Federal Circuit’s Internal Debate of Eligibility Continues

Amdocs v. Openet (Fed. Cir. 2016)

In the end, I don’t know how important Amdocs will be, but it offers an interesting split decision on the eligibility of software patent claims.  Senior Judge Plager and Judge Newman were in the majority — finding the claims eligible — with Judge Reyna in dissent.  One takeaway is that the Federal Circuit continues to be divided on the issues.  By luck-of-the-panel in this case, the minority on the court as a whole were the majority on the panel (pushing against Alice & Mayo).  Going forward, the split can be reconciled by another Supreme Court opinion, a forceful Federal Circuit en banc decision, or perhaps by future judicial appointments by President Trump.  I expect 2-3 vacancies on the court during Trump’s first term.

In a 2014 post I described the Amdocs district court decision invalidating the claims.  The four patents at issue all stem from the same original application relating to a software and network structure for computing the bill for network communications usage.   One benefit imparted by the invention is associated with its physically distributed architecture that “minimizes the impact on network and system resources” by allowing “data to reside close to the information sources.” According to the majority opinion, “each patent explains that this is an advantage over prior art systems that stored information in one location, which made it difficult to keep up with massive record flows from the network devices and which required huge databases.”  The nexus with the tated benefit is difficult to find in many of the claims themselve.  See Claim 1 below, which was taken as representative of the asserted claims of Amdocs ‘065 patent:

1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising:

computer code for receiving from a first source a first network accounting record;

computer code for correlating the first network accounting record with accounting information available from a second source; and

computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

You’ll note that the claim is an almost pure software claim — requiring “computer code” “embodied on a computer readable storage medium.”  The code has three functions: (1) receiving a network accounting record; (2) correlating the record with additional accounting information; and (3) using the accounting information to “enhance” the original network accounting record.  The claim term “enhance” is construed narrowly than you might imagine as the addition of one or more fields to the record.  An example of an added field would be a user’s name that might be added to the accounting record that previously used a numeric identifier.   The court also found that the term “enhance” should be interpreted as requiring that – and doing so in a “a distributed fashion … close to their sources” rather than at a centralized location.  This narrow interpretation of the term “enhance” do not flow naturally from the claim language, but do turn out to be crucial to the outcome.

In reviewing the claim, the court noted that “somewhat facially-similar claims” have been alternatively invalidated as abstract ideas and found eligible.  Compare, for example, Digitech with Enfish and DDR.   Here, the court wrote that the claims are “much closer” to the ones found eligible.  I might rewrite their opinion to say that the judges in the majority prefer the decisions finding eligibility over those invalidating software patent claims.

The two recent Supreme Court cases of Alice and Mayo spell out the court’s two-step framework for determining whether a patent is improperly directed to one of the excluded categories of abstract ideas, natural phenomena, and laws of nature.  Briefly, the court first determines whether “the claims at issue are directed to one of those patent-ineligible concepts.”  If so, the decision-maker must then determine whether any particular elements in the claim “transform the nature of the claim into a patent-eligible application.”  This second step requires consideration of additional elements both individually and in combination in search for an “inventive concept . . . sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” [Quoting Mayo and Alice throughout].

In making its eligibility conclusion in Amdocs, the appellate majority focused on the claim requirement (as construed) that processing be done in a distributed fashion.  According to the court, “enhancing data in a distributed fashion” is “an unconventional technological solution . . . to a technological problem (massive record flows which previously required massive databases).”  Remember here though that we are not talking about patenting a distributed system, but rather patenting a “computer program product embodied on a computer readable storage medium” used to implement the features.

Rather than taking Alice/Mayo steps in turn, the majority accepted “for argument’s sake” that the claims were directed to abstract ideas. However, the claim adds “something more” beyond an abstract idea.  Here, the court notes that the claims require “distributed architecture—an architecture providing a technological solution to a technological problem. This provides the requisite ‘something more’ than the performance of “well-understood, routine, [and] conventional activities previously known to the industry.”

Despite being the stated “unconventional” idea of using a distributed architecture, the court noted that the patent may still fail on anticipation or obviousnesss grounds.

Writing in dissent, Judge Reyna offered several different arguments. First, Reyna argue that the court’s skipping of Alice/Mayo Step 1 helped lead to an incorrect result. If you do not define the abstract idea at issue, how do you know whether the claim includes something more?  Reyna also argued that the “distribution architecture … is insufficient to satisfy Alice step two” because the limitation is not actually found in the claims and, even as interpreted provide only a functional result.  Reyna does note that the specification provides sufficient description of a distributed architecture, but that the claims themselves lack the requisite detail.

The specifications disclose a distributed system architecture comprising special-purpose components configured to cooperate with one another according to defined protocols in a user-configurable manner for the purpose of deriving useful accounting records in a more scalable and efficient manner than previously possible. The disclosed system improves upon prior art systems by creating a specific “distributed filtering and aggregation system . . . [that] eliminates capacity bottlenecks” through distributed processing. ’ The disclosed system is patent eligible. But the inquiry is not whether the specifications disclose a patent-eligible system, but whether the claims are directed to a patent ineligible concept.

[Read the opinion here]

150 thoughts on “Federal Circuit’s Internal Debate of Eligibility Continues

  1. Of what use – besides the obvious propaganda effect of “look at me look at me – on top” is the blatant re-post that Malcolm (singularly) so often engaged in?

    Prof. Crouch – this is on you.

    Happy Decade.

  2. RKS: a “correlation” per se is not a useful process, machine, manufacture, or composition of matter.

    Yay! In other words, it’s ineligible (please note that information and logic are also none of things — we’ll get back to that later). It’s also an abstraction, being devoid of physical structure.

    Okay, baby steps: how about a method of thinking about that correlation?

    Thinking is a process, and it’s definitely useful. I’ve basically just scrivened a bit around the subject matter that you already identified as ineligible. So, is that method ineligible for patenting or not?

    Yes or no, and a single sentence explanation. Step up, RKS! We’re showing everyone that you know what Mayo is about! Yay!

