Thus far, the Federal Circuit has successfully ducked any direct holding on whether eligibility under 35 U.S.C. 101 is a “condition of patentability” or a proper invalidity defenes. Professor Hricik and I raised these issues in a number of posts back in 2012.
- David Hricik, Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
- David Hricik, Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense
- Dennis Crouch, Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure?
- David Kappos (Response), PTAB and Patentability Challenges
Following Hricik’s proposal, patentee and DJ Defendant RMail raised the issue in district court. [LINK] The district court followed tradition and held that ineligibility is a defense that can be raised in a district court challenge to patent infringement. After losing on the merits (summary judgment) the case is now on appeal and RMail again argues that “Ineligibility is not a litigation defense under §282(b).” In its brief, RMail writes:
Patent defenses are statutory. If a patent defense is not denominated within the Patent Act, then the Court lacks jurisdiction to address it. See Aristocrat Tech. Section 282(b) . . . enumerates the defenses that may be raised in a patent infringement action. . . . [T]he
plain language of §282(b)(2) does not authorize ineligibility as a defense.
A stumbling block for the patentee here is the Versata decision which held that the PTAB has authority to decide Section 101 challenges in a CBM review. The newly filed brief distinguishes that case, however, by arguing that “Versata relies on the legislative history of the AIA . . . not the legislative history of the 1952 Patent Act, which enacted §282(b)(2).”
In the end, I expect that history and tradition are strong enough to overcome the statutory gap, but it would be nice to see an explanation from the Court.
Read the brief: RMAIL 101 Challenge.
the following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded…
The statute seems to read that the listed defenses shall be, as opposed to be might be, defenses and that they shall be pleaded. The pleading aspect IS important.
Most critically, the statute does not say “the following shall be THE defenses.” The way the sentence is structured leaves open the possibility that there are other defenses in a patent case involving validity or infringement.
Thus if the the claimed subject matter is not directed to subject matter patentable under 101, is the patent invalid? Certainly not; and the question of whether 101 can be raised as a defense to infringement is not resolved by a determination that 101 is not a condition of patentability as specified in part II of 35 USC.
Sounds similar to the argument I supplied on the Hricik side long ago (albeit I used a different section of the statute).
Expressio unius est exclusio alterius. The reason 101 was excluded is that it, like utility, was intended originally to be an extraordinarily low bar or coarse filter.
Prior to Bilski 101 was a footnote in patent law.
Subject matter eligibility, that is.
Absolutely – two relatively easy to meet items:
1) utility (within the Useful Arts – which does include business methods and software)
2) fits at least one of the B R O A D gen eral categories.
That is it.
The simple facts are that prior to the last few years, challenges under 101 were basically unheard of. Decades of silence on 101 prior to Bilski speaks volumes. 101 is just a convenient means to an end. There were few legislative and/or common law obstacles to using it in a way that it had never been used before. Permissive judicial behavior is the only reason that it has been allowed to go this far.
It is arguable that it is more than just “permissive” behavior by the judicial branch.
This seems like a fairly straightforward case – Sect. 101 should certainly be a defense. Are there any better arguments out there than the patentee raised?
Patent defenses are statutory. If a patent defense is not denominated within the Patent Act, then the Court lacks jurisdiction to address it.
Eh, all it does is turn eligibility challenges into constitutional challenges. Such a non-issue.
Lol – Constitutional issue, you say…?
Your past sojourns there have been, shall we say, lacking.
You do realize that a statutory law found unconstitutional is not up for “line item amendment” and rewriting by the the judicial branch, right?
(And this is quite aside from any discussion of the AIA – this concerns the pre-AIA statutory law – and an extra reminder: brush up on the distinction between common law and statutory law)
“You do realize that a statutory law found unconstitutional is not up for “line item amendment” and rewriting by the the judicial branch, right?”
The courts are however empowered to “interpretate” statutes so that they are considered to be constitutional. Happens all the time brosefus.
Great – but that is decidedly different than what I said.
Interpretation is not writing.
