Affinity II: Who Has the Burden for Alice Step II?

by Dennis Crouch

A few days ago I wrote about the Federal Circuit decision in Affinity Labs. v. DirecTV  affirming that Affinity’s U.S. Patent No. 8,688,085 claims an ineligible abstract idea rather than a patent eligible invention.

The companion case – Affinity Labs v. Amazon was decided by the same panel of Chief Judge Prost and Judges Bryson (author) and Wallach and U.S. Patent No. 7,970,379 and also affirmed that the challenged claims lack eligibility under Section 101.

In DirectTV, the court first “stripped” the representative claim “of excess verbiage.”  Using the same approach but different words, the Amazon court here offered its version of the representative claim “stated more succinctly:”  the claim “is directed to a network-based media system with a customized user interface, in which the system delivers streaming content from a network-based resource upon demand to a handheld wireless electronic device having a graphical user interface.” [Full claim text below]

Abstract Idea: Analyzing the claimed invention, the court found that the claims are directed to a high level of generality “describing a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.”  In Enfish, the court considered technological inventions and queried whether the invention represents “an improvement in the functioning of a computer,” or merely “adding conventional computer components to well-known business practices.”  Here, of course, the invention uses more than just a “computer component” but the court still found Enfish applicable — finding that the claims “fall into the latter [ineligible] category.”  Further, the “tailoring of content based on information about the user . . . is an abstract idea that is as old as providing different newspaper inserts for different neighborhoods.”  Slip opinion at  10.

Burden Shifting for Step Two?:  Once a patent is deemed to be directed to an abstract idea, the burden appears to shift against the patentee to show that the claim includes “something more” such as an “innovative concept” that goes beyond the ineligible abstract idea.  This burden-shifting would go against the traditional rule that each each element in an invalidity analysis must be proven with clear and convincing evidence — and so it may still be proper to say that the challenger also has the burden under Step Two of Alice/Mayo to show the claim includes “nothing more” of patentable weight.  A complication of this internal dialogue is that eligibility is deemed a question of law whereas the C&C evidentiary requirement applies only to questions of fact.  That distinction became important in this case since the district court dismissed the case on the pleadings prior to the consideration of any factual conflicts.

Nothing More:  Enfish substantially increased the overlap between Steps One and Two of the eligibility analysis.  Typically, if a claim includes an eligible inventive concept then it will not be deemed directed to an abstract idea in the first place.   Here, the court found the converse logic also true:

As noted [in our Enfish analysis], representative claim 14 is written in largely functional terms, claiming “a collection of instructions” that perform the functions of displaying a selection of available content on a graphical user interface and allowing the user to request streaming of that content. . . . [These features] do not convert the abstract idea of delivering media content to a handheld electronic device into a concrete solution to a problem. The features set forth in the claims are described and claimed generically rather than with the specificity necessary to show how those components provide a concrete solution to the problem addressed by the patent.

Thus, the claim fails under Step Two as well – Judgment on the Pleadings of Invalidity Affirmed.

= = = = =

The court noted that the title of the patent ““System and Method to Communicate Targeted Information” has essentially no relation to the asserted claims.  That disconnect had no direct impact on patentability.  However, it appears to have lent credence to the notion that the claims lack innovative weight and technical application since the focus of the claims is something different than what was originally thought to be innovative and worth extensive description.

= = = = =

Claim 14: A media system, comprising:

a network based media managing system that maintains a library of content that a given user has a right to access and a customized user interface page for the given user;

a collection of instructions stored in a nontransitory storage medium and configured for execution by a processor of a handheld wireless device, the collection of instructions operable when executed: (1) to initiate presentation of a graphical user interface for the network based media managing system; (2) to facilitate a user selection of content included in the library; and (3) to send a request for a streaming delivery of the content; and

a network based delivery resource maintaining a list of network locations for at least a portion of the content, the network based delivery resource configured to respond to the request by retrieving the portion from an appropriate network location and streaming a representation of the portion to the handheld wireless device.

= = = = =

96 thoughts on “Affinity II: Who Has the Burden for Alice Step II?

