Your List of Lists is not the Disclosed List

AppleScreenIn re Lemay (Fed. Cir. 2016)

In a divided opinion, the Federal Circuit has sided with Apple Inc. and reversed the Patent Trial & Appeal Board (PTAB) — finding that no substantial evidence supported the USPTO’s factual findings regarding what was taught by the prior art.  Application No. 11/968,067 (2007 priority date).  The application here is one of 75+ that all claim priority to the same 2007 provisional application.

The claims at issue here relate to a method of displaying a “list of information about online video items” on a touchscreen.  The method includes scrolling after a “moving finger gesture;” requesting an online video after a “tap gesture” in one location; providing further information about the selected video after a different “tap gesture;” and displaying a different list of information after a “finger gesture on a respective icon.” The Board held that the combination of prior art references (Cook and Saarinen) taught each of the claim limitations and that the combination would have been obvious to a person of ordinary skill in the art.

Mapping of prior art onto the claim elements is sometimes tricky.  Prior art provides images, charts, and disclosures – but patent claims focus on boundary lines unique by design.  That said, the standard of appellate review makes it difficult to challenge PTAB findings as to what is taught by the prior art.  PTAB factual findings are generally upheld on a appeal if supported by at least a scintilla of evidence – substantial evidence.

Here, the Federal Circuit sided with the patent applicant – finding that the prior art failed to teach a “list of information” that corresponds to online video items as claimed.  The specification explains that this might be a listing of “most viewed” videos or “Pokemon theme music” videos.

The opinion is something of a confusing shame – essentially ends up arguing the impossibility of a list of lists. The court writes:

If each of the three sets of title, artist, and price information constitutes one of the “lists of information,” it cannot also be correct that the search results as a whole (i.e., “Mandy More,” “I Wanna Be With You,” and “Now That’s What I Call Music! 4”) constitute one of the lists.

Claim Construction: The dissent by Judge Moore identified the issue as one of claim construction — she would would have interpreted the claims slightly differently (and in a way suggested by the PTO) that the claimed “corresponding list of information about online video items” need not be associated with the set of icons as suggested by the majority.  She writes: “Understanding claim 1 in this way, I would hold there is substantial evidence to support the examiner’s finding, adopted by the Board, that these limitations are disclosed in Cook.”  This interpretation is also appropriate according to Judge Moore under the broadest reasonable interpretation of the claims given to terms during prosecution.

27 thoughts on “Your List of Lists is not the Disclosed List

  1. wherein a triple finger tap causes the list of artists to be ranked in terms of a popularity attribute, wherein said popularity attribute is assigned a value according a first criterion

    Can I haz patent now?

  2. Setting aside “use prior art technology to get this information displayed” type claims which are 100% pure junk, can we pause for a moment to question why these s00per d00per “innovative” companies need both the government handout in the form of a junk patent and enormous cash/public subsidies as well?

    link to bloomberg.com

    This week, technology industry veterans proposed a ban on human drivers on a 150-mile (241-kilometer) stretch of Interstate 5 from Seattle to Vancouver. Within five years, human driving could be outlawed in congested city centers like London, on college campuses and at airports, said Kristin Schondorf, executive director of automotive transportation at consultant EY. …. To speed the transition, governments may give drivers financial incentives to replace their cars with autonomous vehicles, similar to the Cash for Clunkers program offered in 2009 to get gas guzzlers off the road, Google’s Medford said

    What an incredible bunch of sleazy con artists.

    1. Not sure exactly what you think is a “con” (let alone a “sleazy con”).

      Maybe you would do more than share your feelings…?

      1. Not sure exactly what you think is a “con”

        Well, for starters the cons are sleazebags peddling their “self-driving cars” that aren’t really “self-driving” at all unless “self-driving” includes driving off the road when it rains or causing an accident because a newspaper is blowing across the road.

        And then there’s the ethically bankrupt con artists filing patent applications on junk like “automatically” signalling to a pedestrian that the robot car is about to move forward (that’s actually kind of advanced for these b0ttom-feeders).

        1. Your first paragraph is off because you don’t want to use the terms as they are understood by a Person Having Ordinary Skill In The Art (not a new issue with you)

          Your second paragraph is off based on your volunteered statements that ALL software claims are per se not eligible (and your gen eral anti-patent feelings).

          You have added nothing new – and nothing that you have not CRPPED out on these thread a gazillion times already.

          But also, those are merely your feelings, and really do not answer my question put to you.

