that this invention is at least arguably within the useful arts. So I mean, you know, there is that.

      1. Lulz – 6 and his own “subtle” slights at what it means to be within the Useful Arts….

        Feel free to abstain from anything that you would declare to be in the NON-Useful Arts, there 6.

    2. starts and ends with a mental process. Again all of the steps can be performed mentally. This is not even an Alice issue, but a pre-Alice mental process issue. We don’t want people infringing by thinking.

  18. Just so nobody is confused, the title of this post:

    Method of Selecting Desired Trait from Cell Plate is Patent Eligible

    should not be construed as legal advice.

    LOL

  19. Wow, Judge Prost with a decision favoring patentees. Maybe the denial of cert in Sequenom caused some of the CAFC judges to realize that if they don’t start to put this genie back in the bottle, there won’t be anything left.

    1. From the oral arguments it was pretty clear the panel was leaning towards vacating the district court’s decision. That was weeks before the cert denial.

      More importantly, history will show that it was the Supreme Court who put “the genie” back in the bottle because it recognized that “there wouldn’t be anything left” otherwise. The “genie”, of course, was the idea that you could claim anything as long as you described it as “a process” and there was some token mention of a physical object or “useful information” somewhere in the claim.

    2. I agree that it is good to see that the CAFC did not choose to extend Mayo‘s holding yet further still (thank heavens that Judge Dyk was not on this panel).

      However, I am not really sure that the CAFC can be said to have put the djinni back in the bottle. Pretty much every diagnostic method claim you can imagine is still ineligible, unless it invents a whole new detection technology to go along with the diagnostic application. Whole industries are still very much adversely affected. We just did not add one additional industry to the list of casualties.

      1. Pretty much every diagnostic method claim you can imagine is still ineligible

        Speak for yourself. I can imagine a lot of them that are eligible. Of course, we already knew that the PTO had granted countless reams of ineligible diagnostic claims for years. Good riddance to those claims.

        unless it invents a whole new detection technology to go along with the diagnostic application.

        Oh, I see. It appears that you, too, can imagine a lot of diagnostic methods that are eligible as well (in spite of your earlier statement). It’s unclear how “whole new detection technology” is different from “new technology”. Care to explain that to us? The last time I checked the point of the patent system was to promote the development of new technology. Why do you believe that inventing new technology is too high of a bar for a patent?

        Whole industries are still very much adversely affected.

        Boo hoo hoo. And some patent attorneys will need to find other jobs. Boo hoo hoo.

  20. I am loving pg. 16 of the slip op.: “[P]atent-eligibility does not turn on ease of execution or obviousness of application. Those are questions that are examined under separate provisions of the Patent Act.”

    Well said, Madam Chief Judge!

  21. One feature of the claimed method here that is shared with the claim in Sequenom is the apparent simplicity of the recited method. The biggest problem for the patentee here is arguably enforcement.

    Imagine that someone discovers that you can eliminate 90% of E. coli from a bag of flour by heating a glass marble to at least 120 degrees Fahrenheit and placing it in the flour bag, away from light, for at least one minute. Of course that’s going to be eligible and patentable (absent some 102 art that I’m not aware of). But enforcement is going to be tricky.

  22. On page 10 of the slip opinion, the court gives some examples of claims that it considers clearly §101-eligible claims. The last of these exemplary claims is “methods of… treating headaches with aspirin…”

    Doesn’t this rather give the lie to the idea that §101 is assessed relative to the prior art? Clearly treating headaches with aspirin is old in the art, but the court still gives this as an example of a method that should survive §101 challenge.

    1. I think the CAFC is assuming that the recited exemplary treatment methods are new.

      Just so there’s no mistake: patent attorneys or agents who interpret this case to mean that magic words like “treatment” somehow represent a Get Out of 101 Free card are going to be profoundly disappointed.

      Likewise, the term “detecting” is not a kiss of death, either. As ever, it all comes down to what exactly is being claimed and how that claim relates to the prior art. And that’s how it’s always going to be.