        1. And Happy Birthday to the Bobbsy Twins! We all love you, too.

          Can you do the “Patent Reformers Are Like K-llers in Iraq” cheer for us again? Wave those p0mp0ms!

          Now if you’ll excuse me I’ve got to depose this guy who’s an expert in the art of emailing people DVD preferences.

  3. RKS whatever you may think Mayo was secretly “about,” it wasn’t about determining whether something is or is not an unpatentable “abstract idea.”

    Apparently RKS has some serious difficulty telling everybody what Mayo was about. Gee, I wonder what that’s the case? Here’s two possibilities: (1) RKS doesn’t know what Mayo was about and/or (2) RKS doesn’t want to talk about what Mayo was about because it undermines his story about how subject matter eligibility under Mayo/Alice is soooooooo hard to understand and apply.

    Let’s help RKS out here.

    Simple question for RKS: can I patent a correlation? Are correlations eligible subject matter? i.e., can I get a claim like this one:

    1. A correlation, where the correlation is a correlation between the number of pencils in my pencil cup and the likelihood that my dog will die of a flea-born disease.

    Is that claim eligible under 101?

    Yes or no, and give a one sentence explanation.

    1. I won’t be making a habit of indulging you, MM, so please don’t expect a reply from me just because you invoke my name, but a “correlation” per se is not a useful process, machine, manufacture, or composition of matter.

      If you want my opinion, however, a conventional machine modified to make use of a newly discovered correlation should be patent-eligible, irrespective of the conventionality of whatever elements might be in a corresponding claim that do not relate to the point of novelty. A ‘puter programmed to produce and provide pooch prognoses predicated on pencil pitcher perceptions is useful and, provided it would not be obvious, is deserving of a patent.

      Courts–or rather, certain authors–have strained to hold that it should not be possible to “draft around” judicial-exception ineligibility. But why not? Such a position is at odds with the precept that “the claim is the name of the game.” Article 1, Section 8, Clause 8 permits Congress to reward discovery, and there is no indication that Congress has not intended to do so. Let discoverers be rewarded their bona fide discoveries when drafted as useful machines, processes, etc.

      1. RKS: a “correlation” per se is not a useful process, machine, manufacture, or composition of matter.

        Yay! In other words, it’s ineligible (please note that information and logic are also none of things — we’ll get back to that later).

        Okay, baby steps: how about a method of thinking about that correlation?

        Thinking is a process, and it’s definitely useful. I’ve basically just scrivened a bit around the subject matter that you already identified as ineligible. So, is that method ineligible for patenting or not?

        Yes or no, and a single sentence explanation.

        1. Because things TOTALLY in the mind is not like moving goalposts or anything…

          RKS – try to use the word anthropomorphication into your answer.

          (Give Malcolm the hint that machines really do not think, so his “thoughts” meme comes up short)

      2. RKS a “correlation” per se is not a useful process, machine, manufacture, or composition of matter.

        Also just in case nobody is confused: correlations are certainly useful and they are certainly “made by man”. So apparently your definition of “manufacture” is a bit more limited. The gates are already closing as we look closer at RKS’s assumptions. Nobody could have predicted …

        Maybe RKS can tell us why Congress chose to not include useful correlations made by man in 101. Was it an accidental ommission, RKS? Or was Congress perhaps constrained by something else? Tell everybody. Feel free to type an entire paragraph.

          1. A “correlation” like the Arrhenius equation comes to mind.

            What did the Ciurt say about your that again?

            Oh wait, you have already shared your feelings that Diego was not decided correctly…

  4. Also can I just point out that the Fed Cir just *destroyed* anon’s “optional claim format” in two sentences (with no fanfare, as it required none):

    The dissent offers a different paradigm for identifying an abstract idea: “it is apparent that a desired goal (i.e., a ‘result or effect’), absent structural or procedural means for achieving that goal, is an abstract idea.” Dissent at 6–7. The dissent focuses on the difference between ‘means’ and ‘ends.’ Id. at 6. We note that, though not in terms of ‘abstract idea’ but rather adequacy of definition, years ago the Supreme Court outlawed such broad ‘ends’ or function
    claiming as inconsistent with the purposes of the Patent Statute.3 Congress, however, a few years later softened the rule. Patentees could write claim language to broadly describe the purpose or function of their invention, and when they did the claim would not cover the bare function or goal, however performed, but only as limited to the particular means (and equivalents) for implementing that function or goal as described by the patentee in the patent’s
    “specification.”

    3 See Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946).

    This is the federal circuit agreeing that Halliburton stated that the law is that functional claiming outside of means-plus is improper. i.e. there is no “optional” ability to acquire a claim scope by novel functionality rather than novel structure, there is only the option to refer to structure within the claim itself or to “call” the structure from the specification by using particular calling language (means-plus) in the claim.

    The majority then goes on to explicitly state:

    This, of course, is the “means-plus-function” practice codified in 35 U.S.C. § 112 ¶ 6 (now § 112(f)). The dissent’s paradigm would seem similar, but differs in significant respects. Though § 112 ¶ 6 permits the ‘means’ to be found in the patentee’s “specification,” meaning the written description and the claims of the patent, the dissent would save the patent’s eligibility under § 101 only if the claim at issue itself explicitly states the necessary ‘means.’

    Of course, nobody is suggesting that the claims in front of them invoke means-plus . The paragraph directly above is true but completely irrelevant to the conclusion of *this* case. Instead, since means-plus isn’t invoked, the majority has just stated that the claims fail to be definite under 112b (granted, not an issue before them).

    The same is, of course, true for all other claims and of particular relevance to computer software, which is routinely claimed in non-means-plus functional terminology where the functional result is asserted to be a novelty in the claim.

    As I have stated before in analyzing Morse – the definiteness/goal dichotomy is one basis of the abstract idea rejections. The test was very simple – if the argument was that the claim was directed to a particular manner of achieving the result, but the claim failed to limit itself to that particular manner, the claim was indefinite under 112b for failing to particularly claim the subject matter. If the argument was that the claim was directed to the general result, the claim was ineligible under 101. Either way, a claim limited only by functional result rather than particular means for achievement was invalid. Because the federal circuit failed to appreciate either the Morse abstract idea analysis or the 112b particularly pointing out requirement in a post-52 world, the federal circuit had to go and invent written description 112a to cabin functional language that was partially, but not fully, enabled.

