Does the Patent Statute Cabin-in the Abstract Idea Exception? (Yes)

by Dennis Crouch

In a new Supreme Court petition, Trading Technologies (TT) has again challenged USPTO and Federal Circuit eligibility determinations.

TT v. Lee asks the following question:

Given that 35 U.S.C. § 100(b) sets forth that a patent eligible “process” includes a “new use of a known process, machine, manufacture, composition of matter, or material,” did the Federal Circuit err by holding that an indisputably new and non-obvious use (i.e., game steps) of an existing manufacture (i.e., playing cards) was patent ineligible under Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)?

The underlying appellate decision In re Smith involves a patent application claiming a new method of playing Blackjack. The new approach offered by offers ability to bet on the occurrence of “natural 0” hands as well as other potential side bets.  Claim 1 in particular requires a deck of ‘physical playing cards” that are shuffled and then dealt according to a defined pattern.  Bets are then taken with the potential of more dealing and eventually all wagers are resolved.  The Federal Circuit affirmed the PTAB/Examiner determinations that the claimed method of playing cards constitutes an unpatentable abstract idea. As I previously wrote:

The court held that a wagering game is roughly identical to fundamental economic practices that the Supreme Court held to be abstract ideas in Alice and Bilski. . . . Following the Board’s lead, the appellate court then found that the “purely conventional steps” associated with the physical act of playing cards do not “supply a sufficiently inventive concept.”

Important for this case, the court noted that some card games are patent eligible, but that universe appears to be limited only to patents claiming “a new or original deck of cards.”  Of course, the patent statute expressly states that processes are patent eligible – and that set of eligible processes “includes a new use of a known process, machine, manufacture, composition of matter, or material.”  35 U.S.C. 100(b).

Above the Statute?: An important fundamental question is whether the eligibility exceptions of Alice and Mayo supersede the statute.  Some argue that their origins are Constitutional – embedded in the “discoveries” limitation and thus control the law regardless of the statutory text.  But the Supreme Court has repeatedly indicated that the abstract idea and law of nature exceptions are grounded in the 35 U. S. C. §101 (despite the absence of express language).  Under a plain language interpretation, these atextual exceptions should not be extended so far as to conflict with the statute — especially the express definitions of §100(b). Thus, TT writes:

Under the statute, new processes that use conventional equipment or materials are clearly patent eligible subject matter. 35 U.S.C. § 100(b) (patent eligible processes include “a new use of a known process, machine, manufacture, composition of matter, or material.”). This Court has never abrogated § 100(b). And Alice did nothing to change this. Indeed, to fail the first step of the Alice test, a claim needs to tie up an “abstract idea,” which for purposes of this test was defined to be a preexisting practice that serves as a fundamental “building block of human ingenuity,” such as a “longstanding” and “prevalent” economic practice. . . . The Federal Circuit has improperly extended Alice step one to claims that indisputably recite a new set of game steps that was not preexisting, let alone “fundamental.”

My own take is that the Constitutional intellectual property clause probably does have some teeth and – as an extreme example – would not empower Congress to authorize patents covering abstract ideas as such.  That said, Congressional power certainly extends to authorizing the grant of patents covering the types of inventions being identified as abstract ideas under Alice Corp such as the blackjack game at issue here.

[In re TT – Petition]

DISCLOSURES – The petition was filed by my friends and former colleagues Leif Sigmund and Jennifer Kurcz at the MBHB firm and the firm is a paid sponsor of Patently-O.  I also represented TT in other matters up until 2007.  That said, I have not discussed this particular case or my here with TT/MBHB other than to request a copy of the petition after I noted its filing.

About Dennis Crouch

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

279 thoughts on “Does the Patent Statute Cabin-in the Abstract Idea Exception? (Yes)

  1. This is for Professor Crouch. I’m unfamiliar with the expression “cabin-in” and have been unable to find a definition for it. What did you mean by the use of that phrase?

    1. I believe that he may be using that phrase as it was used in the Bilski decision when that case indicated what the case of Diehr did to the prior cases of Flook and Benson (e.g., curtail or limit the applicability or power or reach of).

      1. So, the real title is “Does the Patent Statute Limit the Abstract Idea Exception? (Yes)”?

        I also had no idea what “cabin-in” meant, having never heard of it before. I simply ignored it, since the answer of “Yes” is already there. I could therefore derive the meaning from reading the rest of the text. I also assumed that the title was there merely to provoke people into histrionics.

        The problem, though, is that the patent statute seems to be ignored by the Supreme Court. For instance, they seem to have read out the fact that invention could mean discovery. The term discovery is basically gone. Also, they went from “anything under the sun can be patented” to “only those things that fit our ideas of what should be patented can be patented, but we’re going to explain those ideas to you in such arcane language and with such poor reasoning that it’ll be impossible for you to define what is and is not patentable, except in very limited instances.”

        1. As mentioned PatentBob, the word “cabin” has been used previously in the context of patent law (in 101 Supreme Court cases specifically).

          No “histrionics” required.

          (and yes, your further comments as to the Court muckery are accurate)

  2. Looking at how disjoint this thread has become, I have to wonder what this thread would look like had the good professor taken my previous advice and merely shunted the dogmatic (and off-topic) rants to some other place on the blog.

    I think that there are still some university students down at the local coffeee house who could set that up over the weekend for the small price of a few pizzas.

    “Make it so”

    😉

  3. OT, but it appears that *none* of the roughly 25 oral arguments heard by various CAFC panels in California last week (Oct. 4-6) were recorded. Either that or there is some extra lengthy delay in getting them uploaded.

    If anyone knows whether those hearings were unrecorded, please advise (seems like a pretty easy thing to set up in 2016).

    1. MM,

      This happened last time they went on a roadshow. Because they’re not in their usual location, takes some time to get the audio posted. I’d expect the files within a week.

  4. Almost 300 comments (much more if you count the flushed Malcolm ones and the rebuttals to those), and it appears that only mine and an extremely small handful of others are actually on point to the item of this thread.

    Ask yourself what is so threatening about 35 USC 100(b) and the plain definition of process that generate so much dust-kicking?

  5. Since you seem to spend most of your waking day on Patently-O, why don’t you take some of that time to expand your vocabulary. Try looking up “monomania” on an online dictionary. A useful word.

  6. Regarding the awesomeness of entities owning exclusive rights to “limited” rules as applied to specific situations, what could possibly go wrong with this?

    link to autoexpress.co.uk

    Future autonomous Mercedes vehicles will prioritise saving their own occupants in no-win traffic situations, its safety executives have told Auto Express.

    The tricky moral question continues to be debated by lawmakers, ethicists and lawyers, but for Mercedes’s Manager of Driver Assistance Systems, Active Safety and Ratings, the answer couldn’t be clearer.

    “If you know you can save at least one person, at least save that one. Save the one in the car,”

    So Mercedes will own the rule that says “When faced with choice between hitting truck head on and wiping out mother pushing baby carriage, hit the mother and child.”

    And Prius will own the rule that says “When faced with choice between hitting truck head on and wiping out mother pushing baby carriage, hit the mother and child unless (a) instructed otherwise or (b) data has been received, wherein data indicates that driver has a terminal illness and is going to die soon anyway.”

    Limited rules! So awesome. Is it too early to write the obituary for McRo? Of course it isn’t.

    1. After reading your diatribe, I am still unsure what’s wrong with having rights to those “rules”. Could you be more clear?

      1. I am still unsure what’s wrong with having rights to those “rules”.

        And this is why I love the fact that Dennis keeps you around.

        Priceless.

  7. As I said when it first came up, this case was wrongly decided. I’m not sure I buy that it was a systemic error, but the subject matter was eligible.

    1. The problem is at pgs 5-6 of the decision where the court concludes “The claims here require shuffling and dealing “physical playing cards,” which Applicants argue bring the claims within patenteligible territory. J.A. 10–11. We disagree. Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are “purely conventional” activities.”

      It’s true that “shuffling and dealing” are conventional acts, but when considering the claim as a whole the particular order of shuffling, dealing and betting is unconventional in a relevant manner. It should have passed Step Two of Alice.

      The court then goes on to say “That is not to say that all inventions in the gaming arts would be foreclosed from patent protection under § 101. We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.”

      I don’t think that the presented question fairly tracks the opinion. The opinion said that “shuffling and dealing” were conventional. They are. The claims claimed a particular type of shuffling and dealing which was not considered and is error. But the court did not make a sweeping statement that you necessarily had to have new pieces to achieve eligibility (contrary to what both the presented question and how this site headlined the opinion). The court said that one manner in which you could achieve eligibility would be to do those things.

      The case was wrongly decided, but the Supremes don’t take every wrongly decided case. I’m not sure the systemic problem exists here which the petition makes it out to be. The opinion didn’t sweepingly hold that new uses of an existing manufacture are always ineligible, the opinion held that the manufacture was existing, the genus of claimed uses of the manufacture was existing, and (implicitly) found that the specific uses of the manufacture were not enough to be significantly more. The last finding was wrong but is also extremely particular to the facts.

      1. RG the specific uses of the manufacture were not enough to be significantly more. The last finding was wrong

        No, it wasn’t. Show everyone the claims. Then posit the simplest scenario upon which the claims read. That’s how you do the analysis.

        Given the “technology” here, the CAFC for once didn’t fall into the facile trap of reading the claim as if it was limited to a very complicated situation, as it typically does when presented with a shiny computer claim (e.g., interpreting the claim to apply only to a situation with “millions of users”).

        1. Show everyone the claims.

          There’s a link to the previous post. The previous post has a link to the opinion. The opinion has the claims. The claims are 9 particular steps. Most, if not all, of those steps are conventional acts. But when considered as a whole, the act is not conventional. I would assume obviousness was passed based on the claim-as-a-whole here too, rather than a particular non-obvious act.

          Given the “technology” here, the CAFC for once didn’t fall into the facile trap of reading the claim as if it was limited to a very complicated situation

          Something doesn’t have to be complicated to be directed to an inventive concept. Nor is there any reason to harp on it being directed to the use of a 52 card deck. If I invent a lightsaber, and the lightsaber includes a screw, the claim is eligible whether I couch the subject matter in terms of my unique structure which includes a screw or whether I couch it in terms of my old screw which is put into a unique structure. Eligibility does not depend upon the scrivener’s skill. Either a scope is eligible or not, it doesn’t matter from what angle you view it. It’s not proper to categorically say that an old deck utilizing new methods is ineligible unless you can categorically say that new methods which use old items is ineligible, which clearly is not the case.