  1. Possibly naive question here. If the second step of Alice really is a question of law, why would there be a burden of proof? Both sides presumably agree on what the claim language is. Either that language adds something more to the abstract concept to which it’s directed, as a matter of law, or it doesn’t. What is being “proved” such that the court would be required to weigh evidence?

    1. “why would there be a burden of proof?”

      There isn’t one except in so far as, arguably, 101 is a mixed question of fact n lawl because sometimes factual considerations do enter the picture (not often).

      1. …like the fact that actual physical elements of a claim are made to “magically” disappear from the “claim as a whole” by being Gisted into being Abstract?

        Or the fact that certain sAmeones insist on sticking their heads in the sand as to this fact (because, you know, “Ends”)…?

  2. Just another reminder: before most of us were born, human beings were sent into outer space on a rocket and brought back alive and well with the assistance of remote computer control.

    Yet somehow just 16 years ago the USPTO decided that progress could be promoted by granting a patent on a “system” that allowed you to choose, using a “graphical interface” (also ancient) between a sine wave and a beep to be transmitted to you “wirelessly.”

    This is an ongoing farce. There is a huge amount of cleaning up to do.

      1. Let’s clean up all those obvious things made wth the ancient protons, neutrons and electrons

        Because if “anon” and company don’t get their favorite patents, then nobody should get any. Nyah nyah nyah!

        Super serious stuff.

        Have I mentioned lately how the luvvers of s0ftie w0ftie patents are the most self-important and entitled people on the planet?

        News flash: it’s not your f00tball. Get a l i fe.

        1. And yet again, you miss the putdown that I am using your own “logic” with the Big Box of protons, neutrons and electrons.

          What a putz.

          As for “entitled,” sorry but software innovation is every bit as “entitled” as any other art field. Yes, I know that hurts your “Feelings,” but maybe that life you want me to get would be better off with you since you need one far more than I.

    1. “ust another reminder: before most of us were born, human beings were sent into outer space on a rocket and brought back alive and well with the assistance of remote computer control.”

      Not to let facts get in the way, but no. “Guidance is internal.” was a phrase uttered on the loop and broadcast nation wide moments before each launch, as they disconnected the umbilical to the ground.

      And when they had to turn off the internal computer(s) on Apollo 13, as Tom Hanks said in the movie portrayal “Sir Issac Newton is in the drivers seat.”

      1. the internal computer(s) on Apollo 13

        Oh, they had a computer on board, in addition to the computer at mission control? I wonder what the computer did when it was turned on.

        It probably managed the astronauts bingo games on Sunday afternoon, right?

        1. I doubt it. It was less powerful than a calculator. When Buzz went off book and left the rendezvous radar on during the decent (when it was supposed to be off) in case he needed it if the decent was aborted, while the decent radar was being used for the decent, the “computer” got overloaded and started issuing alarm messages, by displaying “1201” and “1202”. There was no ground based computer guidance. They had to tell Houston about the alarm over the radio and ask them what to do. Fortunately, THE guy that knew what 1201 and 1202 meant, because Gene Krantz had told him to make a list of every alarm and know what to do in case of it, was in the room and was able to say, “We’re go on that alarm, Flight”.

              1. But if you “Gist” away any actual hardware, the “idea” is not any more “difficult.”

                😉

                (That and some pizzzas over the weekend at the college coffee shop gets you anything done, after all – except for bird recognition projects – those still take longer)

                😉

              2. totally different from the awesome computational power needed to present of graphical user interface to present the two choices.

                Except that when Affinity’s junk patent was filed, no skilled artisans were capable of being “awed” or even modestly impressed by the presentation of a binary choice on a graphical user interface. They were already 25 years old by that time.

                Promote the progress in scrivening!

      2. The call for internal guidance was for the boost phase, specifically for the guidance equipment built into the booster and backed up by the flight control computers built into the spacecraft.

        During all other phases of the lunar missions, guidance was run using ground equipment and very precise radar measurements, which were backed up by the guidance computers and optical sighting equipment on the spacecraft.

        As for Issac Newton; the statement meant that the mission was then on a free-return trajectory, which means one orbit around the moon and a trans-earth coast with no further adjustment to get back in the region of Earth. Usually some fine tuning was needed before entry to ensure enough drag to not skip to higher orbit but not so much drag as to kill the crew. The internal computer was never the primary guidance of the mission and so nothing changed when it was turned off. Dramatized for the movies.