    The test under 112a is more lax than the previous abstract idea/particularly pointing out dichotomy. That excess lax is improper. The chief distinction is that the 112a test places the burden upon the defendant to show that the specification fails to prove possession of the full scope, while the 101/112b dichotomy places the burden on the patentee to show that there are no other ways of achievement other than those described in the specification. Cases obviously turn on this, as for a large range of functionality it is simply impossible to prove one way or another whether other possible means outside of the specification exist. Someday someone will be smart enough to raise this issue when confronted with functional claims.

    1. the Fed Cir just *destroyed* anon’s “optional claim format” in two sentences (with no fanfare, as it required none):

      And not for the first time either.

      But we all knew that. Also, we can safely predict that it will have no effect on “anon”‘s script because a big part of his strategery is simply throwing as many meaningless self-serving statements as possible. Pointing out that those statements are incoherent or irrelevant or just plain wrong has no effect. That’s one of the awesome features of his excellent — and totally not intellectually bankrupt! — secrets to …. erm … success.

        1. No, we’re not incorrect, “anon.”

          Maybe you can get Steve Bannon to chime in and lend you a hand? Or “Milo”?

          Because they’re very serious people. Just like you.

          1. Yes, Malcolm you both remain incorrect.

            You want to point to the explicit words with which the court stated that an optional form of claim formatting is no longer optional…?

            Hint: you will not because you can not.

            1. You also have the “option” of writing your claim in the form of a series of static equations. NWPA told us!

              It’s okay, “anon.” Your games are transparent. We can all see them. Just slink away with your wonderful “options” and we’ll try not disturb your rock.

    2. To call it anon’s is a bit unfair: Crouch’s past posts appear to accept non 112 6th functional claiming as a matter beyond questioning.

      Is there any explanation what 112 6th does if structure ‘sounding in function’ was previously acceptable?

      1. Not only Prof. Crouch, but the courts, Federico and Congress as well.

        The difference of course is what Prof. Crouch coined as the Vast Middle Ground.

        Rather important points Ben – and ones explained in great detail many times now.

      2. Is there any explanation what 112 6th does if structure ‘sounding in function’ was previously acceptable?

        112f was and is never anything other than a procedural interpretation allowance, not a substantive rule of valid scopes. Scriveners wanted a manner of referring to complicated specification parts from a claim, and 112f allows for that. There is no difference whatsoever between a claim that has the explicit structure in it and a claim that “calls” definite structure from the specification, which is why what the majority says in that second paragraph is correct.

        None of that has anything to do with a claim to describing “something new in purely functional terms” which is what Wabash denied and still denies. If functionality is novel, you can’t claim only the function.

        Ex: Cars do not normally fly. A claim directed to “a flying car” or “a car configured to fly” either fails 101, because it is claiming the field of flying cars without significantly more, or it fails 112b because “a flying car” does not particularly point out what the device which causes the car to fly (i.e the invention) is. “Means for causing a car to fly” however, is valid (assuming its part of a combination so that 112f can properly be invoked) because it is limited by statute to the structure in the specification, which is clearly posited and possessed.

        The Federal Circuit’s 112a test would have a factfinder ask if the disclosure in the specification sufficiently “fills the scope” of all devices which cause a car to fly. That analysis is, frankly, bs. It asks the factfinder to become a super-inventor and conclude that we have reached the limits of flying car technology based upon the disclosure of the specification. One can virtually never answer that question in the affirmative, because by definition we don’t know what we don’t know. Maybe some facts allow us to answer it in some cases (for example, when an infringer literally infringes “a flying car” but does so by entirely different means from the specification) but generally it’s just guesswork. The Supremes in Morse said that because that analysis can’t really be done, the conclusion is that the claim is ineligible. They place the burden on the patentee.

        To call it anon’s is a bit unfair: Crouch’s past posts appear to accept non 112 6th functional claiming as a matter beyond questioning.

        I have read Crouch’s past posts as saying that referring to old things by function is okay (and it generally is) and that new things that include some measure of structure are okay on a case by case basis. If that is what he is saying, that is correct. But what can’t be done is some recitation of a known thing (i.e. a car) and some new functionality (i.e. flying) without some level of a structure disclosure which causes the old thing to perform the new function. This comes up often in computers where there is a computer that performs a new function with no structure (i.e. no algorithm for performing the functionality) and a claim that the functionality is novel.

        1. There is no difference whatsoever between a claim that has the explicit structure in it and a claim that “calls” definite structure from the specification, which is why what the majority says in that second paragraph is correct.

          Absolutely disagree to this extent: the novel subject matter HAS to be in the claim and not just in the specification.

          People reading the claim must know what is new — that is the whole point of claims, notice. The lack of notice of what is patented was the major concern of the Supreme Court in Halliburton.

          Evans v. Eaton. The vice there was not that there was no invention, but that the specification and claims together did not distinguish old from new.

          In this case, the invention described was enhancing in the context of a distributed network. But one cannot tell that from the claim, not at all.

          This claim fails 112(b) big time.

          1. Absolutely disagree to this extent: the novel subject matter HAS to be in the claim and not just in the specification.

            If its being called via means-plus it IS in the claim, that’s what 112f does, it construes “means for” as the subject matter from the spec.

            1. The use of functional language is simply not constrained to 112(f).

              112(f) provided for the TOTALLY functional claim element.

              Prof. Crouch succinctly pointed this out with his coined term of Vast Middle Ground.

              Why are you trying to pretend this is all something else?

      3. Crouch’s past posts appear to accept non 112 6th functional claiming as a matter beyond questioning.

        What are you talking about? Do you understand the issue here?

        Nobody has ever disputed (except in “anon”‘s bizarr0 world brain) that you can use functional language in a claim and that you can use means-plus language in a claim. The issue is functional claiming at the point of novelty without any corresponding “structure”* in the specification. That was never authorized by Congress, and I’m not aware of Dennis ever trying to promote otherwise. What posts are you referring to?