          1. RG: Something doesn’t have to be complicated to be directed to an inventive concept.

            Nobody is saying otherwise. Certainly I never said that.

            I’m saying that if you’re claim reads on a physical situation that is in the prior art, the fact that you’re layering some “new meaning” on top of that situation will never save the claim from ineligibility.

            This is a pretty straightforward logical application of fundamental patent law. I’m happy to provide reams more simple examples for you. There are an infinite number of them, of course, and they are very very very easy to devise. That fact is just one of the many reasons that new game rules applied to a standard playing card decks are ineligible. Going further, it’s a great reason to keep games out of the patent system, period (and the utility requirement also helps with that).

            1. The “layering of new meaning” language…

              …means what exactly?

              That you don’t have to take the claim as a whole?

              That you can “Gist” away the parts of the claim that you don’t like?

              1. …that you can move the goalposts and talk as if the claim is ENTIRELY in the mind?***

                *** reminiscent of your recent false accusation, which you backtracked on within 24 hours…

              2. The “layering of new meaning” language……means what exactly?

                It means exactly what I said. Your transparent and feeble attempts to pretend you were born yesterday are going to be ignored. You are free to double down and admit that you are too ign0rant to follow the conversation.

                Here’s an even simpler example.

                I claim:

                1. New structurally distinguished useful object. <- eligible (let's call it "widget")

                Afterwards, you claim

                1. A game, wherein said game comprises transferring ownership of a widget. <– ineligible

                or

                2. A method, comprising using said widget to symbolize safety. <– ineligible

                Get it? I hope so. I think it's pretty easy to understand why a sane patent system doesn't mess around with junk like the latter two claims but I'm happy to explain that, too, if you can't figure it out for yourself. In fact, it'd be a great exercise for you to tell everyone why this is the case. Then we know that there is a tiny glimmer of hope for you. So go ahead! Make everybody's day.

                1. Like the previous exchange, this has nothing to do with myself and what I may understand.

                  This is entirely what YOU mean to say.

                  (you had a really difficult time last time trying to grasp that simple fact – I do not expect your ability to grasp the similar fact this time to be any improved)

                2. Lol right back at you: your first response like totally missed what I replied with and you had to type a second response to try to cover for the fact that you responded completely without thinking.

          2. RG It’s not proper to categorically say that an old deck utilizing new methods is ineligible

            Nobody is saying that, either. For starters, it doesn’t even make sense. A deck “utilizing new methods”? Decks don’t “utilize methods.” People use decks to play games and they’ve been doing so for eons without the patent system being involved. Why is that? Because patents don’t promote squat in the context of making up rules. It’s one of the many reasons that it’s very much worth “harping on” the silliness of such patents.

            unless you can categorically say that new methods which use old items is ineligible, which clearly is not the case

            I agree that, as a categorical matter, it’s “clearly not the case”. But it’s also clearly “not the case” that every method of using an old item is necessarily patent eligible just because at point the “old item” might have been new and eligible. Following along? I hope so. This isn’t very difficult.

            1. just because at point the “old item” might have been new and eligible.

              You put old item in parenthesis – so that you could weasel out of the rather apparent contradiction…?

              I mean, why else would you not type the words normally?

              1. Last time you tried to peddle tht, you were wrong as well.

                This question on form here (as well) IS directly tied to the substance.

                YOUR predilection on form has to do with mere expressive things like bold, italics and capitalization.

                But go ahead and pretend that they are the same. It will be just our little secret how much of an arse you are.

      2. “It’s true that “shuffling and dealing” are conventional acts, but when considering the claim as a whole the particular order of shuffling, dealing and betting is unconventional in a relevant manner. It should have passed Step Two of Alice.”

        I lulzed.

      3. “The problem is at pgs 5-6 of the decision where the court concludes “The claims here require shuffling and dealing “physical playing cards,” which Applicants argue bring the claims within patenteligible territory. J.A. 10–11. We disagree. Just as the recitation of computer implementation fell short in Alice, shuffling and dealing a standard deck of cards are “purely conventional” activities.””

        I agree that what you quoted is a problem, but not for the reason you addressed, or at least not for ONLY that reason.

        It a problem because being purely conventional does NOT make something ABSTRACT.

        1. It a problem because being purely conventional does NOT make something ABSTRACT.

          Naturally, I agree, but one will grow old waiting for the Court to acknowledge this truly elementary insight.

          1. Can (should?) this be taken “implicitly?

            After all, that is how the Court itself started down this road AFTER the Act of 1952 which created the actual section of 101 happened.

    2. the subject matter was eligible.

      Could you refresh everyone on your reasoning? I recall that you had a theory but I also recall that your theory had one gaping factual hole that was a bit problematic.

      1. Sure – within the art of wagering, the manner in which one wagers is relevant. The art distinguishes between Texas Hold’em and Omaha and Blackjack and any other number of games despite the fact that they all “shuffle” and “deal” and “bet.” The particular order and manner of performing those acts is extremely relevant to one of skill. It’s an improper generalization to say that “all shuffles and deals” are the same in the same way it would be improper to say that a pen and paper allow you to write anything and therefore all books are the same, or that all computer codings are the same because they all use the same coding language.

        It was error to say that the acts being performed were conventional and not consider that when the claim was considered as a whole – that the acts were performed in a certain order – it was not conventional. Changing the order and type of shuffling, dealing and betting is not some ancillary feature or uninventive act *as far as the art is concerned*. It constitutes significantly more.

        This isn’t to say that all changes of shuffling, dealing and betting would be eligible. If one played a hold’em game with an extra card in hand (kind of a half way between hold’em and omaha) that game would not be significantly more, because it’s already been shown to be conventional that one can vary the starting hand size. But its a decision on the particular facts, and the court dismissed the particular facts by saying the genus itself (shuffling, dealing, betting) is conventional.

        tl;dr – Some rule changes are eligible. Some rule changes are not eligible. It’s a fact based question. Summarily stating that a rule change is not eligible because it uses conventional acts is error when the court fails to consider the claim as a whole and ask if the ordering of the conventional acts would be an inventive concept to the art. Nobody sits down at a table because they’ll be performing “shuffling and dealing” with a 52 card deck. People sit down to play a particular game, because the particular type of shuffling and dealing is relevant.

        1. the art of gambling on card games

          Promote the progress!

          The art distinguishes between Texas Hold’em and Omaha and Blackjack and any other number of games despite the fact that they all “shuffle” and “deal” and “bet.”

          It’s not relevant to eligibility that some “art” “distinguishes” between different rules for different games.

          It’s an improper generalization to say that “all shuffles and deals” are the same in the same way

          Nobody is saying that. Certainly it’s not what I’m saying. Read exactly what I said in 25.1.1.

          You can’t take an old act and make it eligible by layering a new meaning on top of it. If the simplest game scenario according to the “new rules” is indistinguishable from a prior art scenario except for the “new meaning” layered on top of the scenario, then the claim is ineligible. Basic stuff.

          Let’s look at a simple example. Old card game (“Kings Three”) the first physical act is deal three cards face up to another player. If the three cards are kings, you stop dealing and the dealer wins. Otherwise a “bet is placed” (ineligible subject matter, fyi) and a fourth card is dealt face down. Got it? Now you come along with your super awesome “new” card game called Triple Death. In your card game, the dealer deals three cards face up. In your “new” card game, if three cards are a triple, then the player wins and dealer loses. We don’t need to know the rest of the rules because right there your claim is ineligible. You can’t use patents to “own” (and create liability for) what people are thinking or saying about the “meaning” of cards, period. End of analysis.

          This type of problem isn’t unique to playing cards, by the way.

          1. Your “basic stuff” is only in your mind and has no tie to the law as written by Congress.

            That’s kind of the point here with the immediate case.

            Maybe instead of just mindlessly repeating your mantra (no matter what else has been said by anybody), you actually look at the arguments and points presented in this case…

            1. Your “basic stuff” is only in your mind

              And this is where you are 100% wrong and — again — it’s why you and your c0horts are l0sing case after case after case, and it’s why you are going to continue to lose.

              This “basic stuff” is the mind of every member of the Supreme Court, it’s in the minds of nearly every thoughtful jurist out there, it’s in the minds of tons of practitioners (like myself), it’s in the minds of tons of non-practioners who have spent more than five seconds thinking about it, and it’s in the minds of some of the smartest academics.

              The only “minds” that haven’t digested this stuff are the minds that are willfully closed (because of self preservation) or who haven’t thought about it all or who lack the brainp0wer to deal with it. Or a combination of those.

              And this is not news.

              1. Mindlessly repeated (yet again): “You are wrong because Malcolm declares it so, so you and your cohorts take that”

                Y
                A
                W
                N

                A
                O
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                And yet, you evaded what I asked here and actually engaged the legal arguments on the table.

                Shockers.

                1. …and the focus is NOT “that I am engaged;” rather, the focus is on YOU and your lack of engaging.

                  You are far too mired in your number one meme of
                  A
                  O
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                  M
                  D

                  and need to NOT reflexively change out the subject of the focus like that.

    3. Just to be clear, when you say “this case was wrongly decided,” do you mean:

      (1) merely that these claims should have survived Alice step 2; or
      (2) that these claims really are §101 compliant?

      That is to ask, do you mean to disagree with the point I make below about failing the substantial utility test under Brenner v. Manson, or do you just mean that they should not have failed under Alice?

      1. I suppose 1. I take no position on whether gaming as a whole meets substantial utility. If the court is going to throw out gaming or entertainment subject matter (which is what I think you’re getting at), I could understand that. If they don’t, I could understand that too. But if you’re going to allow gaming patents then this one qualifies.

        1. Got it. I wonder if any authoritative court has acknowledged gaming to be a substantial utility (bracket Juicy Whip for the moment because the discussion of slot machines in that case seems to me to be (1) contrary to higher authority and (2) mere dictum in any event). I know that Callison v. Dean, 70 F.2d 55, 58 (10th Cir. 1934) held that a coin-operated carnival game (a shoot-the-ball type of affair) had substantial utility, but CA10 precedent is not binding on the CAFC.

        2. I take no position on whether gaming as a whole meets substantial utility… But if you’re going to allow gaming patents then this one qualifies.

          As it happens, I do take a position on whether gaming meets substantial utility requirements. I think that gaming is not a substantial utility. That said, your argument above convinces me that you are correct. If one were to allow gaming patents, then this one should be 101-eligible.

      2. Greg,

        I do not think that your substantial utility view is correct.