A method of authenticating a dispatch and contents of the dispatch transmitted from a sender to a recipient, comprising the steps of:
sending content data representative of the contents of the dispatch, and, a destination of the dispatch associated with said recipient, to an authenticator functioning as a non-interested third party with respect to the sender and the recipient, to be forwarded to said destination;
receiving a representation of authentication data that has been generated by said authenticator, said authentication data comprising a representation of the following set A of information elements: a1?comprising said content data, and dispatch record data elements a2, . . . , an which includes at least an indicia a2 relating to a time of the dispatch which is provided in a manner resistant to or indicative of tampering by either of the sender and the recipient, and an indicia a3 relating to said destination of the dispatch,
wherein at least part of said authentication data is secured against tampering of the sender and the recipient, and
wherein said authentication data includes a set B comprising one or more information elements b1, . . . ,bm generated by respectively applying functions F1, . . . ,Fm to subsets S1, . . . ,Sm comprising selected portions of said set A, where said functions F1, . . . ,Fm can be different from one another and said subsets S1, . . . ,Sm can be different from one another, and wherein said authentication data does not comprise an encrypted representation of said content data and said dispatch record data which is encrypted with a secret key, either symmetric or asymmetric, associated with said recipient.
Or, eliminating all the silliness about the content of the data:
A method … comprising the steps of:
sending content data… to an authenticator … to be forwarded to said destination; and
receiving a representation of authentication data that has been generated by said authenticator.
This is a claim that protects “new” information, transmitted with old techn0logy.
Even if it were somehow held that this junk couldn’t be deemed “ineligible” under 101 in a District Court, why couldn’t a District Court declare it unenforceable as an abuse of the patent system? You can’t protect information with a patent. Everybody knows that. Dennis knows that. David knows that. Even the patentees here know that. But that’s exactly what they’re doing when they assert this junk.
Alternatively, of course, you just throw the junk into 103 and give the content zero patentable weight as you would with any other claim that recites old technology plus “new information” (e.g., an old kit with new instructions). Same result. Oh but wait! We have to give the super shiny comp00terizin’ patentees a chance to come up with some special “exception” that’s totally not judicial activism … because super shiny comp00terz.
So much straw stuffed in that comment, there should be a fire danger sign…
MM, since the threads can’t be unified lets go around again. I take it your position is that all of the MPEG and encryption patents are abstract under 101? They are nothing but methods of organizing information: completely abstract.
In my scheme, the above method is eligible because the utility of the information is realized by consumption of the information by a non-human actor(s).
The method is likely abstract under Alice because its an idea about an invention, rather than an invention- as you found. No need for 101 because it fails 112- for not teaching PHOSITA an invention or 103 because it would be within the easy skill of PHOSITA to know that those steps were required or available to meet the need.
A method … comprising the steps of:
sending content data… to an authenticator … to be forwarded to said destination; and
receiving a representation of authentication data that has been generated by said authenticator.
But no PHOSITA is going to “know” how to encode an MPEG or reliably create a crafty encryption algo, or for that matter, a billion other useful algos in the ages to come.
I take it your position is that all of the MPEG and encryption patents are abstract under 101?
I haven’t read all the claims relating to MPEG or encryption so I can’t say.
They are nothing but methods of organizing information: completely abstract.
Then they are in serious trouble, eligibility-wise.
[shrugs]
no PHOSITA is going to “know” how to encode an MPEG or reliably create a crafty encryption algo ….. or a billion other useful algos in the ages to come.
That’s ridiculous.
“I haven’t read all the claims relating to MPEG or encryption so I can’t say.”
Bah – you don’t need to read the actual claims to get to that “Gisted” state. Your “answer” is a clear cop out.
Your [shrug] also avoids the discussion that Martin tried to hold with you before (another cop out).
Your last comment – sounds fun – and sounds in the item that you typically run away from (from me): does [Old Box] have all those “algos in the ages to come” inherently “already in there?”