        *the CAFC, of course, has elevated non-structure to fake “structure” status as part of its back-breaking effort to coddle s0ftware patentees

        1. What are you talking about? Do you understand the issue here?

          You stopped short in your reading, Malcolm, as I provided the answer: Prof. Crouch’s coined term of Vast Middle Ground.

          How have you forgotten already?

          The use of functional terms outside of 112(f) is fully recognized (except for the PURELY functional elements).

      1. The Court was explicit in the post-1952 world that Morse was not a 112 case…

        That’s right, because Morse explicitly argued that he was entitled to all manner of achieving the function, hence 101. Compare that with, for example, Wabash or Perkin’s Glue, where the argument was that the thing invented was a particular thing – a particular type of crystal or a particular type of glue – while the claim was directed to the functionality resultant from the use of those particular things. Those are 112b cases.

        Again, I can’t invent the bow and describe it by the functionality of “firing projectiles” even though that is what a bow does. I can claim the particular structure of the bow. A claim to a machine that fires projectiles reads on a gun. I didn’t invent the gun, which makes it fail under 112a. But even before the gun is invented to make the 112a argument work, the fact that the gun or something like it *could conceivably be invented in the future* triggers the 101/112b dichotomy. An argument that “I invented firing projectiles” is abstract, and an argument that “My claim to firing projectiles is referring to the structure of my bow” fails to particularly point out the invention. It’s only by invoking 112f that “My claim to firing projectiles is referring to the structure of my bow” becomes a valid argument, but that has the effect of limiting the scope of the claim to exclude the gun.

          1. Sure, if you ignore the caselaw it isn’t. So do you think that in a 101 case the majority is bringing up definiteness just for giggles, or is it because they’ve been connected before and are being connected again?

    3. Random, you just have absolutely no clue what you are talking about–you almost never do.

      If you want to change, start from the basic principles of patent law. Elements of the claim. You are little better than a jeering bully type of boy in the playground.

  5. But seriously though, “enhancing” data, as Prof Crouch states, could constitute adding one field of data to another field of data, i.e. Exactly what Digitech was.

    So the question is if doing it “in a distributed fashion” constitutes significantly more such that one can break it from the Digitech holding of ineligibility. In order to conclude that distributed processing was unconventional, one would have to ignore the entire field of computer networking.

    The earliest patent in this case was filed in 2001. Without reviewing the file history, one can see it claims continuation in part priority to 1999. You don’t really need expertise in the computer networking realm to know computer networking and thus “processing…in a distributed fashion” was conventional in 1999. America Online sent out all those CDs and transitioned to a monthly fee service in 1996, and it was doing hourly for years before that, and it wasn’t even the first *commercial* distributed processing and data storage system. You don’t even need an engineering degree for this one, you just had to be alive and have a physical mailbox sometime in the 90s.

    Seriously, DARPAnet was active in the 70s and allowed for processing in a distributed fashion.

    What am I missing here? Does anyone actually think this case was correctly decided?

    1. What am I missing here?

      Nothing.

      Does anyone actually think this case was correctly decided?

      Thinking is such an iron age thing. This is the computer age. Greg told us that computers could be doing our lawyering for us within 20 years.

      But software isn’t logic! Nope. And logic is totally eligible for patenting. It’s right there in the statute.

      And Steve Bannon isn’t a white nationalist dirtb@g, and Trump loves everybody. I read it on the Internets!

        1. Like I said, “anon”: this isn’t going to stop. I’m not going to be the guy who sits back and watches the most disgusting l0wlifes in the world drag my country into the t0i let.

          Dennis can be that guy if he wants, though.

          [shrugs]

    2. What you are missing is that the state of the art has no bearing on the 101 question.

      DARPA comes into play under 102 and 103. Not 101.

      1. What you are missing is that the state of the art has no bearing on the 101 question.

        That’s a nice statement that has no basis in law. The law requires a look into what is conventional. What is conventional requires looking at what the state of the art was. Again, a computer is clearly a machine, if recitation of the computer was sufficient to render it eligible, then Alice would have come out differently. Do you have an argument based upon what the law actually is?

          1. Alice is wrong.

            So everything “on a computer” is eligible?

            Because “on a computer”?

            What part of Alice is “wrong”, Les? That’s a rhetorical question, by the way. Nobody cares what you think about Alice because you’ve demonstrated repeatedly over the years that you can’t follow the simplest logical propositions, nor do you have any interest in having an adult conversation about any aspect of subject matter eligibility.

            All you seem to want to do is tell us that “nothing is eligible!” (because you say so) or that because you would buy it, then it should be eligible. Sorry, Les. Alice isn’t going anywhere.

            1. MM:”All you seem to want to do is tell us that “nothing is eligible!” ”

              Take a breath. That’s all YOU seem to want to do.

              Among the things I want to do is to get you to understand that 101 is about categories and yes, computers fall within at least the machine category, so any claim to an invention that is a variation of a computer is patent eligible.

              Of course to be grant-able, the claimed invention also has to be new and not obvious to one of ordinary skill in which ever art the invention would fall under.

              1. <i.MM:”All you seem to want to do is tell us that “nothing is eligible!” ”

                Take a breath. That’s all YOU seem to want to do.

                And there we are with the path 0l0gical l ying. Gee, it never takes long.

            2. MM:”Sorry, Les. Alice isn’t going anywhere.”

              Well, if you really believed that, you wouldn’t be here foaming, ranting and calling people “very serious” persons.

              1. if you really believed that

                Not really a “belief”. It was a 9-0 case. How many of those get reversed within a person’s li fetime?

                It’s not like there’s a shortage of ju nky “do it on a computer” claims or anything. Plus the folks who can’t stand Alice are some of the least appealing, least symp@thetic, and least intelligent patent attorneys on the planet. Congress didn’t come running to save you, in case you hadn’t noticed.

                You’ve got a bit of an uphill battle, to say the least. And for what? Better bingo management? LOL “Computerized lawyers”? Double LOL

          2. Alice is wrong.

            I don’t think that position will help your clients much. Run that argument up the flagpole and see how it works for you on either the fed cir or supreme level.