        You have not commented on the Juicy Whip case, and the instant case makes a valid point about the utility of the gaming industry.

        Unless you want to set yourself up as Supreme Dictator and Evaluator of Morals, I don’t see how your opinion of what has substantial utility can carry any weight.

        Care to share your response?

  8. Worth posting on top:

    Worth noting – and inviting the particular regulars who so often avoid discussing 35 USC 100(b) – most notably Ned Heller – just how extensive this change in statutory category was in 1952, moving the understanding of “process” in just one sense (the “arts,” or mere handmaiden of the hard good categories) into the more modern day understanding of the co-equal and “ordinary” “process as use.”

    No longer “just” a handmaiden.

    Part and parcel as to why Machine or Transformation (MoT) is NOT the law, but merely a clue.

    These are direct words of Congress – and some of us here have long sought a substantive discussion on the merits of these words (while others have routinely ran away from any such discussion).

    (slight change in emphasis)

    1. Personally, I understood “machine or transformation” (or even better, a “concrete, useful, and tangible” result). Meanwhile, I have no idea what’s patentable after Alice.

      It amazes me that after 50+ years, we still have no idea what to do with software (and the hardware that runs that software). Can we (meaning the courts, including the Supremes) meet this concept head-on, instead of running away from it and putting out rules that make no sense?

      1. The words of Congress – without the scrivining of the Court – makes sense.

        Especially if one understands that the law regarding innovation must be open to changes that innovation quite naturally brings with it (the law cannot know a priori what tomorrow’s innovation will look like).

      2. I definitely agree that I knew what was and was not 101 eligible under “machine or transformation,” and that it is a lot harder to know under the Mayo/Alice test. One could say the same thing, incidentally, about TSM and KSR.

        This is definitely a bug, not a feature. The law is supposed to provide stable and predictable forward guidance so that market actors can plan accordingly. The whole point of the patent system is to incentivize R&D investment, and investment is necessarily a forward looking activity. To the extent that one cannot foresee how the law will treat patents 5, 10, 20 years out, this suppresses investment, which is 180° opposite of the intent of the patent system.

        I do wish to quibble slightly, however, with your remark Bob. While I can agree with you that ‘machine or transformation’ is more intelligible than the current standard, I cannot agree that ‘useful, concrete, and tangible’ was somehow “even better.” “Useful, concrete, & tangible” is really just as vague a boundary as Alice. The only difference between the two is “we don’t know the boundary, but the patentee wins” as opposed to “we don’t know the boundary, but the patentee loses.”

        1. There is nothing about the Alice or Mayo tests that isn’t “forward looking”. Put another way, a wide open toothless 101 is not “forward looking”. It’s a disaster waiting to happen. And it did happen.

          If you want a “better” test, the tell everyone exactly what that test is because there is no turning back.

          FYI, you guys can have your whine fest “discussion” about the supreme courts 101 jurisprudence anywhere. You know that right?

          1. I see nothing here from Malcolm of any substantive nature.

            I see “feelings” about what a proper view of 101 would result in.

            I see “ego” in the proclamation that the “Ends” reached by the court will “never change.”

            I see an invitation to NOT discuss things here (in Malcolm’s litter box).

            I see an invitation for others to “do the thinking” and come up with a different system.

            In other words, no change at all from Malcolm’s script; no thinking at all from Malcolm; and total avoidance of any point that Malcolm “feels” to be beneath his desired Ends.

            1. I see “feelings”

              That’s your problem, “anon.” There’s just as much, if not more, substantive analysis in my comment as your handwaving (in 2017!!) about the “direct words of Congress circa 70 years ago that, on their face, make no sense at all.

              I see an invitation for others to “do the thinking”

              Oh, I did plenty of thinking on your behalf for literally years here. In fact, long, long before DDR was decided I suggested some sort of “improves data processing functionality” test as a moderately reasonable backstop to keep something viable while the rest of your “do it on a computer” junk gets tossed into the acid bath. And I pleaded with you guys to come up with more refined tests in that direction but — other than Ned and one commenter whose name I forget — nobody bit. On the contrary, the response was just the usual foot-stamping and insults from the “patent everything” crowd.

              This is actually a rather obvious political problem for the luvvers of software patents. You can’t get your heads together to make a reasonable argument because your base is dominated by loudmouthed know-nothings who demand the world. The result is a steady weakening in support, from all sides.

              As I noted downthread already, this case is a perfect example. You’re going to attack some 9-0 Supreme Court decisions that are never, ever going to be overturned with a claim that protects new rules for a standard card deck? I mean … wow.

              1. Just one example of what I’m talking about:

                We will never abdicate. We will not go quietly into the night. We fight for our constitutional rights. We will fight for our dreams. And God so help us, we shall live them!

                Because freedom and patents on “new” card game rules are inseverable! It’s just like the civil rights movement, except this movement consists pretty much entirely of the same entitled rich white people who have wanted to own everything since forever! Where is the love? LOL

      3. So true. I try to advise clients on 101 rejections, and all I can say is, “the Examiner isn’t wrong, and the Examiner isn’t right.” Make your best argument and move on.

    2. “process as use” is fine, but did they foresee useful processes that were entirely composed of information? I don’t think so.

      As to the hardware/software equivalence- that works against software patent lovers because each new arrangement of circuits (i.e. a program done in hardware) is not novel merely because it is different. Every variation of a basic idea does not get a patent.

      You love saying the idea of software is not software. How about the clear truth that the execution of software does not deliver the utility of software- some act of use (i.e. consumption) of the processed information needs to occur. Those acts cannot fall into the “process as use” because they are not claimed.

      No software patents, but lots and lots of software defendants.

      1. Composed entirely of information…?

        Sounds like you stepped backwards and moved into something that is TOTALLY in the mind.

        Let me remind you: the thought of software is not software.

        1. the computer and the means of programming it are in the prior art- that’s what “generic computing” means. All of the novelty of the method is in the information that is processed by completing the steps of the method, all of which are also in the prior art but not in “the ordered combination”. The steps of the method(s) are entirely items of information, ordered or individually.

          1. (you are also trying to use the “Point of Novelty” in a 101 sense – thus, you are wrong before you start. Hint: what Malcolm has to say on that subject is absolutely wrong, and you should not learn bad law upon which to build your fantasies)

            1. Always this ritual; steer away from any sustained inquiry.

              No, all the possible uses are not in oldbox. The inquiry is if the invention resides in information or not.

              The oldbox and everything physical are unchanged; this is a generic computing environment that needs no fixed definition because its presumed to be 100% in the prior art. It changes with time, but the point is that if there is anything novel other than novel programming it is no longer a generic environment.

              What the newly configured machine can “do” is a form of new utility that can only arise from the use of newly processed information. Thus the invention must be in either pre-or post processed information or within a process step which is entirely information. It can’t be anywhere else.

              As to “point of novelty” and fantasy; an invention has to be distinguishable from the prior art- and in so doing, it will be in some specific, identifiable way. Call it what you will, but the true fantasist will deny it.

  9. I often think that litigators don’t understand the challenge of patent drafting, namely, to anticipate what the courts will be ruling, 20 years into the future. In a case that turns out to be a blockbuster, what we draft today will not reach the Supreme Court for another 20 years. Clients could draft their own stuff but, mindful of the challenge, are nevertheless willing to pay the likes of us, to do a competent job.

    So when the State Street Decision comes down, it opens up a whole new industry, of drafting software patents.

    Then, 20 years later, Alice. No wonder those commentators who have built in those 20 years a lucrative drafting business are hopping mad, and frightened that many clients will be wanting their money back.

    And no wonder commentators like Malcolm, free of the worries of a lucrative drafting business has just gone belly up never tire of posing the rhetorical question, that so needles the zealous drafters : who could ever have foreseen, that things would turn out this way.

    It’s our job to foresee, isn’t it?

    1. You ascribe an emotion (protecting one’s money flow) that is NOT the reason for the angst of the broken scoreboard.

      That’s a rather chickenCRP move.

      That ig nores the counter points presented as to why the scoreboard is broken, and dismisses the problem of the broken scoreboard as if there were no problem at all with the broken scoreboard.

      It is a lemmings way of thinking.

      It lacks the recognition of the problem and the critical thinking that should go into the problem.

      As such, that view is rejected.

    2. Also a repeat – but evidently missed by MaxDrei:

      This is a Separation of Powers issue – and can be restated in the plain language of which branch of the government has been authorized by the Constitution to write the patent laws.

      Long has the Court “scrivened” their own writing impermissibly as a mere “implicit” reflection of what Congress has actually written, but their growing boldness in reclaiming its pre-1952 authority had ruptured this “implicit” line of reasoning and it can no longer be viewed as anything but what it is: the Court legislating from the bench.

      The Court should take a huge pause, realize the incorrectness of its own actions, and put the situation right.

      (this is NOT a “protect our cash flow” driven item)

      1. The Court should take a huge pause, realize the incorrectness of its own actions, and put the situation right.

        That’s never going to happen, mainly because the Court was perfectly correct to do what it did in Mayo and Alice.

        If you want to save your job prosecuting junky software applications and litigating junky software patents, get all two hundred of your like-minded patent attorney friends together and demand that Congress rewrite the patent statute to explicitly make claims to methods of thinking a new thought about old data eligible. Good luck with that. Likewise with claims to “organizing human activity, providing that a computer is involved” and “new game rules for standard playing card decks.”

    3. (and by the way, you do not have to feed the myth that State Street is what opened the gates – as you yourself note, it takes time for cases to reach the courts, and the swing towards “software” and “business methods” becoming more the mainstay of innovation had been in process for years prior to that case showing up in the courts)

      This is just more “lemming-thinking” from you MaxDrei.

      1. If you want to “blame” anybody for the new crush of business methods, you can blame Demming and co. for their work in applying scientific rigor to the area of business methods.

        But that might take some understanding of actual history and use real facts instead of emotive buzz words and a stale script.

        1. Great – but you quite missed the point of what Demming did (and then try to turn your -purposeful- ig norance and abject lack of understanding history into a perceived insult when it is merely a fact OF history).

          Malcolm being Malcolm.

    4. No wonder those commentators who have built in those 20 years a lucrative drafting business are hopping mad, and frightened that many clients will be wanting their money back.

      That is probably correct, as far as it goes. Nevertheless, there is really something to be said for having stability in the law. In other words, while it is probably predictable that someone like me (a drafter) would argue that the Court should not be changing the rules on what is eligible without a clear signal from Congress, that point would still be true even if I were not arguing it.