        1. “During all other phases of the lunar missions, guidance was run using ground equipment and very precise radar measurements, which were backed up by the guidance computers and optical sighting equipment on the spacecraft. ”

          Be that as it may, there was no computer to computer communication. Any updates information generated by any ground computer were spoken into a microphone, heard by and ear and entered by fingers on a numeric keypad.

          There is a pretty detailed discussion of the computers here:

          link to en.wikipedia.org

          There is no mention of a modem or a means for communicating with a remote computer. I doubt the authors overlooked it, since I now know that “The Apollo flight computer was the first to use integrated circuits (ICs). While the Block I version used 4,100 ICs, each containing a single three-input NOR gate, the later Block II version (used in the crewed flights) used 2,800 ICs, each with dual three-input NOR gates.[1]:34 The ICs, from Fairchild Semiconductor, were implemented using resistor-transistor logic (RTL) in a flat-pack.”

          1. Wrong on that point Les. Controllers could use AGC INLINK update navigation data through the Manned Space Flight Network, all the way out to lunar distances.

            They did not do so on Apollo 13 because time-constraints made doing it manually the only practical option, and the AGC was then the only backup to the LM computer with the CM computer shut down.

            1. I see no mention of that. What I do see is:

              “Software
              AGC software was written in AGC assembly language and stored on rope memory. The bulk of the software was on read-only rope memory and thus couldn’t be changed in operation, but some key parts of the software were stored in standard read-write magnetic-core memory and could be overwritten by the astronauts using the DSKY interface, as was done on Apollo 14 .”

            2. “They did not do so on Apollo 13 because time-constraints made doing it manually the only practical option, and the AGC was then the only backup to the LM computer with the CM computer shut down.
              Reply”

              Well, if it was faster to read the changes over the radio and manually enter them, than it would have been to do it via this alleged computer to computer link, can we really call that “remote computer control?”

              Remember, this is the assertion I was addressing:

              MM: “Just another reminder: before most of us were born, human beings were sent into outer space on a rocket and brought back alive and well with the assistance of remote computer control.”

              1. Les it was faster because it was an emergency situation and attempting to reconfigure your only backup (the AGC) to achieve an unplanned remote update of a single set of angles via AGC INLINK v. just writing it down and reading it off would make no sense.

                On your second point, uploading data by remote to the device was not enough; you needed to be able to upload the operating software too in order to meet MM’s formulation of “assistance of remote computer control.” ?

                You can’t even really call it software- it was firmware mechanically woven into magnetic cores representing 1’s and 0’s.

                You know how they love to say around here that software and hardware are the same thing, right? I’m waiting for remote updating of IT hardware- 3d manufacturing style…

                1. NOT “same thing” Martin.

                  You keep on saying “same” and I keep on correcting you: the term of art in patent law is “equivalent.”

                2. You pedantically keep making the point, and I keep mechanically responding such:

                  1) the differences between the vernacular and term of art meanings make no difference in this context

                  or

                  2) I agree with the philosophical point that utility derived from information processed by software, hardware, or firmware is the same (as in “equivalent”) utility

                  3) that the doctrine of equivalents cannot be equitably applied when the utility of the information arises in the mind of a human actor.

                3. And your response is wrong – very much so.

                  That you refuse to recognize this – and keep your eyes clenched and not wanting to learn the actual terrain that you want to “play” on is the reason why you keep on being wrong.

                  And keep on being corrected.

  3. Affinity contends that the ’085 patent embodied a concrete technological innovation because, as of its priority date (March 28, 2000), wireless streaming of media was not “routine, conventional, or well-known.” The patent, however, does not disclose any particular mechanism for wirelessly streaming content to a handheld device. The specification describes the function of streaming content to a wireless device, but not a specific means for performing that function. Claim 14, in turn, recites (1) a “media managing system” that maintains a library of content, (2) a “collection of instructions” that are “operable when executed” by a handheld wireless device to request streaming delivery of the content, and (3) a “network based delivery resource” that retrieves and streams the requested content to the handheld device. At that level of generality, the claims do no more than describe a desired function or outcome, without providing any limiting detail that confines the claim to a particular solution to an
    identified problem. The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.