          1. They didn’t have to write it.

            It’s common sense. You know: reason. Basic logic.

            Do you want me to break it down to a kindergarten level for you again? For the thousandth time?

            Just ask. I’m happy to oblige.

            Or we can all pretend to be born yesterday. Up is down. Black is white. And “anon” is all about “what Congress said” and totally against what judges say. Except when he isn’t.

            LOLOLOLOLOLOLOLOL

            C’mon, “anon.” Just ask.

            1. Last time I checked, statutory law has to be – you know – written by Congress in the statute.

              That would be a critical thing for you as a professed attorney to know.

      2. DARPA comes into play under 102 and 103. Not 101.

        “Manufactures comprising bound pieces of paper onto which data can be recorded come into play under 102 and 103. Not 101.”

        Hopefully this isn’t too nuanced for you, Les.

          1. Its not too nuanced. It is however, to $tuP1D for me.

            Translation: “Don’t bring up simple scenarios that prove my premise is completely false. Wah! Unfair!”

    3. Random, I agree with you that unless one reads something more into the claimed is merely enhancing a data record, this claim cannot possibly have passed 101. But that is exactly what the majority did – in the claim construction was based upon a construction given that in court and affirmed on appeal by the Federal Circuit itself in a prior case.

      The problem I have with this claim construction is its reading into the claim a requirement for distributing processing in the first place. As described by Judge Reyna in dissent, as interpreted, this requirement makes no sense in context and is, therefor, probably invalid under 112(b).

      Amdocs argues that the “enhance” step provides an
      inventive concept because the district court’s construction
      of the term “enhance” requires applying zero or more
      functions “in a distributed fashion.” Br. of Appellant at
      59. Amdocs thus renews its argument from the trial
      proceedings that “the asserted claims are patentable, in
      part, due to the manner in which the claims facilitate the
      generation of network accounting records—i.e., ‘in a
      distributed fashion.’” J.A. 1567 (emphasis original).
      But the “distributed fashion” limitation cannot provide
      an inventive concept because it has no meaning in
      the context of claim 1. Claim 1 only requires adding a
      single piece of information to an accounting record, and it
      is unclear what doing this “in a distributed fashion” could
      mean. Moreover, claim 1 recites no components or structure
      over which the work might be “distributed.”

      Dissent, at *15.

      1. The problem I have with this claim construction is its reading into the claim a requirement for distributing processing in the first place.

        Well of course that’s wrong, but that’s just standard operating wrongness for the fed cir, they read in stuff all the time to try and save an obviously invalid claim.

        I agree with you that unless one reads something more into the claimed is merely enhancing a data record, this claim cannot possibly have passed 101. But that is exactly what the majority did –

        Even taking what the fed cir did, the point of my post at 7 was that putting that language in doesn’t help – it’s still conventional. Doing functions “in a distributed fashion” is nothing more than two computers working in tandem, i.e. the field of computer networking. A mere field of use limitation is insufficient to be significantly more than an abstract idea. Just as Alice didn’t invent the computer, Amdocs didn’t invent computer networking.

    4. I think you are missing a dual use of “conventional” or “generic”.

      In one context, it means a relationship between an item of putative art and the pertinent prior art. In a second context, is means using an item of technology as its designers intended end-users to use it.

  6. Now isn’t J. Renya the one that admitted he knew nothing about patents at his confirmation hearing and that he had a lot to learn and that he had no background in science.

    Thanks Obama for putting in incompetent fool in the Fed. Cir. So, we basically have a third year associate without a science background trying to re-write patent law.

    1. a lot of hard ‘science’ in many of these cases. where to put a slot machine. how to order up a new server when you need one. the notion of reporting the location of a shipment- wirelessly!

      yes, very complicated stuff.

    2. I think that this is rather an unfair criticism. Judge Reyna may not have been a patent-lawyer (he was an international trade lawyer), but the CAFC is not a patents-only court. The CAFC also has exclusive appellate jurisdiction over the Court of International Trade, the Court of Veterans Appeals, the Court of Federal Claims, the Merit Systems Protection Board, the Board of Contract Appeals, the International Trade Commission, and the Congressional Office of Compliance.

      In other words, the CAFC does not only need judges with patent expertise. The court also needs international trade expertise, employment law expertise, takings law expertise, and government contract expertise. It is unreasonable to expect any given candidate to possess experience in all of these areas, so it will necessarily be the case that different candidates are appointed to bring different skill sets to the court.

      Sure, this means that you will sometimes end up with trade-lawyers judging patent cases and patent-lawyers judging trade cases. But if we only appointed patent-lawyers to the CAFC, then we would always end up with patent lawyers judging trade cases (or government employment cases, or Army contract cases, etc).

  7. I really wish that Judge Reyna’s dissent were the law, because at least Judge Reyna provided an intelligible standard more substantial than “I know it when I see it.”

    Unfortunately, the reason we can know that Judge Reyna’s dissent is not articulating the law is that Judge Retna effectively collapses step (1) and step (2) into the same analysis.

    1. I haven’t read the dissent, but the Supreme Court’s distinction of two different steps is entirely sophistical. Once you accept the proposition that it is possible to create an abstraction out of any claim, and thus argue that every claim is “directed to” an abstract idea in some way, the analysis only becomes a question of identifying what, if anything, in the claim prevents it from tying up (or “preempting”) the entire abstract idea. Thus, “step one” and “step two” cannot be said to be different from one another: in either case you’re simply trying to determine what element(s) make a claim non-abstract. The sooner the Supreme Court comes around on this, the sooner we will begin to have some intellectual honesty in this jurisprudence.

      1. entirely sophistical

        Will need to add that to my phrase book 😉

        This really is nothing more than realizing that the “Gist/Abstract” sword may have two edges but is one blade.

        Since “directed to” is merely code for “gist” and “abstract” remains undefined (arbitrary), and unknowable a priori, there can be NO “coming around.”