      Patents are meant to incentivize investment, and investors feel more comfortable investing when the rules of the system are well known and stable. By incessantly fiddling with the rules (as the SCotUS has been doing since the mid-aughts), one scares off investment. Those with capital do not have to plough it into R&D, but we should want them to do so.

      The constant fiddling with patent system does not redound only to the detriment of patent drafters, but also to the detriment of the society as a whole.

      1. I agree (notwithstanding my typical contrarian nature).

        There is a further ripple effect from the Supreme Court: the lower courts, brow beaten as they have been, follow the “anti” leanings of the top court.

        Also, the CAFC, the court anointed by Congress to bring that clarity to patent law, abdicate that role given the repeated beat downs from on high (the Supreme’s penchant against bright line tests of any kind), and simply have had enough of that, and can be seen now pushing decisions off “their desk” and to the lower courts, creating more instability (and inducing forum shopping).

        The CAFC have effectively signaled that they no longer are fulfilling their Congressional mandate.

        Of course, the answer I have previously prescribed (appropriate jurisdiction str1pp1ng with a new Article III court), would resolve this mess and once again restore the patent system to its proper strengths.

        1. Before you post, Greg, try to recall that I have worked with VC’s for years. Investors invest in all kinds of junk. If they can’t find the junk to invest in, they create it themselves or they hire a lawyer to create it, and then they hire a lawyer to patent it (sometimes it’s the same lawyer).

          Google and Apple and Facebook’s patent portfolios have been utterly decimated by Mayo and Alice, as well as Uber’s patents and Air BnB’s patents and a zillion other junky patents. You noticed that right? I mean, you know what a junk patent looks like, don’t you?

          Last time I checked, except for the whining patent attorneys, either nobody cares or people are extremely glad about that development.

          I know it hasn’t affected me. Then again, I’ve avoided “do it on a computer” junk patents like the plague and always advised clients to do likewise. It’s a waste of money and time.

        2. Allow me to rephrase. I tried to acknowledge a possible error in my earlier argument about scaring investors, but I am evidently not allowed to do so. I am not sure what rule I may have transgressed, because I did not refer to any other discussion participant, but merely acknowledged that the facts on the ground may tell against me.

    5. Of course it’s a prosecutors job to look ahead. That means not running with every silly CAFC decision that find some claim eligible like its the holy grail of “pendulum turning.” The pendulum is never turning back. Telling a client otherwise is malpractice.

    6. Yes, I think our job _is_ to try and foresee. And I think you’re right. I watched a number of law firm partners rake in fees for “business method” patents that just didn’t pass the sniff test, regardless of State Street (and any decent attorney should take into account the possibility that precedent like State Street will be effectively overturned). As an associate, I would do the best I could with these cases, but if I had been the one advising instead of drafting, I would have advised against quite a few patent applications (many of which are now worthless, no doubt).

  10. Can someone please explain to me how a different party other than the original party in the case is able to file for cert?

  11. “But the Supreme Court has repeatedly indicated that the abstract idea and law of nature exceptions are grounded in the 35 U. S. C. §101 (despite the absence of express language). ”

    Despite. Hilarious.

    “My own take is that the Constitutional intellectual property clause probably does have some teeth and – as an extreme example – would not empower Congress to authorize patents covering abstract ideas as such.”

    More hilarious still.

    The beauty about Puritanism is, righteousness, like ‘abstract’, is however the priest defines it. And all grifters in modern America get to be the priest.

    1. “But the Supreme Court has repeatedly indicated that the abstract idea and law of nature exceptions are grounded in the 35 U. S. C. §101 (despite the absence of express language). ”

      The Supreme Court is looking to the purpose of the patent statute and assuming, reasonably, that the people who drafted the statute weren’t completely out of their minds. There are canons of construction consistent with this approach.

      That said, I think the Supremes are not looking solely at 101 when they recognize the limitations that must exist. They are aware of the First Amendment, for example.

      Without a compelling reason, the government can’t hand out entitlements that give some entity exclusive rights to a fact, or exclusive rights to communicate some type of data over existing channels. It’s so ridiculous to postulate otherwise I don’t think the Supremes bother addressing it. They leave that b0ring task to people like me, I guess.

  12. An interesting selection of edits.

    Mind you, my comments were in earnest, and yes, 6, mostly about attempting to get Malcolm to actually have a legal conversation.

  13. MM has provided at 16 above the link to the oral argument today in the big Apple v. Samsung design case.
    It is quite amazing to hear an oral argument in which both parties and the government all agree on the key issue which requires reversal. Namely that the Fed. Cir. and the D.C. was wrong to award to Apple Samsung’s entire profits on its entire smartphones, complex innards and all, for infringement of design patents on parts of the smartphone case or screen.

    1. “It is quite amazing to hear an oral argument in which both parties and the government all agree on the key issue which requires reversal”

      lol will have to check it out.

  14. MM and anon seem to have probably like over 100 comments between them (and mostly about themselves) in this thread. Gentleman, you need to calm down or you’re both headed for a temp ban at least.

    1. Dennis: Basingstoke, I beg! MM and anon, if you don’t Basingstoke at once, I shall be seriously angry.

      MM & anon. (recovering themselves): Basingstoke it is!

      Dennis: Then make it so.

      1. My p00r examiner friend Ben is still nursing his grudge.

        Ben, here’s a better idea for your energies: learn the law and see why I have the better position in our discussions.

  15. In case anyone missed it:

    Fyi, the CAFC issued its precedential opinion in the ominously (and appropriately) titled Fair Warning case today, finding another “use rules to determine stuff about information” patent to be ineligible (the “stuff” in this case being “improper use of health care records on a computer”). The District Court properly tanked the claims on the pleadings.

    Panel: Lourie, Plager, Stoll

    As I predicted, McRo’s relevance is shrinking faster than George Constanza after a dip in the Atlantic. In case everyone missed it the first time: “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent eligible.”

    Here’s what else is beyond doubt: there is no turning back. This path has one ending. It can come in bits and pieces or it sneak up and come in one big splat. But in the very forseeable future, software patents are not going to be part of the patent system, at least not the system as we know it.

    If you don’t like that result, you need to come up with a new system and very specific set of rules for examination and enforcement, including fair use provisions. I’ve been saying this for years. It achieves nothing to post, in comment thread after comment thread, “I don’t understand this!” or “nothing is patentable.” Why is that? Because lots of us understand very well what is going on and everyone can see that there are an infinite number of new compositions and processes that remain patentable. There is a lot more to the world than software, folks. I know it’s hard to believe if you’re entire life is spent sitting in front of a computer. Try to get out more.

    PS A few other ineligible findings were affirmed under Rule 36 today as well, including the GTNexus case I wrote about the other day. I guess Newman realized it wasn’t worth it.

    1. Lol – no thanks to the “offer” of coming up with a different system.

      Let’s just use the one that Congress already set up to protect innovation.

      Oh, that’s right, you don’t want to protect innovation that happens to be in the form most accessible to the NON wealthy.

      Maybe you can explain that bit of incongruity…:

    1. Money quotes:

      Apple’s counsel: we read the court of appeals’ opinion to have held that the relevant article of manufacture for which profits are owed is always the entire product that the infringer sells to customers. And we think that’s a mistake, and we understand all parties to agree with that now

      Samsung’s counsel: you must remand and tell the nation’s economy that no one can claim a partial design patent on a portion of a front face of an electronic device and come in and get the entire profits on the phone. [<– this is what is going to happen]

      1. Either that or congress will get on this and switch it up. I don’t understand how this travesty of nonsense happened in the first place.

  16. The brilliant attorneys who sponsor this blog:

    Indeed, to fail the first step of the Alice test, a claim needs to tie up an “abstract idea,” which for purposes of this test was defined to be a preexisting practice that serves as a fundamental “building block of human ingenuity,” such as a “longstanding” and “prevalent” economic practice. . . . The Federal Circuit has improperly extended Alice step one to claims that indisputably recite a new set of game steps that was not preexisting, let alone “fundamental.”

    As everyone knows — and this includes the attorneys who filed this l0ser petition — the novelty of the “building blocks” referred to by the Alice courts is completely irrelevant to the eligibility analysis. That the specific building blocks recited in “do it on a computer” claims are often ancient, as a matter of fact, is certainly one of the reasons to wipe the claims out of the system (plainly the PTO is incapable of examining the claims). But the more important point is that as a class “rules” are something that society can’t abide be tied up in a zillion patent monopolies. Why is that? It seems silly to even ask the question but one answer is that our entire society is based on rules.

    Breaking it down even further for the perpetually confused: it’s not the particular rules at issue that are the problem. It’s the nature of the new subject matter that is being protected by the claim, regardless of the (inevitable) prior art context in which that ineligible subject matter is being protected.

    You can’t patent some new “meaning” applied to laying cards down on the table because “new meanings” are ineligible subject matter. That’s the analysis. It’s not difficult. It’s not subjective.

    Some people — almost invariably very wealthy people — don’t like it because they believed they were entitled to own that “meaning.” Those people are wrong, and they were always wrong.

    [shrugs]

    1. Lol – double down with the ” wealthy” angle (again) as you have never squared the dichotomy that you seek to block patents on the form of innovation MOST accessible to the NON wealthy.

      Classic Malcolm.

      Accusations that ring hollow.

      1. you have never squared the dichotomy

        There is no “dichotomy.” There is a fact that the people who use (or directly benefit from the use of) the patent system to “monetize” ineligible junk are far more wealthy, on average, than everybody else.

        And then there is the obvious fact that this is never going to change, for obvious reasons.

        And then there is the fact that the system was opened to up the worst junk ever and the end result was only to concentrate more wealth in the hands of already wealthy and entitled people.

        I’m happy to discuss this point with you all day long, if you like. But the facts aren’t going to change.

        Maybe you should try coming up with a coherent argument or a convincing reason for the Supreme Court to hear this massive l0ser of a case. How about “All the greatest civilizations enjoyed card games!” Something super compelling like that.

        LOL

        1. The editing nabbed the legitimate and on point answer (a true answer, not merely a “response”) to your tirade and also pointed out that your position remains incongruent with the form of innovation MOST accessible to the NON wealthy.

    2. “But the more important point is that as a class “rules” are something that society can’t abide be tied up in a zillion patent monopolies. Why is that? It seems silly to even ask the question but one answer is that our entire society is based on rules.”

      Are methods (of any kind) patent eligible? Are methods of making drugs eligible? Are methods of welding?

