Trading Technologies: User Interface for Stock Trading

Before writing more about Trading Technologies v. CQG, I will first note that TT is my former client and I personally filed the original complaint in this very case 12 years ago (2005).  Although TT is no longer my client, I am bound by and respect the rules of professional ethics and the duties owed to former clients.  

The new non-precedential opinion from the Federal Circuit affirms the district court ruling that TT’s asserted claims are patent eligible.

The patent claims here cover a computerized method and system used for trading stocks and similar products.  When buying and selling stocks, speed and accuracy are both critically important and in this invention, TT created a Graphical-User-Interface design (and operational software) that helps traders buy and sell stock more quickly and more accurately. See U.S. Patents No. 6,772,132 and No. 6,766,304.

The court writes:

It is not disputed that the TTI System improves the accuracy of trader transactions, utilizing a software implemented programmatic [method]. For Section 101 purposes, precedent does not consider the substantive criteria of patentability. For Section 101 purposes, the claimed subject matter is “directed to a specific improvement to the way computers operate,” Enfish, for the claimed graphical user interface method imparts a specific functionality to a trading system “directed to a specific implementation of a solution to a problem in the software arts.” Id.

The opinion is authored by Judge Newman and joined by Judges O’Malley and Wallach.  The court’s opinion is a short and interesting read:

Precedent has recognized that specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter. … [I]neligible claims generally lack steps or limitations specific to solution of a problem, or improvement in the functioning of technology.

For some computer-implemented methods, software may be essential to conduct the contemplated improvements. Enfish… Abstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole.

We reiterate the Court’s recognition that “at some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Alice, quoting Mayo. This threshold level of eligibility is often usefully explored by way of the substantive statutory criteria of patentability, for an invention that is new, useful and unobvious is more readily distinguished from the generalized knowledge that characterizes ineligible subject matter. This analysis is facilitated by the Court’s guidance whereby the claims are viewed in accordance with “the general rule that patent claims ‘must be considered as a whole’.” Alice, quoting Diamond v. Diehr.

As demonstrated in recent jurisprudence directed to eligibility, and as illustrated in the cases cited ante, the claim elements are considered in combination for evaluation under Alice Step 1, and then individually when Alice Step 2 is reached. Applying an overview of this evolving jurisprudence, the public interest in innovative advance is best served when close questions of eligibility are considered along with the understanding flowing from review of the patentability criteria of novelty, unobviousness, and enablement, for when these classical criteria are evaluated, the issue of subject matter eligibility is placed in the context of the patent-based incentive to technologic progress.

 

The patents are also currently being challenged on 101 grounds in CBM proceedings before the USPTO.  Although I feel that it should have a direct impact, it is unclear to me whether this decision will impact the PTO proceedings addressing the identical question.  (For instance, the court here holds that the patent covers a technological invention – and CBM proceedings can only proceed for non-technological inventions.) Patentees may also consider petitioning the court to make this decision precedential.

About Dennis Crouch

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

146 thoughts on “Trading Technologies: User Interface for Stock Trading

  1. We just printed a Deathstar yo-yo on our 3D printer.

    The machine had no capability to print a Deathstar until we loaded the .stl file, which instructed the machine how to do it.

    Later, we loaded a new .stl file to print cable clips, something the machine could not print before the new instructions were added.

    Do I have a new 3D printer?

    I’m not really asking.

    1. Of course you are not.

      Not that you are confusing the work product and the machine making the work product or anything trivial like that, eh?

      Get your money back from that Holiday Inn that you stayed in last night.

      1. Yea, but the output on a computer monitor is not a “work product” because you say so.

        Yea because the printed matter doctrine is grounded in statute, as your separation of powers fetish demands.

        Yea, as if my human consumption test is not grounded in the fact that its the most accurate meaning of the word “abstract”

        Yea as if the 11 CAFC judges and 8 Supreme Court justices don’t have 19 different ideas of the proper subject matter analysis for information inventions.

        Yea as if I ever discuss inventions as “software” rather than as “information” based.

        anon your script is tired. the regulars here know that I know enough to reasonably participate, and the terrain that you are so sure of is entirely in your mind since here in objective reality, the terrain is a random walk that no lawyer or judge can predict until the opinions come out. You are as adrift as me, or anyone else and I suggest your fantastic world is far more elaborate than mine….

        1. Yea because the printed matter doctrine is grounded in statute, as your separation of powers fetish demands.

          This made me chuckle.

          1. As explained in the easy to follow Set Theory explication, whether of not it is grounded in statute is only a limitation of the pervasiveness of what Congress actually wrote.

            In other words – your barking up the wrong tree.