        Just another way of saying that the re-writing of the statutory law that is patent law by judicial fiat is itself Void for Vagueness and untenable as to inform the jurisprudence in this area of law.

        1. I like your “one blade/two edges” analogy and it is unfortunate that the Supreme Court and the Federal Circuit has not understood that “void for vagueness” doctrine should apply equally to judicially-created patent-defeating exceptions to statutory law as it would to statutory law.

          1. The statute itself is nonsensical or instantly unconstitutional without incorporating the “judicially created patent-defeating exemptions” (aka the First Amendment and the rest of the Constitution).

            And again: the analysis isn’t that difficult.

            Yes, you can make it difficult by pretending to be born yesterday. But it’s really not that difficult.

            Do you understand what Mayo was about? Have you figured that case out? Are you aware of the facts and the issue? If so, prove it. It doesn’t take more than a paragraph. Prove to everyone that you know what Mayo was about.

            1. First, I would ask you to please stop being obnoxious, but that seems to be your MO. Second, whatever you may think Mayo was secretly “about,” it wasn’t about determining whether something is or is not an unpatentable “abstract idea.”

              1. I would ask you to please stop being obnoxious

                I would ask that you prove to everyone that you understand the facts in Mayo, and the issue, and why it was a 9-0 decision.

                Because if you can’t do that, then it’s a tiny step to reach the conclusion that you’re a dish0nest whining hack.

                So go ahead. Set out the key facts in Mayo and tell everyone what the issue was. What was Prometheus trying to do, RKS? What was their infringement theory? Do you remember? C’mon, you’re a really serious and smart guy. Right? So tell everybody. It’s easy stuff. It’s been written about many, many, many times.

                Step up like a big boy.

              1. evidence or cite please

                The statute says that “processes” are eligible.

                That would include (among other things) new mental processes and new processes for explaining stuff to people using words. There’s no chance of such a system passing the First Amendment.

                But go ahead and argue otherwise, “anon”! Let’s hear it. You’re a very serious person and I’m sure you’ve thought about this a lot. Impress everybody with your awesomeness.

                Or you can do what you should have done a long time ago: slink back under your rock in shame. Cite please? LOLOLOLOLOL What a j0ke.

                1. You miss the part in the statute about utility and what that means Malcolm.

                  Utility has to be of the nature as covered by the Useful Arts.

                  This is also why your examples trying to use Fine Arts are DOA (and since you have been informed of this, it is also a sign that you are purposefully dissembling when you do try to use examples that you know to be improper).

                  Try just a little inte11ectual honesty please.

                2. Let me also throw into the mix that Congress (not the Court) writes statutory law and Congress expanded and defined the statutory category of process in 1952. See 35 USC 100(b) – something Ned has steadfastly refused to recognize is that his old view of process as mere art or handmaiden of the hard goods categories is not the limit of the statutory category of process.

                  The Court simply does not have authority to re-write the law with some type of “line item veto” and knock out processes that it does not like it that it “feels” should not be patent eligible.

                  If indeed what Congress did in 1952 is to be “deigned” “instantly unconstitutional” the Court’s option is to strike down the law – not attempt its own scrivening that itself violates constitutional norms such as Void for Vagueness.

      2. RKS Once you accept the proposition that it is possible to create an abstraction out of any claim, and thus argue that every claim is “directed to” an abstract idea in some way, the analysis only becomes a question of identifying what, if anything, in the claim prevents it from tying up (or “preempting”) the entire abstract idea.

        Once you accept the uncontroversial proposition that logic and information are ineligible abstractions (or, at the very least, ineligible subject matter for protecting with a patent), then the questions of (1) identifying that ineligible subject matter in a claim and (2) determining if there are additional non-abstract elements in the claim (e.g., novel physical structures, described in structural terms; or a new physically transformative step or combination of steps) are pretty straightforward.

        That was the case in Mayo.

        The reason that lovers of software patents want to make the analysis more difficult are straightforward. We can all pretend to be born yesterday. The fact is that concept of patenting logic in the context of programmable computers (i.e., computers that were built to execute logic) was shoved into the patent system by the judiciary without much thought at all. It was a terrible idea and what you’re looking at now is an attempt to “fix” the mistake by introducing all kinds of “factors”. But the elephant remains in the room.

        The counter-arguments, of course, are that, hey, patenting logic and information makes a bunch of patent attorneys happy and some people have gotten phenomenally rich off it. And Judge Moore’s kids love these nifty apps! So critics of patenting logic are just a bunch of copyists who don’t understand techn0logy and nobody should pay attention to them.

        1. Malcolm,

          You see elephants where none exist.

          You are still not treating software appropriately.

          Let me remind you again that one can obtain a copyright on a certain aspect of software while no copyright can be obtained on logic.

          Maybe you want to try to be effective in your Windmill Chase by being inte11ectually honest to at least a basic degree…

          1. You are still not treating software appropriately.

            Translation: “You need to accept my conclusions and then you’ll understand my argument.”

            LOL

            one can obtain a copyright on a certain aspect of software while no copyright can be obtained on logic.

            Is this an argument for patenting logic and/or information? If so, there seems to be a huge piece missing.

                1. Lol – your “logic” here is to stick your fingers in your ears and pretend that I have not put something on the table for discussion.

                  In other words, yet again
                  You
                  Run
                  Away

                  (maybe instead you actually engage the points put to you with just the slightest modicum of inte11ectual honesty – try that, for a change)

  8. I don’t have the docket- was there a trial or S.J. or did the district court allow an interlocutory appeal on the 101?

    One would assume if it went to trial that the 103 arguments would have been made.

    1. he 103 arguments

      Right. That’s where millions of dollars will be spent by the patentee on some “expert” who is going to tell the jury that “if this was so obvious, then why wasn’t it invented before”? Someone should keep track of how many judges let that b.s. into court.

      Also “people bought it, therefore not obvious!” Because people totally choose what to buy based on how non-0bvious it is.”

      But what the heck, Judge Moore apparently would prefer a “This is really cool!” or “My kids love this!” test for eligibility. And why not? If the test makes a bunch of wealthy entitled people happy, then it must be the right test. Judge Moore can afford pretty much any software she wants so it’s not her problem.