      Since the statute clearly says methods are eligible, I’m going to go out on a limb and assume that you will admit that some methods at least are eligible….

      What are methods if not a set of rules (e.g. add this, add that, mix them, heat them, measure some aspect of the heated mixture (temperature say), at this temperature, add this other thing…

      rules.

      Patent eligible rules…

      1. Are methods (of any kind) patent eligible? Are methods of making drugs eligible? Are methods of welding?

        Keep going, Les! Why stop there? You were just starting to get super deep and compelling. I think five hundred more repetitions of the same in@ne questions and you’ll have an impenetrable wall of convincing awesomeness. Then we can mail it to the Supreme Court and put all this junky software patent business behind us. Thank you! Thank you!

  17. iit the pro-Alice side argues about the result – i.e., “junk patents” as justifying any rule that precludes their patenting, rather than focusing on a reasonable test that (1) is fairly objective, and (2) can be applied with reasonable certainty in an admin law setting.

    How’s this for certainty: patents with a point of novelty in logic, whether the logic is executed by a prior art computing machine or a human brain, are ineligible.

    Period.

    That’s my position. And I’ve held that position for years. It’s objective. It’s reasonable. It’s consistent with literally centuries of jurisprudence. It puts the focus of our patent system back where it belongs — on structural and physical compositions and transformations — and it ends the horrific warping of the system around a class of subject matter which it is incapable of examining.

      1. “Point of novelty”… …in the 101 sense…That’s a non-starter

        In fact, it’s already the law (see, e.g., Mayo and Alice, two recent 9-0 Supreme Court decisions that will never, ever be overturned).

        Pretending not to understand this is disgusting. Not understanding it is a sign of ign0rance. In your case, we know that it’s a bit of both.

        I defy Dennis or anyone else to defend you on this point.

    1. Its not reasonable in the slightest.

      Why should a mechanical adding machine be patent eligible while an electronic adding machine should not be?

        1. Are you really expecting Mooney to answer that?

          Took me five seconds to respond to Les’ strawman.

          Now ahead and “argue” that “nothing is eligible!”, AAA JJ.

          You’re a super serious person!

            1. Now you are trying to reclassify your pejorative – without having the decency to say that I was correct in telling you that Les did not have a straw man.

              Such gratitude.

              😉

            1. AAA JJ,

              Malcolm said he “responded.” He did not say his “response” was an answer, and in fact says that he did not answer because Malcolm (incorrectly) called Les’s question a straw man.

              He then showed his ingratitude for my correcting his mistatement with more of his typical “swagger.”

              Yay ecosystem!

        2. No. But, I think the question hanging there unanswered says a lot and I would hate for someone reviewing the archive in 5000 years to think that since that nonsense when unquestioned it must have been the prevailing view.

          1. If there is some example scenario wherein an electronic adding machine would be patent eligible while :”patents with a point of novelty in logic, whether the logic is executed by a prior art computing machine or a human brain, are ineligible.” is the law of the land, please identify it.

      1. Les: an electronic adding machine should not be [eligible]?

        Nobody’s saying that “electronic adding machines” are categorically ineligible yet. Like I said: the fact that you can’t follow a simple argument or, alternatively, that you enjoy pretending that you can’t follow the simple argument are indications that you (1) lack the intelligence to have the discussion, or (2) that you’re a tr0 ll.

        Ten years ago it might have been unkind to point this out. But after seeing you make the same b r a i n l e s s “error” a thousand times over, I’m being pretty nice to you. Go to some other blog and cry yourself a river.

          1. LOL – you still hanging on to your optional “objective physical structure” in the claim (as well as your quaint notion that [Old Box] somehow has “already in there” all future improvements that come by way of new configurations with the manufacture known as software)…?

            Really?

        1. Who said anything about categorical?

          If there is some example scenario wherein an electronic adding machine that would be patent eligible while :”patents with a point of novelty in logic, whether the logic is executed by a prior art computing machine or a human brain, are ineligible.” is the law of the land, please identify it.

          That might go farther in persuading people to your point of view than constantly calling me ignorant.

          There really is not reason to get emotional over these posts, even if the questions you are asked are too hard for you.

          1. You ARE trying to hold on to your mere optional form of claim format…

            More chutzpah to (yet again) pretend that such an option as the legal impact that you want it to have.

            1. Not sure what about the fact that what you refer to is a mere option of claim form has to do with “inane howling.”

              Unless of course (go figure Folks) that what you accuse me of is what you are doing by your howling of something that is merely optional and your attempt to make it some sort of legal requirement…

              Those laughs you hear – that is not laughter with you; rather, it is laughter AT you.

          2. If there is some example scenario wherein an electronic adding machine that would be patent eligible while :”patents with a point of novelty in logic, whether the logic is executed by a prior art computing machine or a human brain, are ineligible.” is the law of the land, please identify it.

          3. If there is some example scenario wherein an electronic adding machine that would be patent eligible

            I’ve provided that example scenario to you a zillion times already. You claim the machine in objective structural terms, that distinguish the machine from prior art machines on that basis.

            Again: nobody is arguing that “electronic adding machines” are categorically ineligible subject matter so in@ne questions that assume otherwise are pointless exercises. Unless of course you are simply interested in tr0 lling. Then it’s easy to understand why you keep asking the inane questions.

            1. I’m sorry, did you not understand the question?

              Of course, implied in my question is that, as you put it, the novel aspect is in the logic. The hardware is always going to be a keyboard, display, microprocessor and memory. Nothing novel there. And you do not accept that a flow chart or any broad disclosure of a method is objective structure.

              In the mechanical adding machine, the novelty is in the particular arrangement of gears, cogs and cranks. There can be many novel and non-obvious arragements that arrive at a mechanical adding machine.

              In the electronic machine, the analog to that is the particular arrangement of functions, subroutines barrel shifters and the like. But the hardware is always going to be based on a microprocessor and a memory with keyboard and display. Assuming that arrangement of hardware is first configured as an adding machine, there can be, by your philosophy, only one patent for an electronic adding machine. If those components were first assembled for some other purpose, such as a telephone, then, according to your philosophy, there can be no patent for an electronic adding machine.

              So, again, if there is some example scenario wherein an electronic adding machine that would be patent eligible while :”patents with a point of novelty in logic, whether the logic is executed by a prior art computing machine or a human brain, are ineligible.” is the law of the land, please identify it.

              1. Assuming that arrangement of hardware is first configured as an adding machine, there can be, by your philosophy, only one patent for an electronic adding machine. If those components were first assembled for some other purpose, such as a telephone, then, according to your philosophy, there can be no patent for an electronic adding machine.

                It’s not “my philosophy” Les. It’s patent law. If I disclose the structure of a new widget, you can’t claim that widget as your invention. That result does not change because you “discovered”, e.g., the phenomenal and mind-blowing fact that my widget predicts the future. You didn’t invent the widget. Boo hoo hoo.

                if there is some example scenario wherein an electronic adding machine that would be patent eligible while :”patents with a point of novelty in logic, whether the logic is executed by a prior art computing machine or a human brain, are ineligible.” is the law of the land, please identify it.

                For starters, a patent on using an adding machine to calculate the result achieved by crunching some “new” set of numbers is ineligible. Likewise, a method for “deciding whether too many people are in a house at 1453 ave, comprising using an adding machine” is also ineligible.

                Basic stuff.

                1. 1) I asked about patents for adding machines, not using adding machines…. baby steps.

                  2) It is your philosophy. According to judge made patent law that you love so much, flow charts are disclosed structure.

                2. Your “answer” was nonsense Malcolm.

                  Tell me (for the first time ever), does [Old Box] have “already in there” all future innovations (including new capabilities) that are brought about by the addition and reconfiguration with the machine component and manufacture in its own right of software?

                  Does it?

                  You cannot get a more direct and simple question in English than that last two word question, and yet you have NEVER engaged (in any sense of inte11ectual honesty) and provided a clear straight up answer.

                  Why is that?

                  (Yes, we both know why that is so, right pumpkin?)

      2. Because when the mechanical machine is claimed in more detail than “metal components configured to…” its no longer directed to an abstract idea.

        1. Ben,

          Maybe you should realize that claims are read according to the knowledge of a Person Having Ordinary Skill In The Art.

          Do you know what that means?

        2. Ben – Just FYI, I answered you yesterday by posting some claims and respective links to old patents…. but my answer is awaiting moderation…

      3. I am not the one you want to answer but:

        The name of the game is the claim. And the claims under one will be directed to a specific solution to a problem, and the other will be directed to all plausible solutions, even those not contemplated by the inventor.

    2. Your answer suggests that you’ve never confronted this issue in the real-world. Many terms that you list as being “objective” are a bit more nuanced than you currently appreciate.

  18. Fyi, the CAFC issued its precedential opinion in the ominously (and appropriately) titled Fair Warning case today, finding another “use rules to determine stuff about information” patent to be ineligible (the “stuff” in this case being “improper use of health care records on a computer”). The District Court properly tanked the claims on the pleadings.

    Panel: Lourie, Plager, Stoll

    As I predicted, McRo’s relevance is shrinking faster than George Constanza after a dip in the Atlantic. In case everyone missed it the first time: “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent eligible.”

    Here’s what else is beyond doubt: there is no turning back. This path has one ending. It can come in bits and pieces or it sneak up and come in one big splat. But in the very forseeable future, software patents are not going to be part of the patent system, at least not the system as we know it.

    If you don’t like that result, you need to come up with a new system and very specific set of rules for examination and enforcement, including fair use provisions. I’ve been saying this for years. It achieves nothing to post, in comment thread after comment thread, “I don’t understand this!” or “nothing is patentable.” Why is that? Because lots of us understand very well what is going on and everyone can see that there are an infinite number of new compositions and processes that remain patentable. There is a lot more to the world than software, folks. I know it’s hard to believe if you’re entire life is spent sitting in front of a computer. Try to get out more.

    PS A few other ineligible findings were affirmed under Rule 36 today as well, including the GTNexus case I wrote about the other day. I guess Newman realized it wasn’t worth it.

    1. McRO – the patent owner made a cogent argument about how their rules were an improvement over the prior art, it was verifiable and embodied in a tangible result.

      Fairwarning – the patent owner could not/did not argue that the rules themselves were “something more” because they effected no improvement.

      The “something more” needs to effect an “improvement” over the prior art. For Smith, if all the “something more” resides in the game rules then while the rules may be new, I could see the Court saying the rules still aren’t an “improvement,” maybe even saying game rules can’t be an improvement since it’s completely subjective unless placed within some bigger context.