      1. You think wrong.

        Let me just put Greg’s words here (as they directly counter Malcolm’s attempt at conflating 101 with some type of time sense of prior art:

        I am loving pg. 16 of the slip op.: “[P]atent-eligibility does not turn on ease of execution or obviousness of application. Those are questions that are examined under separate provisions of the Patent Act.”

        Well said, Madam Chief Judge!

        1. Judge Prost writes:

          [P]atent-eligibility does not turn on ease of execution or obviousness of application.

          and somehow this off-handed comment is taken as an 11th commandment handed to Examiner Moses.

          Reading statements in context is key. Prost’s statement is true to the extent that “It’s easy!” and “It’s obvious!” are not tests for eligibility per se. But her statement is true only to that extent.

          The fact remains — and it’s always going to remain — that the eligibility of claims will quite often “turn” on the “ease of execution” or “obviousness of application” because many claims will do nothing more than recite (1) obvious subject matter followed by (2) a non-obvious but ineligible element. We can describe those claims in the following manner:

          A method comprising
          step W
          step X
          step Y
          and ineligible step Z (e.g., thinking a non-obvious thought about the meaning of the result of step Y).

          Now, if steps W, X and Y are non-obvious and otherwise eligible, then the entire claim is eligible. The details (i.e., the “importance” of the “meaning”) of the otherwise ineligible (standing alone) step Z are irrelevant.

          But if steps W, X and Y are obvious, it’s equally true that the addition of the otherwise (standing alone) ineligible step Z that I’ve set forth — no matter how non-obvious or “important” the “meaning” is — renders the claim ineligible.

          Note the difference between the two claims (the obviousness of a portion of the element) and the different results (one is eligible; one is not). So you can see that eligibility can and will “turn” on the non-obviousness of the claim. This is pretty easy stuff to follow. Plus I’ve been explaining it to you for about almost a decade now.

      2. MM said: “Just so there’s no mistake: patent attorneys or agents who interpret this case to mean that magic words like “treatment” somehow represent a Get Out of 101 Free card are going to be profoundly disappointed.”

        Sounds to me like your the one that is disappointed.

        The pendulum is swinging back toward sanity…..

        1. Sounds to me like your the one that is disappointed.

          Not at all.

          Try to remember: I’m not the one who’s been running around screeching that “nothing is eligible.” On the contrary, I’ve been trying to bring those people back down to earth.

  23. The method seems eligible to me, but if all of the steps were well known in the art (which they seem to be) and there are no unexpected results from combining the steps (which there seem not to be) then it might need to go out on 103.

    Yet if the sole unexpected result is the survival of some samples, this is basically Sequenum in different clothing. Should 101 0r a properly employed 103 be the preferred means of disposing of the claims?

    Yet another example of a patent where the 101/103 issues are tied up because we don’t have a clean bifurcation of eligibility and patentability.

    1. MS there are no unexpected results from combining the steps (which there seem not to be)

      The claim recites both a combination of steps and an express exclusion of previously practiced steps. You’re telling us that the result of this method was expected? And you know that because … why? It’s not as if the issue hasn’t been looked at already ….

      if the sole unexpected result is the survival of some samples…

      Maybe read the claim. It requires a bit more than “the survival of some samples.”

      ….this is basically Sequenum in different clothing

      You know what they say: “the clothes make the man.” More plainly, this is different from Sequenom because Sequenom was a detection method.

      Should 101 0r a properly employed 103 be the preferred means of disposing of the claims?

      Whatever test works easily and quickly when it’s properly applied should be “preferred.” Sometimes the answer will be “neither.” Other times the answer will be “both.”

      Yet another example of a patent where the 101/103 issues are tied up

      That’s not unusual. The prior art is almost always relevant to eligibility determinations, for very easy-to-understand reasons. And that’s never going to change.

      1. MM: “You know what they say: “the clothes make the man.” More plainly, this is different from Sequenom because Sequenom was a detection method. ”

        The bottom line, I believe.

        1. To be more accurate, I should have said “Sequenom was a method of detecting a ‘new’ natural phenomenon using an old detection method.”