    To tie the recent posts together – this is exactly how a claim/specification needs to be analyzed to prevent an applicant/patentee from talking out of both sides of their mouth.

    “Oh, you’re going to claim it’s not conventionally known? Okay, show me where you enable it. Explain how your claim is particularly pointing out your novelty.”

    It’s a flaw, actually, in the legal system (and by extension the compact prosecution system adopted by the office) – it is an attempt to exploit procedure by using a shell game to avoid failing one legal requirement by alleging facts that would lead to a failure of a second legal requirement. Such a case should be dealt with just as this one is – calling it out and finding it unpersuasive.

    1. …and yet, “in this manner” is simply wrong.

      You are doing that “Ends justify the Means – so who cares that 101 is butchered with actual hardware being deemed “Abstract.”

      To paraphrase, three wrongs don’t make a right – conflating your views on 103 and 112 into a hyper 101 only means that you truly understand none of the three.

      1. “anon”: actual hardware being deemed “Abstract.”

        Nobody is f00led by this silliness, “anon.” Please give it up. It’s so silly it almost makes me nostalgic for the even sillier “no dissection ever!” arguments that you and your c0horts relentlessly made in defense of your beloved “do it on a computer” claims.

        Also I’m quite sure that you’re the last person on earth qualified to tell anyone what “actual hardware” is. That’s because you’re the same person who pops up here twenty times a week telling everyone that broadcast instructions are “machine components.”

        1. “anon” actual hardware being deemed “Abstract.”

          The other great mystery is how you can apparently have such a huuuuuge problem with this (imaginary non-existent) assertion because “butchered”, and yet apparently be perfectly comfortable with the legal fiction (indisputably relied upon every day) that some indisputably ineligible logical processes have sufficient “structure” to satisfy 112P6.

          1. Because I realize that the exceptions to the judicial doctrine just pull that doctrine back a little.

            I explained this to you in VERY simple and easy to understand terms with my set theory explication. I invited you to discuss that explication, to do “your worst” from a legal standpoint.

            You
            Ran
            Away

            I even repeatedly hyperlinked to it.

            You
            Ran
            Away

            I even reposted it on the main thread.

            You
            Ran
            Away

            Maybe – just maybe – you stop running and actually try to have an inte11ectually honest legal discussion, you would see that there is no mystery whatsoever.

        2. How is it “silly,” Malcolm?

          Even you have said the “hardware is still there,” so your second paragraph is rather meaningless.

          The claim needs to be taken as a whole. As a whole, there is “objective physical structure (even). And yet, – as a whole – the claim is deemed to be “Abstract.”

          Even a dictionary definition won’t get you to having actual hardware BE “Abstract.”

          Explain it – and even use those short declarative sentences you are always on about.

          1. as a whole – the claim is deemed to be “Abstract.”

            The what? The what is being deemed to be “Abstract”?

            First you said that “actual hardware” was deemed abstract. Now you’re saying that it’s the legal right expressed as “a patent claim” that is being deemed “Abstract” (in quotes, with a capital letter, per your statement).

            As I already stated, what is happening is that a claim is being deemed ineligible under the patent statute because the innovation that the patentee is trying to protect is expressed in terms that are not sufficiently structural (i.e., they are functional). That is often the case when the only distinction between the prior art and the claim is an element (or elements) that would be ineligible if claimed on its own (e.g., “instructions”, “logic”, “rules”, “lists”) without the recitation of the prior art.

            This isn’t complicated stuff. It’s basic reasoning and it’s never going away. The question remains, as ever, why it’s so difficult for you to “get it.” And the answer to that question is as obvious as ever, too.

            1. The “would be ineligible if on its own” is simply wrong in the first place, and secondly, manufactures are a recognized statutory category.

              You missed some basics there in your “feelings” mode.

              1. The “would be ineligible if on its own” is simply wrong in the first place

                LOL

                And the Royal Nine have no “right” to be deciding patent cases!

                Yes, these are the super seriousest arguments from the defenders of the worst junk ever granted by any patent system in the history of the universe.