      1. Oops. I mixed up terms. I should have said that to survive Alice Step I then you need to make it through the improvement analysis if otherwise arguably reciting an Abstract Idea.

      2. Fairwarning – the patent owner could not/did not argue that the rules themselves were “something more” because they effected no improvement.

        Which is it? “Did not” or “could not”?

        Didn’t the patent owner in Alice argue that the rules were an “improvement”?

        The point, of course, being that “the rules are an improvement” isn’t really a bar of any kind. It’s just an instruction to attorneys “make this form argument and we might give you a pass until the worthlessness of this test becomes incredibly clear to everyone.”

        Computers make stuff faster. But computers aren’t subjective (notwithstanding many failed attempts to claim “subjectivity” in the computer context). They follow rules. Those rules are provided by humans, directly or indirectly.

        Describing the appearance of something in mathematical terms or logical terms and rendering it with a computer is a well-known way of displaying things “more quickly”. So someone used rules. So what?

        their rules were an improvement over the prior art, it was verifiable

        Really? In the simplest logical embodiment covered by the claim, where was this “improvement” verified? How was it verified? What was the control?

        Another huge problem with the McRo decision is the fabrication that humans performed the task of animating mouths “subjectively.” No, it wasn’t done “subjectively”. It was done using reason and logic — exactly like the “rules” were created for the mouth-animating problem, i.e., using reason and logic.

        Reason and logic, once again, are ineligible for patenting. And there’s great reasons for that.

  19. To Greg, let me say this: we disagree on a lot but I respect your writing and you’re at least willing to confront the issues head-on (I mean, why not?) and use plain English. Congrats.

    You write:

    One of my great frustrations is that the Court seems rather reluctant to articulate how exactly these exceptions are to be justified.

    I don’t see that to be the case at all. They’ve repeatedly indicated — expressly or implicitly — that the driving issue is patent claims that tie up the fundamental building blocks of progress , i.e., abstractions that include knowledge (correct or incorrect), facts (including correlations and natural laws), without offering some applied and inventive structural or physical transformation.

    These limits flow from the Constitution, certainly including the First and from the patent clause itself. Note that this isn’t an issue of claim breadth (although broad claims to be ineligible subject matter are also ineligible)

    Mayo and Alice stand for the basic proposition — central to any patent system — that you can’t scriven around these prohibitions by folding in old technology that arguably falls within a statutory class.

    In this case (which is going nowhere, by the way, and, yes, the claims arguably fail under 101’s utility requirement in addition to the eligibility requirement) we’ve got a prior art set of cards that exists for the purpose of playing games.

    What did the “inventor” add to that old art? Rules, i.e., he laid some “meaning” on top of the existing cards. That’s ineligible subject matter. It’s also the kind of thing that five year olds have been doing for millenia.

    The system wasn’t set up for patenting this kind of nonsense and granting patents on such nonsense doesn’t promote progress in anything. All it does is turn the public into infringers.

    Let’s put it another way: I can play whatever games I want with my game-playing cards. And I’ve been saying that long before Alice. It’s a pity that this case didn’t arise from a dispute between the patentee and a family on vacation. I wonder how eager Dennis’ sponsor would be to take the case then. Either way, it’s an embarassment.

    On the flip side, I can’t think of a better advertisement for pumping more muscle in 101 than this case. Please bring it on!

    1. t the driving issue is patent claims that tie up the fundamental building blocks of progress , i.e., abstractions that include knowledge (correct or incorrect), facts (including correlations and natural laws)

      Oops, I left out an important one: logic.

    2. This is compact and exactly correct about card games, but didn’t Bilski specifically mean that structural or physical transformation was NOT required to create an invention?

      That implicitly means that applied and inventive processes which are new and useful, but not tangible, may be patented. The CAFC is tied up in knots because some abstractions are, in many opinions, the proper subject of the patent laws, while some are not.

      There are also major procedural differences of opinion as to the overlap of 102/1o3/112 and the current eligibility regime.

      It’s entirely possible the purported eligibility/patentability overlap and the eligibility of novel algorithms are dust kicking on the way to the inevitable ban on software and business method patents- and while there is no such thing as a “software” patent, there surely are many software defendants- who truly would like to know what the deal is.

      Without the USSC taking cases to resolve those questions (or solipsism depending on your politics), much mischief will continue to unfold.

      1. Bilski specifically mean that structural or physical transformation was NOT required to create an invention?

        All the Bilski majority said was that they weren’t convinced that such a requirement was necessary for 101 to make sense, so they weren’t going to bite on that apple. I guarantee that another Supreme Court would be happy to bite on that apple, however.

        The Bilski court was unequivocal about this: if there is no novel structural or physical transformation, then chances are really, really, really good that you’re looking at an ineligible claim.

        The CAFC is tied up in knots because some abstractions are, in many opinions, the proper subject of the patent laws,

        No, that’s not the CAFC’s problem. The CAFC’s problem is that they don’t want to be the ones to pop the balloon of The Most Important People Ever, i.e., the millionaire patent lawyers whose books of business ride heavily on “do it on a computer’ junk.

        1. That is NOT what Bilski said Malcolm.

          That (MoT not a legal requirement and only a clue) was one of two 9-0 takeaways from that case – the other being “no patent for you” to Mr. Bilski.

          But why start now with any sense of inte11ectual honesty, eh?

            1. We don’t have to wait – the Bilski Court did not mean what you want it to mean.

              This is not something that will change over time.

              You are wrong.

              You will remain wrong.

  20. My own take is that the Constitutional intellectual property clause probably does have some teeth and – as an extreme example – would not empower Congress to authorize patents covering abstract ideas as such.

    I agree that the IP clause does not empower the Congress to provide for the patentability of abstract ideas. I also think that Congress cannot permit the patenting of purely abstract ideas because of first amendment limitations (it would be odd, to say the least, to have a federal judge telling someone “you may not think this particular thought, because Mr. X over there owns a government monopoly on that sort of thinking”).

    That said, and setting aside the first amendment issue that I just mentioned, I wonder how binding the IP clause really is on Congress’ powers to grant patents. After all, there used to be a constitutional prohibition on Congress granting trademark registrations. The Trade-Mark Cases, 100 U.S. 82 (1879). Then, following Wickard v. Filburn, 317 U.S. 111 (1942) the Lanham Act became kosher by virtue of being limited to marks used in interstate commerce.

    I wonder if Congress could evade the “promote the advancement of science and the useful arts” limitation of the IP clause if it redrafted the statute to say that patents could only be granted on inventions sold in interstate commerce?

      1. “Thinking” is a useful “process”, “anon.”

        It’s not outside the so-called “statutory classes”.

        But it’s definitely not eligible for patenting

        1. It is NOT a process as that term is used in patent law – certainly not when the claim as a whole is TOTALLY in the mind.

          As you well know from my correcting your attempts to move the goal posts in past discussions (which of course means that is cannot be a straw man – by definition).

          And of course, you already knew that, eh pumpkin?

          As I said – I have L O N G attempted to have discussions on the merits on these points.

            1. …says the guy who not more than 24 hours ago accused me of beating a straw man of “TOTALLY in the mind”.

              Malcolm, you have no shame or moral compass.

              None.

          1. I have never understood which part of the 1952 patent act said that entirely mental processes are not patentable. It seems like the statute allows for it, and if we say that 1952 patent act sets the base line, how did banning mental process patents sneak in?

            Is it like Alice , a judge ruled it?

            1. [W]hich part of the 1952 patent act said that entirely mental processes are not patentable.

              For my money, the “useful” in 101 excludes processes done entirely in one’s head. What is the real-world utility of thinking a series of thoughts without ever manipulating the outside world in view of those thoughts?

              1. What is the real-world utility of thinking a series of thoughts without ever manipulating the outside world in view of those thoughts?

                Having “peace of mind” or a “satisfied mind” is often touted as a very useful state. Also “confidence.”

                There’s also the “real world utility” of “being prepared”.

                Just playing devil’s advocate here. There’s way more than “real world utility” backing up the prohibition on mental steps.

                For starters, that’s because the statute doesn’t say anything about “real world” utility. My memory (“useful”!) tells me that courts have interpreted utility to require both specific and substantial. I think the latest greatest word on the subject remains (oddly enough) the Incyte case(s).

                1. The fact that you consider your memory useful whereas most obj stove people would see it as sad and twisted SHOULD answer your “devil’s advocate” supposition.

            2. how did banning mental process patents sneak in

              It didn’t “sneak in.” It’s just always been assumed that thoughts are ineligible for patenting. “Thoughts” aren’t listed in 101.

              Reminder: a scrivener can claim pretty much anything using the term “process.” Hence: “mental process.”

              There’s also the First Amendment and the rest of the Constitution to consider. Some of the considerations are so fundamental they don’t get a lot of attention these days because, well, we’ve “evolved” just a little bit since the days when people were dragged into court because, e.g., they believed in something.

              Another friendly reminder: Lawyers manipulate words. They manipulate words for all kinds of reasons. Imagine what they can do when the reason is “money.”

              Lots more reminders where these came from. But we’re all grown-ups, right? Sure we are.

  21. Above the Statute?: An important fundamental question is whether the eligibility exceptions of Alice and Mayo supersede the statute. Some argue that their origins are Constitutional – embedded in the “discoveries” limitation and thus control the law regardless of the statutory text. But the Supreme Court has repeatedly indicated that the abstract idea and law of nature exceptions are grounded in the 35 U. S. C. §101 (despite the absence of express language).

    Hm. I see a lot of debatable propositions packed into that paragraph.

    (1) I would like to see where the Supreme Court has “repeatedly indicated” that the exceptions are grounded in §101. One of my great frustrations is that the Court seems rather reluctant to articulate how exactly these exceptions are to be justified. Justice Stevens’ Bilski concurrence grounds them in the constitution, and Justices Ginsberg, Breyer, and Sotomayor joined Justice Stevens’ opinion. In other words, four of the eight sitting justices are on record in finding a constitutional ground for the exceptions. I am not aware of any justice grounding the exceptions in the statutory text, although I will be very glad to be educated on that point with citations.

    (2) That said, it is clear to me that the exceptions are grounded in the text of §101. An abstract idea is not eligible because (to the extent that it really is purely abstract), it is not “useful.” Similarly, a natural product and a law of nature are not “new.” In other words, all of the so-called “judicial” exceptions are mandated by the §101 requirements that a patentable invention be “new” and “useful.”

    1. As to (1), Look to the early post-1952 cases and search for the word “implicit.”

      Stevens in Bilski has NO force of law.