          1. Your first paragraph is off because you don’t want to use the terms as they are understood by a Person Having Ordinary Skill In The Art

            LOLOLOLOLOLOLOLOLOLOLOLOLOLOL

            Tell it to Frank Baressi.

            link to theguardian.com

            According to Tesla’s account of the crash, the [self-driving] car’s sensor system, against a bright spring sky, failed to distinguish a large white 18-wheel truck and trailer crossing the highway.

            But “anon” is all about “patent quality”, folks. He’s not a shill for the world’s lowest b0ttom feeders. Nope.

          2. Your second paragraph is off based on …. your gen eral anti-patent feelings

            He’s your best and brightest, software patent l0vers. Keep the laughs coming.

  3. When did the PTO start giving patentable weight to limitations relating to information content and/or design choices about how to present information?

    The opinion is something of a confusing shame

    That’s true of pretty much every CAFC opinion that finds absurd computer-implemented g@rbage like this to be valid.

    The US patent system is a j0ke.

    1. “The opinion is something of a confusing shame ”

      I dare say the same could be said of Bilski, Alice and Mayo and any confusion here stems from one or more of those.

      GIGO

      LLAP

    2. “When did the PTO start giving patentable weight to limitations relating to information content and/or design choices about how to present information?”

      The current MPEP appears to purposefully drafted to provide no clarity on what constitutes non-functional material.

      1. Ben, that’s because functional v. non-functional material (e.g. information) is impossibly uncertain to classify when the information is used by human beings for purposes unique to each person.

        Enfish, DDR, etc. are dead ends because “technology” has no fixed definition and “technical solutions to technical problems” has no fixed definition. Alice/Mayo solve a real problem, but it’s the wrong problem in the context of subject matter eligibility.

        Abstraction at eligibility means the invention is literally too abstract to meet one of the four statutory categories. Mayo/Alice does not address this question.

        Abstraction at patentability means the claims don’t rise to the level of an invention because they are too broad, or too preemptive, or inherently obvious, or depend for novelty on an item of information or an arbitrary distinction. Mayo/Alice addresses this question reasonably well.

        If we wish to allow patents on computer implemented inventions whatsoever, that means that some processes that are abstract will need to be considered eligible. I have used the MPEG patents as examples, or encryption, or network standards, etc. These inventions are entirely composed of information except for means plus function elements to run the processing.

        How can some information processes be abstract, but reliably patent eligible and other information processes, just exactly as abstract, be not reliably eligible?

        Simple enough. The CAFC could do it by doctrine or Congress could do it by amending 100(b) to read “no process that results in information consumed by human beings may be patented”

        On a procedural basis, process patents should be construed for a result and the Alice/Mayo test applied at the same time as claim construction: the Markman process should serve as a preliminary finding of patentability that would not foreclose motions for summary judgement after the (horrifyingly expensive) record is built-up. 12(b)6 motions are inadequate for the preliminary finding purpose and should be instead limited to the eligibility context.

        The courts knew the answer had to be in the abstraction doctrine. The tempting value of the threshold function caused an illogical and unworkable conflation of eligibility and patentability- until that is untangled, there will be no reliable way to know what may or may not be patented or how any court is going to look at a given set of claims.

        That ain’t good.

        1. The “Abstraction” doctrine that you reference (more than one type of “abstract”) is a pure fantasy of your own mind and is simply not terthered to any current law as written by Congress.

          Get your “ideas” passed into actual law first. Talk to your Congressmen.

        2. By the way, Mr. Snyder, the “Ends” that you complain about (and kudos to you for at least recognizing something TO complain about – way ahead of the “Ends justify the Means” crowd) comes about precisely because improper means have been used by the Court for them to arrive at their desired Ends.

          Ask your attorney about the Void for Vagueness concept (and if need be, remind him that said concept applies to more than just criminal law, and that laws affecting property are a prime example).

        3. MS Abstraction at eligibility means the invention is literally too abstract to meet one of the four statutory categories. Mayo/Alice does not address this question.

          What question is that again, Martin?

          Try recalling the facts: Prometheus wanted to own the “method” of (1) collecting data using a prior art method and (2) thinking about what the data met.

          You think there was some “question” about whether an abstraction was being claimed in that case? Get real.

    3. MM, I think that it was the PTO not having even raised the argument you made that might have made a bit of a difference here. Remember, they were reviewing factual findings, and all they did was say that the office’s fact finding was in err.

      1. I think that it was the PTO not having even raised the argument you made that might have made a bit of a difference here.

        No doubt about that.

  4. 1) Why does the decision refer to the application by publication number and not application number.

    2) Why can’t Google/patents “find this patent” 2008/0320391 ?

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