                1. Not sure where you are dragging this strawman out of “no right” for the Supremes….

                  Surely you know the difference between hearing a case and applying the law and writing the law in a common law manner, right?

                  But there I see your poker tell of “super serious,” so I know that you really don’t have anything intelligent to say about the law.

                  (and yes, you still missed some important basics there)

          1. the scoreboard is broken

            Sure it is.

            And when the scoreboard is fixed, the referee will be blind. And when the referee’s eyes are healed, there will be something “illegal” about the ball. And when the ball is replaced, the “biased” guy in the stands will be causing a distraction.

            But he’s all about “patent quality”, f0lks. He’s not just part of team of perpetually entitled whiners who will do and say anything to get their patent bubble inflated to the busting point.

            1. Nice false equivalency with the “all about patent quality,” especially since following the actual law as written by Congress and the fact of the broken scoreboard has nothing to do with patent quality.

              But you already knew that.

              1. the fact of the broken scoreboard has nothing to do with patent quality.

                Deep, deep stuff.

                Maybe one of your cohorts will try to translate that into English but I doubt they’re up to the task.

                1. Lol – you need a translation for that simple and direct sentence in English? From a “cohort” no less?

                  That nice shiny aluminum hat you have must be on a little too tight.

    2. Affinity: wireless streaming of media was not “routine, conventional, or well-known” [in 2000]

      Seems like a sanctionable assertion.

      But this is just par for the course in the s0ftie w0ftie “arts”. Techn0l0gy doesn’t really exist and “nobody knows about it” until you can buy it at Walmart. That’s how we end up with oral arguments where Judge Moore spends five minutes talking about her memories of what her cell phone couldn’t do, as if it were evidence of something other than the CAFC’s forced ign0rance when it comes to the history of computing and communications.

      1. “Seems like a sanctionable assertion.”

        I thought Hitler declared the Olympic Games as Open waaaaay back via wireless streaming of media.

      1. Eh, I’m loathe to call anything IC unless its really ridiculous, but then again I don’t really suffer the consequences when it gets to slide, your clients do.

        Had an appeal a while back where the attorney argued that they did not understand a rejection for (and therefore lacked notice on) a 103 for “Claim 11 is similar to Claim 1 except for a change in statutory class and is rejected in the same manner” that was made for two whole rounds of prosecution (non-final, final, non-final, final, after final) over the course of two years and raised for the first time in appeal. I jokingly suggested that if the argument was true the attorney should be reported to OED just to drive my “frivolous” argument home. Closest I’ve ever come.

  4. The shifted burden of going forward with evidence for step two of Alice discussed in this blog seems directly analogous to what should have been applied in McRo for evidence of non-preemption [as noted in a comment in the recent blog on that case]?

    1. Speaking of who should have the burden, what do you think of this actual reported AIA application B spec statement to the effect “whatever is disclosed in prior published application A [by different named inventors] was conceived by the inventors of application B and derived from the inventors of application B.” [No actual 35 USC 135 derivation proceeding having been filed, if not time barred.]
      Do you think any examiner would be snookered by this spec statement into not applying published application A as an AIA bar reference? If it does, would applicant B’s attorney have an IC problem?

      1. Do you think any examiner would be snookered by this spec statement into not applying published application A as an AIA bar reference?

        Of course they would.

        1. I suppose I should put more than that – If your rejection is based on art that is subject to an exception you have to do a second non-final for free. Nobody is going to roll the dice to test the validity of such a specific statement, they’re just going to assume that it is not prior art and act accordingly.

              1. I am of the opinion that it depends on training not intelligence and that you are overguestimating how many will be likely to not make the rejection. You might be surprised how willing people are to use these flimsy grounds outside of the privileged tower elite.

                1. Well I suppose on what the reference says too. I mean if it’s an easy anticipation reference some might map it and get it out of the way. I would think most would not bother risking the free work they’d have to do though, I don’t think there’s anything “elitist” about that.

      2. Btw, why would you call this an IC issue Paul? Can’t the same declaration be made in an affidavit to overcome the rejection and isn’t the specification subject to a similar oath? (Or is it not subject to that oath? Can your specification contain knowingly untrue facts?)