    2. Dismissed on motion to dismiss on the pleadings (Judgment on the Pleadings under FRCP R. 12(c)) by E.D. Va. Judge Brinkema. On remand court will still be able to consider the 102/103 arguments and may well dismiss on summary judgment.

      1. Exactly why the claim construction step/procedure must be enhanced and the eligibility/patentability inquiries bifurcated.

        The 12(b) 6 is not the appropriate vehicle to determine “something more” nor realistically answer the question of “conventional v. non-conventional” activity. The Mayo/Alice inquiry is almost always a question of patentability (obviousness / WD) while we are now even farther away from a clear test for per se or inherent abstraction in a subject matter.

        The claim construction step is exactly where this should happen. The factfinder is briefed on the technology, the process is based on narrowing the factual underpinnings of a legal question, and the whole point of the exercise is to bound the shape of the allowable case for a given set of facts prior to the horrifying expense of experts, full depositions, etc.

        The current state of affairs is unacceptable to virtually everyone and is a farce in terms of predictability/repeatability/ legitimacy.

        1. MS The 12(b) 6 is not the appropriate vehicle to determine “something more” nor realistically answer the question of “conventional v. non-conventional” activity

          It depends on the claim. In most “do it on a computer” claims, the fact that there is “nothing more” is something that a ten year old can determine in two seconds. This is why we have 12(b)(6) motions.

          1. MM the kryptonite for 12(b) 6 was identified early and used often.

            If the Plaintiff’s lawyer says “judge, this technology is super advanced and not conventional” in the reply briefs, many, many judges simply turn around and say there is not enough of a record to determine conventionality, and deny the motion.

            Yes, many of these are simple cases but to avoid this trap, the record can be more developed at the construction phase.

  9. Would anyone please tell me how the subject matter exemplified in claim 1 falls into one of the statutory categories of Section 101.

    The focus on judicial exception nowadays is so extreme that nobody bothers to confirm compliance with the statute. Is the claimed subject matter really a “manufacture” and if so, on what basis? It would not seem to fall even arguably into one of the other three categories.

    1. Is the claimed subject matter really a “manufacture” and if so, on what basis?

      Someone had to write the instructions. Therefore, someone “made” the “program product.” Therefore, it’s a “manufacture.”

      I kid you not but that’s the argument. Heck, “anon” will tell you that the instructions are a “machine component.”

      Scriven on! Logic is eligible for patenting, as long as you don’t call it logic. Oh but wait! It’s actually okay to call it logic and people have been doing it for years. But we’re supposed to pretend that it’s the good kind of logic and not ask questions like “How in the world did we get to a point when people are patenting logic?” Because that makes the entitled people sad.

      1. This is one of the many software-related claims where I read the absurdly broad and general language and say to myself: “so what!”

        To follow Groucho Marx: “I have seen a perfectly wonderful patent claim, but this wasn’t it!”

        1. “So what?”

          So the ends do not justify the means.

          Your assertion Paul is downright silly. You really cannot figure out which statutory catogory the claim is to?

          Really?

          That’s a new low for you.

          1. @ Anon

            Have you never come across the technique in cross-examination of asking a question that it is difficult or impossible to answer to the witnesses’ credit?

            It would be quite difficult to make a positive case that the claimed subject matter fits into any of the statutory categories. My views may, of course, be wrong and a credible positive answer would be illuminating.

            Either way, my submission is that the wording of the statute deserves consideration, and that should happen before the judicial mantra of exceptions is applied. And if, as a matter of substance, claimed subject matter falls within one of the four categories, invoking judicial exceptions raises interesting and hitherto unexplored issues of separation of powers.

            1. It would be quite difficult to make a positive case that the claimed subject matter fits into any of the statutory categories.

              Absolutely and unequivocally false.

                1. Start with the claim.

                  Prepare a sentence diagram of the claim.

                  That alone should suffice.

                  As I stated: a new low for you, Paul.

                2. A little, tiny smidgen of legal analysis based on the positive case law for the section 101 categories, and how the facts in the case fit into one or more of those categories would be ever so useful. That is more than a sentence diagram and needs factual and legal insight.

                3. Start with the diagrammed sentence.

                  Find the noun in the subject of the sentence.

                  That is what the inventor (the rightful party per the words of Congress) has decided that the invention is “directed to.” See 35 USC 112.

                  Ask yourself if this fits into one (and fits loosely – See Chakrabarty) of the statutory categories. See 35 USC 101 and 100.

                  Bonus:
                  Check that the claim as a whole has the proper utility for patent eligibility (within the Useful Arts).

                  There Paul, that is much more than a smidgen – and reflects the state of 101 prior to the judicial activism that broke the scoreboard.

            2. And if, as a matter of substance, claimed subject matter falls within one of the four categories, invoking judicial exceptions raises interesting and hitherto unexplored issues of separation of powers.

              Hitherto unexplored…?

              Now I know that you have not been paying attention – I (among others) have been exploring this for years.

          1. nor does it change what a manufacture is

            I agree that writing instructions on an old medium created to store the instructions doesn’t change either the instructions or the medium, at least not from a technological perspective (i.e., the perspective that’s relative to patent law).

            The instructions remain the instructions, and the old medium is the old medium.

            It’s no different from storing written information on an old medium that was created to store the information (and present it upon request). Of course, until very recently very serious people like you and your c0horts were screeching all the way up to the Supreme Court that such g@rb@ge was also eligible for patenting. You got nine thumbs down shoved in your face.

            Tell us some more about “dust kicking”, “anon.” You’re a very serious person!

            1. You conflate and confuse what a manufacture is.

              Your “old medium is old medium:” stance is nothing more than the Big Box of protons, neutrons and electrons logic.

              Try thinking of the simplified Three Resistors example. Wrap your head around that to begin with.

            2. I agree…doesn’t change either the instructions or the medium, at least not from a technological perspective (i.e., the perspective that’s relative to patent law).

              Nice false equivalency with the “I agree,” as you insinuate a statement not made and in fact the opposite proposition has been made.