US7400681 (MPEG)
1. A method for predicting motion vectors associated with blocks of pixels of a picture to be included in a data stream for differential motion vector coding of a video signal, said method comprising the steps of:
organising a set of reference pictures into a pair of lists and according to each reference picture within said lists at least one reference index;
associating with selected ones of said blocks in said video signal at least one motion vector that references a respective one of said lists, each vector associated with a selected one of the blocks referencing a different list of said lists, each vector defining disposition of said selected one of the blocks relative to a reference picture in the respective one of said lists; and,
computing a predicted value for a current vector of said vectors for a current block from vectors of adjacent blocks referencing a same list of reference pictures as the current vector, wherein prediction of a motion vector that selects a reference picture using a first list of reference pictures is not dependent upon motion vectors whose reference pictures are selected using a second list of reference pictures.
US 7,346,156 B1 – A non-MPEG patent, but an abstract information invention that I think should be a patent-eligible.
1. A method comprising: detecting an identity of a caller; receiving an assigned incoming telephone number; identifying a recipient associated with the assigned incoming telephone number and the identity; and connecting the caller and the recipient, wherein said caller has a plurality of assigned incoming telephone numbers to choose from, at least one of said plurality of assigned incoming telephone numbers being associated with said recipient, wherein each assigned incoming telephone number is associated with multiple recipient telephone numbers, a particular telephone number of a recipient being determined solely by a particular assigned incoming telephone number used by a particular identified caller and without input of further data by said caller, whereby said caller is not required to be within a particular network for making calls.
Martin,
Do you really expect a straight answer from Malcolm?
I expect silence or a straight answer, yes.
You might try one yourself some time.
We get absurd, unjust results when any new and useful information can be patented, but almost all of us, including the most powerful judges, recognize that some new and useful information should Constitutionally be patent eligible as inventions.
So how would you distinguish the eligible from the not eligible if you don’t dodge the premise?
Does rejecting the premise count as dodging it?
How about instructing you that you simply need to recognize the actual patent concept of utility, and then avoid those things that are TOTALLY in the mind?
Totally because you say so? In any case, you essentially are endorsing my point in the instance of process patents.
Processes cannot be processes without a result. Sans an intended result, once cannot have a “step” or movement toward a result. Since a patent can only contain one and only one invention, intermediate results are not inventions, so all steps must be toward the invention. Thus the result of the process represents the statutory utility requirement of a process invention.
If the utility of the result resides in a human mind, the method cannot be patented. That works for me.
Because I say so – that and I understand the law and have provided statutory references, references by the architects of the 1952 Act, and even critical analysis of case law, but yeah, because I say so.
Your “just say so” on the other hand is based on your “feelings” and a stubborn and perverse desire to NOT understand the law or its history.
You will have to excuse me for having the better “just say so .”
And no – my views do NOT adhere to yours. You may have some small snippets that adhere to mine, but I have been at this far longer than you (I was here first and I was here with knowledge).
And please note that you are STILL misunderstanding “utility.”
September 28, 2016 at 2:51 pm
More classics of the genre. Wonderful.
How is that a reply, Martin?
Maybe you want to make up some more stuff and simply say “this should be the law”….?
Lordy I wish there was one board where all the subject matter threads could be unified. A lot of repetitious argument could be better used on more creative personal attacks etc.
As to the merits of this case- it’s the dog that does not bark. If the claimed subject matter is ineligible, but that is not a defense, than what is the meaning of eligibility? Are the claims then a legal nullity, as if they never existed? Then the case goes out for lack of standing rather than non-infringement. What’s the difference?
Scalia asked if an invalid patent CAN be infringed? I tend to think yes, because validity and infringement are two different analyses.
What’s the difference?
The difference is that Hricik gets to say that he was right about something related to subject matter eligibility.
Party hats.
The arguments would not need to be repeated if the counter points were not run away from (by Malcolm and the Echoes)
Also, I previously suggested something similar to Prof. Crouch (but more in the way of shunting the “script” propaganda that certain sAmeones who really don’t say anything new – or anything worthwhile in the legal sense, i.e. Malcolm and the Echoes) out of the way of actual (and inte11ectually honest) dialogues.
Seeing “an explanation” is hardly worthwhile unless that “explanation” gets it right (or acknowledges what authority is being used to “scriven” with)
Hah hah, those Loki-like scriveners and their scrivening tricks.
Their scrivining “tricks” are horrible and have rendered the nose of wax of 101 into a heaping slag of contradictory and unsustainable “know it when I see it,” Void for Vagueness excrement.
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