        I’m not sure what a derivation proceeding has to do with anything

  5. DC In DirectTV, the court first “stripped” the representative claim “of excess verbiage.” Using the same approach but different words, the Amazon court here offered its version of the representative claim “stated more succinctly:”

    Note that this completely appropriate and reasonable approach towards understanding what a claim is protecting is what’s been happening from the beginning.

    Any halfway decent claim drafter can turn instructions for making a peanut butter sandwich into an impenetrable document that most people will need an attorney to unravel and “construe” on their behalf (e.g., throw in a zillion steps about “determining the presence of bread”, “determining the presence of a knife”, etc). That is the problem being addressed here.

    A question for law professors and historians to answer is how and why we ever got to a point where anybody thought that it was a good idea for patent attorneys and their wives should be able to extort operating companies for upwards of tens of millions of dollars because they came up with a fancy way of writing “use information and a computer to push targeted ads in your face.”

    Or maybe it was the case that it was always a terrible idea and the whole game was to implode the entire system, deny that it’s happening even when the denials are ridiculous, and run off with as much cash as can be grabbed before the law catches up. Nah. Wealthy entitled people never do that kind of thing.

    1. What a claim is protecting…

      Which words of Congress provide for that exactly?

      (Bonus question: who does Congress say gets to define this?)

    2. As for your “operating companies” “concerns,” (nothing but your “G-g-g-grifters” meme), once again, the advice stands: get into a field in which you can believe in the work product produced.

      Your stale script is equallly applicable to ANY art field.

      1. get into a field in which you can believe in the work product produced.

        The work product of patent attorneys was pretty good until the doors were opened to all this ridiculous “use a computer to perform this l0gic” g@rb@ge.

        The next thing we know we’ve got a huge class of speculators and free riders drafting claims to endless reams of otherwise ineligible nonsense being practiced “over the Internet”.

        Why is any attorney required to “believe in” that junk? That’s a rhetorical question. What’s difficult to believe is that there are still attorneys around pretending that this “do it on a computer” junk isn’t actually junk. On the other hand, when these same attorneys (or people pretending to be) are scurrying around the Internets in 2016 (!!!) saying stuff like “It’s eligible because it’s a process” then it’s safe to say that we’ve seen everything.

  6. …and look it here – MORE actual physical parts of claims “magically” “Gisted” into “Abstractness.”

    Yay “logic.”

    1. MORE actual physical parts of claims “magically” “Gisted” into “Abstractness.”

      Nope, those physical parts are all still there. You can even feel them with your tiny soft hands, “anon”! Amazon won’t mind.

      Bu those old physical parts won’t rescue ineligible junk like this:

      “a right to access”
      “a collection of instructions” <– how skilled artisans refer to software
      "list of network locations"

      Pretty basic stuff, and really easy to understand provided you want to understand you're not comatose or passed out. Pretending that you can't understand this is kinda sad in 2016. And pretty soon it's going to be 2017.

        1. Except they are not there

          Maybe not on your planet. But here on Earth I can assure you that all that old hardware is still old, and it’s still there.

          This isn’t a difficult legal issue. If you can’t understand what’s going on, you probably shouldn’t be commenting on a patent blog. Now go to item 2 on your script and rant about the Supreme Court like a two year old.

  7. Plainly the correct result. But I want to clarify something in Dennis’ write-up that might be a tad confusing:

    In Enfish, the court considered technological inventions and queried whether the invention represents “an improvement in the functioning of a computer,” or merely “adding conventional computer components to well-known business practices.” Here, of course, the invention uses more than just a “computer component” but the court still found Enfish applicable (emphasis added)

    I realize that there is more explanation following this passage but the term “but” doesn’t apply here. There is no “but.” The claim doesn’t fall into Enfish’s limited “safe harbor” of “improving (setting aside for the moment the fact that this safe harbor is clear as mud, which must drive the Alice-h@ters up the wall … because they’re all about clarity!). And, as the opinion recognizes, the claim has a huge Alice/Mayo problem. Nothing in Alice or Enfish suggests that adding additional old components to “a computer”, connected as taught in the art, will impart eligibility to an otherwise ineligible “do it on a computer” claim. As Dennis notes, Enfish affirms that aspect of Alice.