          By itself, the fact that a process can be characterized as a “detection process” isn’t f@tal to a claim’s eligibility.

      2. MM says: “You know what they say: “the clothes make the man.” More plainly, this is different from Sequenom because Sequenom was a detection method. ”

        How is this not a detection method? It detects cells that survive freezing. That step is then followed by insignificant post solution activity, freezing the cells. Freezing cells is a naturally occurring process and has been at least since the last Ice Age….

        1. How is this not a detection method? It detects cells that survive freezing.

          Like I’ve said before: some people will literally do and say anthing if they can fit it into their bizarre worldview.

          “Everything is a detection method! Everything is ineligible!” <– see chicken little run

      3. The method is barely more than what farmer Bowman did in Monsanto; he sprayed herbicide on plants and artificially selected generations of those that did not die (because of Roundup resistance).

        Once you have the information that some of the instant sample cells did not die when frozen, everything else is conventional about preparing culled populations. In that regard, the analogy to Sequenum is apt.

        1. Both claims relate to biology. “In that regard”, too, the analogy to Sequenom is “apt.” Who cares?

          You’re still missing the entire point of Sequenom (i.e., methods are ineligible when they recite only the use of old detection technologies to detect ‘new’ phenomenon within the class of phenomenon for which those technologies were designed), and also the entire point of Mayo (you can’t monopolize natural phenomenon by salting the claim with conventional technology, e.g., data-gathering technology).

          That’s not what’s going on here. Here you have a claimed process reciting a combination of new steps that results in a transformation of matter that was not previously deemed to be obtainable by those recited steps. Is it obvious, as claimed? Maybe. But that issue was looked at already. But this type of claim doesn’t carry with it the issues that render “detect this ‘new’ phenomenon using this old technique” claims so problematic. Or at least I haven’t heard anyone articulate any such issues.

          The method is barely more than what farmer Bowman did in Monsanto; he sprayed herbicide on plants and artificially selected generations of those that did not die

          I have no idea why you’d bring the Monsanto case up here. That case was about patent exhaustion.

          1. MM I’m not trying to compare this case to Monsanto, I’m noting the fact that once you have the information that some cells are genetically resistant to freeze death, it’s a simple, obvious method to artificially select for the trait to gain a completely resistant population. That’s what farmer Bowman was doing.

            And that’s the parallel to Sequenom; once you have that bit of information (the discovery) everything else is trivial.

            This case however DOES vary from Sequenom in the critical sense that a physical composition is the object of the method- a collection of freeze resistant samples- rather than a further item of information (fetal cell abnormality).

            That’s why I think this method is eligible, but possibly obvious while I think Sequenum is ineligible because the result is information, which is 100% abstract.

            1. Martin, Yes. The creation of something physical that is useful is what is important, as opposed to the creation of something that is useful only for its information or is useful only for the creation of information.

              That is also why Myriad failed.

              1. That is also why Myriad failed.

                Actually Ned – that is exactly opposite of the Myriad case which WAS a “physical composition was the object.”

                In your hurry to echo, you failed to realize that you just sh0t a (tiny) hole in the thing you wanted to echo.

                1. anon, the way you discuss these issues seems to suggest you have actually never read the cases, or, if you did, did not understand their holdings.

                  Why of course the reason the Court found the way it did was because the sole purpose of the claimed invention was to detect the presence of a specific DNA sequence. It was Lourie who thought the claim was to a new composition of matter.

                2. LOL – that AccuseOthersOfThatWhich[You]Do trick does not work for Malcolm – why do you think it works for you?

                  (Just a quick reminder on Myriad – that was the case that I nailed in a prediction and you actually congratulated me).

                  Oopsie for you.

    2. Well, CAFC have remanded this to the District Court with a discussion of 103 obvious issues, in II B, page 15, noting that the claims would be likely to pass 103, and noting in particular that the prior art seems to have “taught away” from multiple refreezings.

      With regard to 101, the CAFC panel seem to consider this claim to match the fact pattern of Diehr as interpreted by the Alice Court.