              Further, the notion that the different configuration of the “objective physical media” is not important simply does not square with reality (elsewise, your Britney Speard CD and your Microsoft Operating system disc would be exactly interchangeable.

              But you already knew that (in part because I have previously told you so).

              Please refer to the direct and easy to understand Set Theory explication that I have previously supplied.

              Then let’s see you man up to face the topic with a bare minimum of inte11ectual honesty.

              1. the notion that the different configuration of the “objective physical media” is not important

                The “different configurations” are not important to the eligibility of the claim if they are not recited (directly or indirectly) by the claim.

                Basic stuff. But you’re totally not about the dust-kicking! Nope. Not you.

        1. I’m not dust-kicking. Software is instructions for applying logic to data, written for a computer that was built to accept the instructions.

          “Dust kicking” is asserting that “software is a manufacture, therefore it’s eligible.” Actually that’s worse than dust-kicking.

          But it’s what you do.

          1. written for a computer that was built to accept the instructions.

            which eliminates the mental steps doctrine and squarely places the “objective physical structure” of the differently arranged manufacture into the patent eligible category.

            This is not difficult to understand. Your
            A
            O
            O
            T
            W
            M
            D
            aside.

            1. which eliminates the mental steps doctrine

              Not at all. Using a pencil and paper doesn’t “eliminate” the mental steps doctrine. They’re just tools, like a computer.

              “objective physical structure” of the differently arranged manufacture

              If the art-distinguishing structure isn’t in the claim, then you can’t rely on it for your “argument.”

              Basic stuff. Thanks for playing.

              1. …plus your “pencil and paper” is a non sequitur.

                How would something be written for a pencil and paper…?

                Once again, you need to be inte11ectually honest here and own up to your very own volunteered admissions against your interests concerning the exceptions to the judicial doctrine of printed matter.

            1. Are you saying that software is not a manufacture…

              “Are you saying that pencils and paper aren’t manufactures?”

              Let me know if that’s too nuanced for you.

                1. I’m waiting Malcolm.

                  Prove that you are “right there” and have not run away by providing an inte11ectually honest answer to the question put to you.

      2. Simple. When gears and cogs were used to implement logic to make an adding machine or an enigma machine, no one questioned that those were patentable machines. When the gears and cogs were replaced with a processor made of transistors that was configured with bits to make a much smaller and faster adding machine, no one was crazy enough to question whether those were patentable machines.

        It’s only logical.

        LLAP

        1. I think you would find the EPO’s VICOM decision much in point.

          But in Vicom the software was doing the technical job of sharpening an image. Was there a similar technical job being done here, and did it involve credible ingenuity?

          I am well aware of the 101/102/103 split. However judges are human, and if they can see no real invention in the subject matter claimed they have an understandable temptation to throw the case out and remove it from their docket.

          1. Is “credible ingenuity” anything like “Flash of Genius” Paul?

            Serious question – and one that I am sure you may immediately recognize why it is asked.

    2. Paul, the courts seem to treat Beauregard claims as method claims. Someone, I think, should directly address the issue of B-claims under damages, because what Beauregard claims do is end-run contributory infringement that requires knowledge of the patent and infringement before liability is imposed.

      1. End run…

        Let me remind you exactly who Congress stated gets to define the invention: the inventor.

        Explicitly, this is not the courts.

      2. I do not see how a Beauregard claim can fall into the method category because it is directed merely to a storage medium loaded with instructions. But the storage medium is not claimed in operation and is not actually performing any method steps.

  10. In making its eligibility conclusion in Amdocs, the appellate majority focused on the claim requirement (as construed) that processing be done in a distributed fashion. According to the court, “enhancing data in a distributed fashion” is “an unconventional technological solution . . . to a technological problem (massive record flows which previously required massive databases).”

    Move over DARPA and Al Gore, it turns out Amdocs invented the field of computer networking, hahahahahaha.

    1. The best part is that the majority here just eats it up.

      “The spec says so!” <— seriously?

      The scriveners who thrive on this b@sement level g@rb@ge just found another root to gnaw on.

  11. According to the majority opinion, “each patent explains that [physically distributed architecture] is an advantage over prior art systems that stored information in one location, which made it difficult to keep up with massive record flows from the network devices and which required huge databases.”

    Except that physically distributed architecture and its advantages were in the prior art as of the filing date of this patent. There was and is nothing “unconventional” about carrying out different information processing tasks in different locations (for a zillion different purposes) and that’s been the case for a long long long time. It’s a concept that predates programmable computers.

    Reyna also argued that the “distribution architecture … is insufficient to satisfy Alice step two” because the limitation is not actually found in the claims and, even as interpreted provide only a functional result.

    Are those really “arguments”? They seem more like facts that illustrate that the majority is out-to-lunch and simply bending over backwards to find a way for the farce to continue.

    Because that’s certainly what’s happening here.

    But, hey, patent attorneys and junk patentees need to get richer! And when they get richer — a whole lot richer — they’re going to trickle that money down to everybody in the fly-over states who are oh-so-angry at “elites”. Wait and see! It’ll be awesome.

    LOL

    1. distributed processing

      The “inventors” of this junk didn’t “innovate” the concept of distributed processing of information. Not even close. But, hey, they realized they could file a junk patent and threaten people with it! Jobs!

      LOL

        1. The real issue here is the broken scoreboard of importing 102/103 into 101.

          Nope. Subject matter eligibility jurisprudence always — necessarily always — will involve consideration of the relationship of the claim to the prior art.

          In some particular cases — the very very worst cases — that consideration won’t be necessary. But in other cases it absolutely is necessary to keep subject matter determinations from turning into a pure scrivener’s game. Which is pretty much happened, hence the mess that the Supremes are trying to clean up now.

          1. As far as scriveners go, the real mess has been made by the Court acting as scriveners themselves (in violation of the separation of powers), resulting in a re-written law that is Void for Vagueness.

            You should pay better attention to the issue of broken scoreboards.

      1. Neither did they claim such. What they claimed was a method of processing network usage records. To those of ordinary skill in the art of phone/network billing the claimed method was new and not obvious. Deal with it.

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