    By the way, also correctly tanked today under 101 (Rule 36 decision) were the patentee’s claims in Broadband iTV, Inc. v. Hawaiian Telcom, Inc. (Judges: Newman, Dyk, & Taranto).

    I wrote about the oral arguments here. The patentees position in that case was that the claims were eligible because one of the processing steps was performed by a different entity than in the prior art (news flash: assigning old roles to new entities is not techn0l0gy). “Do it remotely” is going to have a very short lifetime as an argument for eligibility.

    link to patentlyo.com

    The oral arguments were heard prior to the McRo decision so, thankfully, we didn’t have to listen to the patentees recited a script about “there was no preemption because limited rules.” That script is going to be become extremeley tiresome to pretty much everybody on the CAFC in a month or two.

    1. A few words got left out of my comment somehow. Passage in third paragraph should read:

      “The claim doesn’t fall into Enfish’s limited “safe harbor” of ‘improving a computer’s content-independent computing functionality’ …”

    2. Would have been helpful for Newman to reason out why this application of technology at a particular node is so much less deserving than Bascom’s application of technology at a particular node. But that’s why being on the CAFC is such a great job!

      1. Would have been helpful for Newman to reason out why this application of technology at a particular node is so much less deserving than Bascom’s application of technology at a particular node.

        Indeed. Except that there’s no convincing answer to that question. The Bascom balloon is already deflating.

  8. In sum, the patent in this case is not directed to the
    solution of a “technological problem,” Alice, 134 S. Ct. at
    2358, nor is it directed to an improvement in computer or
    network functionality, see In re TLI Commc’ns LLC Patent
    Litig., 823 F.3d at 612. It claims the general concept of
    streaming user-selected content to a portable device.

    It seems, based upon the above logic, that Alice step one is met because the claimed subject matter is neither directed to a solution of a technological problem nor to an improvement in computer or computer functionality.

    Of course, because this essentially is a method claim, the details of the Internet and or computer systems involved will be claimed at a functional level. Thus Alice step two will always fail to the extent that it requires some detail about the computers or computer systems involved.

    While “technology” and “technological” are not defined in the law, these are terms that are understandable at least in the gross. With refinements such as this one, the Federal Circuit is putting a lot of meat on the bones of Bilski/Alice. Particularly, it seems that methods that are not clearly involved with making money are now deemed to be ineligible because they do not involve “solutions to ‘technological problems.'”

      1. Anon, you know I would prefer the courts to limit the term technological to the four classes such that the claim would have to provide something new or improved with respect to machines, manufactures and compositions and that make these or use these to produce a new physical result.

        1. I know that you would “prefer” to not give full credit to what Congress did in 1952, and that you would want MoT to make the “Process” category into a mere handmaiden of the other three categories.

          Except that is not what happened in 1952, and the “Process” category is not only every bit as equal as the other categories, Congress also expanded the notion of “Process” when it wrote 35 USC 100(b).

          This is something though that YOU refuse to listen to, or acknowledge.

          This also means that “what you want” is simply not in accord with the law as written by Congress.

          Let me know when you want to treat this subject with the minimum inte11ectual honesty required.

            1. Nothing fantasy about it Ned.

              You continue to live in a fantasy world, NOT listening to anyone else, disregarding 35 USC 100, disregarding how and where 103 came from (and the Legislative notes explaining it), disregarding the historical perspective from one of the authors of 1952, and disregarding all the other counter points I have presented to you.

    1. Super compelling stuff!

      And thank goodness you’re not in the business of defending the worst patents ever granted, as asserted by the lowest b0ttom feeders any patent system has ever had to deal with.

      You’re a very serious person and your helpful comments are sure to inspire thoughtful clerks around the nation as they struggle to understand subject matter eligibility, undoubtedly the most difficult concept in the world for a tiny tiny handful of rich people.

      1. Yes Macolm, as explained previously, one CAN comment on the law and the “legal logic” (or absence thereof) without “defending claims” OR even caring about who may own the property that those claims may belong to.

        It’s a little thing called “discussing the law.”

        You might try it sometime.

        1. one CAN comment on the law and the “legal logic” (or absence thereof) without “defending claims”

          Or using verbs, apparently.

          LOL

          Keep digging, “anon.”

Comments are closed.