      First of all the claim as a whole is drawn to a claimed improvement in an impeccably patent eligible process: preserving hepatocytes by freezing them. And Prost’s opinion makes the case that that the “natural law” is integrated into the process as a whole, so as to ensure that the elements, considered as an ordered combination, recite a true invention of the sort that the patent laws were designed to protect. (In language that some readers may detest, the CAFC found synergy in the combination of elements that provided an “inventive concept”.)

      By way of comparison, the following is the Alice Court’s take on Diehr (III B 1), to be found starting at the bottom of p.15 of Alice v. CLS on the Supreme Court website:

      link to supremecourt.gov

      “The invention in Diehr used a ‘thermocouple’ to record constant temperature measurements inside the rubber mold – something ‘the industry ha[d] not been able to obtain.’ Id., at 178, and n. 3. The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. Id., at 178–179. These additional steps, we recently explained, ‘transformed the process into an inventive application of the formula.’ Mayo, supra, at ___ (slip op., at 12). In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.”

      (This is of course not a reading of Diehr that focusses on “everything under the sun” and the “Three Doors”.)

    3. >>Should 101 0r a properly employed 103 be the preferred means of disposing of the claims?

      The real issue is how to dispose of people like Martin from patent law.

      1. As it happens, these claims in this case have already survived §103 challenge, so they are not going down for obviousness by now.

        That said, I agree with you entirely. It would be altogether fine if obvious claims were to fail for obviousness. The real problem here is that the §103 inquiry has been shoe-horned into the §101 inquiry, and it is a salutary development to see Chief Judge Prost standing up for the idea of putting each inquiry back into its proper statutory section.

        1. The real problem here is that the §103 inquiry has been shoe-horned into the §101 inquiry,

          LOL. But somehow it wasn’t a “real problem” when 101 was “shoe horned” into the 103 inquiry. Go figure.

          The bigger point, of course, is that there is no “shoe horning” at all. The prior art is almost always going to be part of the 101 inquiry and that’s never going to change.

          it is a salutary development to see Chief Judge Prost standing up for the idea of putting each inquiry back into its proper statutory section

          All she’s standing up for is performing a proper 101 analysis. The considerations in your beloved “statutory sections” are overlapping, Greg. My god I hope you’re not actually advising clients.

          1. I was just reading up on the old combination cases thanks to Random’s discussion of Lincoln Engineering. Generally the rule developed that there is no invention in an old combination that produces an expected result, even if one improves one element. Without getting into detail, the result produced must be different in kind, rather than degree.

            Lord Coke’s “button to the coat” — improvement in the button does not allow one to re-patent the button-coat combination.

            But lot of the 101 recent cases are variations on this same theme. Software to the computer. If the result is of the same kind, the combination is not repatentable under these line of cases. Thus the use of software to calculate the improved price is of this nature.

            Consider Mayo and Sequenom. The process was old but used to detect a newly discovered phenomena. The use of the old process on an new material (a typical example in the old cases) produced only a result that was expected, even if nominally new.

            Had the whole Lincoln Engineering line of cases not been overruled by In re Bernhart (programming makes the machine physically new), then we may not have even had the problems in 101 over the past several years.

            1. Your “software to a computer” is clearly erroneous (unless you think that ANY software is interchangeable with ANY OTHER software…)

              Just another Ned “High Ho Windmill” excursion.

  24. Dennis: the court added to the oft-stated argument that a true application of Mayo/Alice would decimate the patent system:

    Oh, c’mon already.

    Mayo itself is crystal clear that the test is never going to be as simple as “find a natural law or phenomenon and end the analysis.”

    A more accurate description here would be “The court recognized, as did the Supreme Court, that a careless and naive misreading of the Supreme Court’s decisions would decimate the patent system.”

    Please don’t feed the tr0lls.

    1. …says the site’s biggest Tr011…

      That old black magic of Malcolm’s number one meme of

      AccuseOthersOfThatWhichMalcolmDoes

      in the flavor of

      AccuseOthersOfThatWhichMalcolmIs

      Yay ecosystem!
      (happy Decade of Decadence)

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