      And for good reason.

      The minority of four you mention subsequently shrunk to a minority of 3. (No, you do NOT have 4 of the 8 sitting judges – Stevens is long gone)

      As to (2), I have previously supplied the Congressional text indicator that the “new” of 101 was merely a reference to the subsequent sections and is NOT a substantive portion of 101.

      You should know these things already Greg.

    2. Re:

      ” Similarly, a natural product and a law of nature are not “new.” ”

      Both 101 and the Constitution clearly indicate that DISCOVERIES are patent eligible.

      What is there TO Discover other than natural products and laws of nature?

      1. I am not clear on the point you are trying to argue here. Do you mean to imply that Dr. Krebs should have been able to patent the Krebs cycle, and we would all have to pay him royalties in order that we be allowed to go on metabolizing tricarboxylic acid?

        1. Whether or not Les “means it”, Greg, you should be aware that there is a very very vocal contingent of software patent defenders who believe such patents would be awesome.

          Also, Greg, “not being clear” is a big aspect of the technique employed by those same folks. After all, “being clear” provides an opening for your opponent to demonstrate that you’re incorrect. It’s far better, in the minds of the typical software patent advocate, so simply hide behind a dust cloud and accuse your critic of “not understanding” anything about “the Actual Law” or technology.

          I’ve seen you on the receiving end of, e.g., “anon’s” silliness, so I know you’re familiar with the game. Enjoy the company.

        2. No. However, Einstein should have been able to get protection for the application of E=mCC. If the cure for cancer is found in a rain forest, a patent should be grant-able for that Discovery. … and Dr. Krebs should have gotten a piece of any advances in medicine, for example, stemming from his discovery.

          There could be a carve out for those practicing the Krebs cycle before it was discovered.

          1. However, Einstein should have been able to get protection for the application of E=mCC.

            Once again, I am still not clear on the point you are arguing here. You say “the application of E=mCC.” What if there is more than one? Do you mean that Einstein should receive royalties on all applications of E=mCC, even applications that he never considered?

            Dr. Krebs should have gotten a piece of any advances in medicine, for example, stemming from his discovery.

            Hm, I wonder if you are not reading too much into the word “discover” at the expense of the other words in the statute. Section 101 says that “[w]hoever invents or discovers any new and useful process…” (emphasis added). Dr. Krebs did not discover a new process. He discovered a useful process, but one that had been going on for millennia by the time of his discovery, even though the process was hitherto undiscovered and thoroughly nonobvious to the person of ordinary skill at that time. I am not sure why he should be entitled to a “piece” for a discovery that, by the plain terms of the statute, is not patentable.

            1. I read new to mean newly known. If it doesn’t mean newly known, then no DISCOVERY could every be patented. For example, no drug or other composition of matter could every be patented as given the size and the age of the universe, every composition of matter must be naturally occurring somewhere. In any event, how would we know?

              One gets a patent …. unless the Office can show that it was known or obvious…so… “new” must mean not KNOWN to be old.

              1. Bear in mind, Samuel Johnson’s dictionary (published in 1755, and therefore roughly contemporaneous with the first patent act) gives as the definition for “invent”: “To discover; to find out; to excogitate; to produce something not made before.” In other words, “invent” and “discover” were synonymous at the time of drafting, so it is probably not fruitful to argue that patentable “discoveries” are something beyond patentable “inventions.”

                The guy who figures out how to make a battery has “discovered” a new battery technology. That is patentable. Krebs did some very worthy work, but his was not a “new” method.

                1. Does that dictionary have a definition for discover?

                  Also, you ignored the bit about the universe being big and old and the bit about one getting a patent …. unless the Office can show that it was known or obvious…so… “new” must mean not KNOWN to be old.

                  What would have happened if Krebs didn’t mention that he found the process in cells and instead simply patented the chemical process for getting energy from sugar without the sticky mess of the combustion of sugar.

                2. Discovery: (1) The act of finding anything hidden; (2) The act of revealing or disclosing any secret.

                  Invent: (1) To discover; to find out; to excogitate;
                  to produce something not made before; (2) To forge; to contrive falsely; to fabricate; (3) To feign; to make by the imagination; (4) To light on; to meet with.

                  Invention: (1) Excogitation; the act or power of producing something new; (2) Discovery [emphasis added]; (3) Forgery; fiction; (4) The thing invented.

                3. [Y]ou ignored the bit about the universe being big and old and the bit about one getting a patent unless the Office can show that it was known or obvious so “new” must mean not KNOWN to be old. [internal ellipses omitted]

                  I do not read “new” to mean “newly discovered.” I take your point about it being a big universe, and how do we know that polyvinylacetate is not found naturally on Ganymede. To my mind, the statutory solution to that problem is “§ 102… A person shall be entitled to a patent unless…” (emphasis added). In other words, the default position of the statute is that you get your patent when you file. The burden of showing that you should not get your patent is allocated to the challenger. If PVA really is found naturally on Ganymede, then the claim to PVA should be held unpatentable as not “new,” but the burden is on the challenger to adduce evidence of PVA being found on Ganymede.

                  In other words, it is not as if the whole patent system proves unworkable unless we read “new” to mean “newly discovered.” The statutory text already allow them system to function as intended if we read “new” to mean “new” in its full sense.

                4. What would have happened if Krebs didn’t mention that he found the process in cells and instead simply patented the chemical process for getting energy from sugar without the sticky mess of the combustion of sugar.

                  I see a couple of possible outcomes here.

                  (1) Krebs witholds this info from the examiner, and then when it later comes out that he discovered the process as it occurred naturally in cells, the patent becomes unenforceable for inequitable conduct.

                  (2) Krebs witholds this info and the fact of the concealment never comes out. Then I suppose that he gets a patent. Presumably he never enforces it against ordinary individuals for practicing his method as they respire.

                  (3) If he does try to enforce it against respiring individuals, then it comes out that his patent claims a pre-existing natural process, at which point the patent is declared invalid under both 101 (not a “new” process) and 102 (for anticipating public use under Egbert v. Lippmann, 104 U.S. 333 (1881)).

                5. Greg: “To my mind, the statutory solution to that problem is “§ 102… A person shall be entitled to a patent unless…” (emphasis added)”

                  That’s not the solution to the problem. There is no problem. THAT is the statutory definition of NEW. It is NEW unless…

                  The invention was KNOWN or used by others in this country….

                  Now… if you want to read “used by others” to mean even unknowingly used, so that it covers the Krebs cycle…I can live with that, but I don’t think that’s what the statute means… since clearly an examiner has to show that it was used by others….and in the scenario where Krebs simply dreamed the cycle up while pondering how cells might work…. and immediately ran to the patent office…to patent the process, there is no way for the Examiner to show that it was “used by others”…. and there would have been no inequitable conduct…. and Congress new that.

                6. That’s not the solution to the problem. There is no problem. THAT is the statutory definition of NEW. It is NEW unless…

                  Fair enough. I am not 100% sure that this is correct, but the distinction that I might make has no practical effect on our present discussion, so it hardly seems worth quibbling on this point.

                  [I]f you want to read “used by others” to mean even unknowingly used, so that it covers the Krebs cycle…I can live with that, but I don’t think that’s what the statute means…

                  I am very glad that you can live with it, because it is definitely what the statute means. Or at least that is what Egbert says that it means, which comes to the same thing.

                  [I]n the scenario where Krebs simply dreamed the cycle up while pondering how cells might work…. and immediately ran to the patent office…, there is no way for the Examiner to show that it was “used by others”…. and there would have been no inequitable conduct.

                  How do you figure? Krebs was aware of a fact that is material to patentability (that the method was pre-existing in nature) but did not disclose it to the Examiner, whom he knew would be unable to find this fact without Krebs’ own disclosure. That sure sounds like inequitable conduct to me.

                7. “How do you figure? Krebs was aware of a fact that is material to patentability (that the method was pre-existing in nature) but did not disclose it to the Examiner, whom he knew would be unable to find this fact without Krebs’ own disclosure. That sure sounds like inequitable conduct to me.”

                  I am suggesting a hypothetical wherein Krebs doesn’t know how cells do things but directs his knowledge of chemistry at the how a cell MIGHT pull energy from a glucose molecule and comes up with a process involving ATP etc as one possible way that MIGHT occur. In this scenario he does not check to see if he is correct. He simply observes that he has come up with a great little way to get energy from sugar that he thinks he can use to power cane harvesters in remote locations and runs to the patent office…

                  That’s how I figure.

                8. I am suggesting a hypothetical wherein Krebs doesn’t know how cells do things but directs his knowledge of chemistry at the how a cell MIGHT pull energy from a glucose molecule…

                  Ah. I understand now. Yes, I agree that this is not inequitable conduct.

            2. ” Do you mean that Einstein should receive royalties on all applications of E=mCC, even applications that he never considered?”

              Yes…. for the life of a patent.

              No one could build a nuclear power plant or a nuclear bomb before he discovered that relationship. The relationship was unknown. So, yes, if you use the relationship within 20 years of his application filing you need to send Al a coupla bucks. Now, of course the sun was using the relationship before it was discovered, so Al can’t send Sol a bill or a cease and desist…

              1. That is a perfectly plausible and defensible way to structure a patent system, but I am glad that it is not the system that we actually have as a result of the actual patent act in force here in the U.S. I think that it would get in the way of a lot of valuable research for the applied research people to have to pay royalties to the basic research people who discovered the foundational principles on which the applied folks are trying to build. I expect that the system you are envisioning would have less innovation than the system that we presently have in the U.S.

                1. That is a perfectly plausible and defensible way to structure a patent system,

                  How odd that nobody’s tried it before.

                  Must have been an oversight.

                2. Greg – your “logic” works the same as for anyone downstream of where you award a patent – and in truth – is nothing but anti-patent swill.

                  You draw a false line between basic research and applied research.

                  Why should we NOT try to drive (and reward) basic research? Your “but that might inhibit” is baseless speculation of future unknowable events.

                3. Well, I think it IS the system called for by the Constitution and the statute (DISCOVERIES), but I agree that legislation from the bench has distorted it…

                4. The legislation from the bench is flawed in that they take as a given fact the mere possibility of some conjectural, future “blockage.”

                  Not only does this mistreat what the Court may do with facts, it also removes the decision from having a basis in a present case of controversy – one of the requirements of the Court for the Court’s authority to come into play.

  22. There used to be a very sane doctrine in the law that one should avoid deciding a case on the “exceptions” to §101 unless there was no way to avoid it. Unfortunately, Mayo did away with that idea, so now we have to confront the eligibility exception here. It would have made much more sense to shoot this application down on substantial utility grounds under Lowell v. Lewis, 15 F. Cas. 1018, 1019 (C.C. Mass. 1817) (Storey, J., “The word ‘useful…’ is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention,”). A new way to bet money is not “useful” under U.S. patent law.

    Focusing on whether the card game is a “process” is just making the issue more complicated than it needs to be.

    1. There was a orange juice stand case that ran counter to the “mischevious or immoral” line as far as “utility” was concerned.

      Much later than the Story cite you provide.

      If I remember the particulars, I will follow up with the cite.

      And (of course – me being the contrarian), I disagree with the view of somehow providing clarity on “process” as somehow being “more complicated than it needs to be.”

      1. There was a orange juice stand case that ran counter to the “mischevious or immoral” line as far as “utility” was concerned.

        Juicy Whip v. Orange Bang. One of the great case names.

        As an aside, it may point the way towards the answer in the current Trademark appeal from the band, The Slopes. In Juicy Whip, the court essentially said that it’s not the USPTO’s job to judge morality or even protect consumers from fraud. That’s what the FTC is for.
        Given that, is it the Trademark division’s job to judge morality of “disparaging” marks?

        Of course, unlike patents, trademarks can be protected without registration (Lanham §43), so it’s closer to the government giving a stamp of approval on speech. And also, unlike patents, the ban on registration of disparaging mark is explicit in the statute, rather than being read in as an implication of “useful”.

        1. is it the Trademark division’s job to judge morality of “disparaging” marks?

          Presumably it is because section 2 of the Lanham Act prohibits immoral marks:

          No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

          (a) Consists of or comprises immoral, deceptive, or scandalous matter;

          1. is it the Trademark division’s job to judge morality of “disparaging” marks?

            Presumably it is because section 2 of the Lanham Act prohibits immoral marks…

            Thank you, Mal. Of course, you could’ve saved time by reading the rest of the post you were responding to:
            And also, unlike patents, the ban on registration of disparaging mark is explicit in the statute, rather than being read in as an implication of “useful”.

            And given that it is explicit, one need not presume at all.

            1. But the question is a little different than “is it explicit”…

              That question is “Is the government allowed to control even business speech based on content?

              1. That question is “Is the government allowed to control even business speech based on content?

                Sure – see, e.g., prohibitions on fraudulent advertising.
                But that’s speech that’s actually harmful. Does “disparaging” speech rise to that level?

            2. I read your comment several times, iDan, before responding. It appeared to me that you were making a distinction between “dispararaging” marks and “immoral” marks.

        2. [U]nlike patents, trademarks can be protected without registration (Lanham §43), so it’s closer to the government giving a stamp of approval on speech.

          Exactly. That appears to be the pivot around which the Slants case will turn. It is certainly the point that the petitioner used to convince the Court to take the case.

        3. Couple of thoughts about Juicy Whip:

          1) Anyone else notice that the court (185 F.3d at 1367) notes that gambling devices used to be 101 ineligible, but now they are not. The reason given for this switch is purported to be the 1952 Act, but Brenner v. Manson (applying post-1952 law) tells us that immoral utilities are not “useful” within the meaning of 101. So does In re Nelson, 280 F.2d 172, 178-79 (CCPA 1960). So how is the 1952 act at all relevant?

          2) This is not to say that Juicy Whip reached the wrong holding. The juice dispenser was useful. The “deception” here improves sanitation.

          3) In other words, all that “it’s not the Patent system’s job to care about morality” stuff in Juicy Whip is so much dictum.

          Judge Rich wrote the majority opinion in Nelson, which explains that considerations of morality are still part of the 101 “useful” analysis even under the 1952 act. Judge Rich sat on the Juicy Whip panel, but died before the opinion was handed down. I would like to think that, had he lived, he could have prevented Judges Schall & Bryson from embarrassing themselves by inadvertently contradicting the SCotUS.

    2. “A new way to bet money is not “useful” under U.S. patent law.”

      There are at least a few people in Nevada and New Jersey and in Lottery Commissions throughout these United States that would disagree with you on that point.

      1. I think that the words “under U.S. patent law” are doing a lot of work in my earlier remark. Presumably there are also people in the world who think that “a new invention to poison people, or to promote debauchery, or to facilitate private assassination” might also be useful, but that is only to say that it is “useful” in the sense of liable to further their immoral aims. It is not “useful” in the sense conveyed by §101, as explained in Brenner v. Manson, 383 U.S. 519, 533 (1966) (“[A] ‘useful’ invention is one ‘which may be applied to a beneficial use in society, in contradistinction to an invention injurious to the morals, health, or good order of society, or frivolous and insignificant'”).

          1. Besides which, i was asking Greg – not you – to respond.

            Your “responses” as they are non-answers (and nonsense) are not what I am looking for here (you have other areas to which I have asked for answers that you have not supplied those answers yet).

        1. Beauty is in the eye of the beholder Greg. There are Native Americans that can now educate there kids and build roads and hospitals because of their casinos.

          Mining coal kills people, but it makes the country run. Is new mining equipment patentable or is mining immoral and therefore not useful?

          1. When you incorporate a standard that was defined back in the 1700s (as Congress did, when it chose to hang on to the same language in 1952 that it was using back in 1790), then you get stuck dragging along a lot of 1700s era baggage.

            I am not especially worked up about the immorality of gambling. I am Catholic, and we Catholics rely on bingo and raffles to keep the lights on in our churches, so it is not for me to get too up in arms about immoral casinos. But what I think is really beside the point. What matters is the meaning of the terms imparted to the Congressional text by authoritative court interpretations. “Useful,” has been authoritatively pronounced to mean “not injurious to morals,” and in the 1700s, gambling belonged to that class of activities that are “injurious to morals.” Therefore, gambling is not “useful” in the sense of the 1952 patent act. If Congress wants to change that, they are free so to do, but as yet they have not.

            Incidentally, even if one sets aside the “injurious to morals” issue, there is still the matter of “not frivolous.” A new way to play poker sounds rather “frivolous” (“of little weight or importance” Merriam Webster’s 10th Collegiate Dictionary) to me.

            In other words, this is not my opinion about the “usefulness” of Smith’s new poker game. This is just what the law has to say about it. Anyone who thinks that the law should be otherwise is perfectly well entitled to that opinion, but they really need to take it up with Congress, not with me, because I do not make the law. I just study it and apply it.

  23. I’m curious how a new deck of cards would be patent eligible under the (yet another) judicial exception – the printed matter doctrine. Is the court being imprecise – i.e., cards having a different physical configuration of their shape? Also, couldn’t this be played or created with the human mind using pen and paper – i.e., “abstract”. Looks like they put themselves in a fairly tight corner here…

    1. Actually, at oral argument, everyone (judges and parties) seemed to agree that the claim might have been eligible if the cards had been printed differently than a standard deck. Strange, perhaps, until you understand In re Miller, 418 F.2d 1392, 1396 (C.C.P.A. 1969).

      1. That “different printing”, of course, wouldn’t fix the utility problem, nor would it likely stand up to a well-argued eligibility attack.

        Remember: this is the PTO we’re talking about. They’re a compromised party, to say the least.

    2. I think they were saying a new GAME involving new cards might be eligible, not new cards per se. In any event, as pointed out by the petitioners, they were wrong even on the new use for old manufacture point…

  24. The Supremes are going to take up and overrule more than a century of its cases, right up to the present day, holding several things to be “unpatentable subject matter,” NOT based on or limited by the words of 35 USC 101, for a gambling casino CARD GAME?

  25. Ned, please indicate if your MCM constitutional challenge cert petition [and Coopers] has been fully denied or not.

    P.S. Do Hatch-Waxman D. C. patent invalidations require jury trials if requested? Would your challenge, if granted, have affected them?

      1. That’s an interesting point. It was Square in which they requested supplementary briefing too, was it not? It seems strange that they would take Square and not MCM, but there does appear to be a more particular focus on Square.

    1. Encyclopaedia Britannica (no malpractice because the claims that the attorney lost would have died under Alice anyway) was also denied.

  26. Worth noting – and inviting the particular regulars who so often avoid discussing 35 USC 100(b) – most notably Ned Heller – just how extensive this change in statutory category was in 1952, moving the understanding of “process” in just one sense (the “arts,” or mere handmaiden of the hard good categories) into the more modern day understanding of the co-equal and “ordinary” “process as use.”

    No longer “just” a handmaiden.

    Part and parcel as to why Machine or Transformation (MoT) is NOT the law, but merely a clue.

    These are direct words of Congress – and some of us here have long sought a substantive discussion on the merits of these words (while others have routinely ran away from any such discussion).

    1. Each time this substantive debate arises, the pro-Alice side argues about the result – i.e., “junk patents” as justifying any rule that precludes their patenting, rather than focusing on a reasonable test that (1) is fairly objective, and (2) can be applied with reasonable certainty in an admin law setting.

      1. That’s where the refrain “The Ends do NOT justify the Means” comes out.

        As I said – I have L O N G aspired to have a substantive discussion on the merits.

        1. Rather a poor legal argument

          “The result” is NOT a legal argument at all.

          It is an extremely dangerous and lazy mode of “getting what one wants” and especially in law, needs to be extinguished with vengeance.

              1. It is a fantasy because it is completely untethered to the law, history, facts of the art, or any understanding of any of these.

                It is also a proposal.

                Just because it is a proposal does NOT mean that it is not a fantasy.

  27. This is a Separation of Powers issue – and can be restated in the plain language of which branch of the government has been authorized by the Constitution to write the patent laws.

    Long has the Court “scrivened” their own writing impermissibly as a mere “implicit” reflection of what Congress has actually written, but their growing boldness in reclaiming its pre-1952 authority had ruptured this “implicit” line of reasoning and it can no longer be viewed as anything but what it is: the Court legislating from the bench.

    The Court should take a huge pause, realize the incorrectness of its own actions, and put the situation right.

  28. Supremes ain’t gonna take the bait. Better to be thought of fools than to open their mouths and remove all doubt.

    1. There already is no doubt.

      The better way to phrase this is: will the Supreme Court take the opportunity to correct its own misdeeds and stop its power addiction?

      (Sadly, I concur with your resulting view: the Court will not take this).

    2. Ha! That is funny (and correct).

      (Though I personally think the Supremes remove doubt every time they take a patent case — it’s clear they have no clue about technology.)

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