            That you might find even some small delight in that only shows your own lack of understanding.

              1. Where did you see me say anything about ” limitations of pervasiveness” in regards to either the judicial doctrine of printed matter or to the exceptions to the judicial doctrine of printed matter?

                Try please to keep up Mr. Snyder.

        2. Mr. Snyder,

          You are NOT as grounded – not even close – because you still refuse to acknowledge, let alone understand law , its history and the facts on the table.

          Instead, your own personal feelings are what drive you.
          You got burned, and like a woman scorned, you have a fury that blinds you.

          1. I’ve had multiple interactions with the patent system anon, and you know I’m not free to talk about them, but five minutes of effort would lead you to the public record filings, which can clarify your quite incorrect conclusions.

            Beyond that, your endless appeals to authority are meaningless becuase nobody has a grip on information inventions, which is amply illustrated day after day by the case reports we all see.

            As to my emotional blindness? White hate clarifies rather than obscures quite often, and especially in matters of ideology.

            You really should strive to do better.

            1. and you know I’m not free to talk about them

              Not talking directly about them does not hide the rather evident fact that you have been emotionally scarred by them.

              your endless appeals to authority are meaningless

              Do you even know what that means?

              White hate clarifies rather than obscures quite often, and especially in matters of ideology.

              I am most definitely not the one that needs to strive to do better (hint: that would be you). My views remain grounded in actual law, actual history, and yes, actual facts.

                1. Says the guy who says nothing – nothing that accords with law, the history of law, or facts pertinent to the discussion.

                  But, hey, you “feel” strongly about this (with your “white hate“, and you have concocted a brand new scheme and perhaps most critical of all, you slept at a Holiday Inn last night…

  2. MM, I enjoy many of your posts. Where would you stand on these two inventions as far as 101:

    (1) Invention #1 is a control circuit for window made of electrochromic smart glass, the control circuit works by monitoring a logic state of a register that is tied to a photovoltaic. If it’s sunny outside the state changes to “sunny” and the control circuit sends a current into the window to render it opaque. The control circuit is a GPU executing software.

    (2) Invention #2 is a window made of photochromic smart glass. The amount and distribution of dye in the window is selected so that window is opaque when it’s sunny.

    Both inventions operate the same under the same conditions.

    Is either invention patentable? They operate according to logic, in one the logic is embodied in the GPU, in the other it’s embodied in the selection of the dye.

    1. You didn’t ask me, but neither would be an invention because the previous invention of the “smart glass” would render them obvious.

      The very point of smart glass is to adapt opacity to conditions- doing so by totally conventional means is not an invention.

      If you mean in a subject matter sense, both are clearly within the scope of the patent act.

      Apologies for the blurt.

      1. Mr. Snyder, you quite miss the point attempted (even as you recognized the difference between patentable (as per “the rest of the statute”) and patent eligible.

        You do realize of course the notion that software is equivalent (in the patent sense, and yes, that is in fact different than “the same as”) both firmware and hardware right?

        You have heard of this thing called ASICs, eh?

  3. I drove my car through Beverly Hills. It was a big improvement to my car, obviously, over the time I drove it through the south side of Chicago.

  4. Claim 1 of US Patent 6,772,132:

    1. A method of placing a trade order for a commodity on an electronic exchange having an inside market with a highest bid price and a lowest ask price, using a graphical user interface and a user input device, said method comprising: setting a preset parameter for the trade order displaying market depth of the commodity, through a dynamic display of a plurality of bids and a plurality of asks in the market for the commodity, including at least a portion of the bid and ask quantities of the commodity, the dynamic display being aligned with a static display of prices corresponding thereto, wherein the static display of prices does not move in response to a change in the inside market; displaying an order entry region aligned with the static display prices comprising a plurality of areas for receiving commands from the user input devices to send trade orders, each area corresponding to a price of the static display of prices; and selecting a particular area in the order entry region through single action of the user input device with a pointer of the user input device positioned over the particular area to set a plurality of additional parameters for the trade order and send the trade order to the electronic exchange.

    This is why Alice is such a disaster. It’s impossible to tell from reading claims what’s patentable and what’s not. You have to somehow “divine” whether something “is an improvement to way computers operate”, especially when the claimed subject matter doesn’t actually improve the computer itself: it only improves the way trades are made using the computer. The same with Enfish. Both of these were really improvements to the functioning of software — the computer itself was not “improved” in any way. When I look at both the claims here and in Enfish, I think they’re invalid under Alice. Yet, the courts hold the other way. Why?

    Enfish:

    “Much of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes. We do not see in Bilski or
    Alice, or our cases, an exclusion to patenting this large field of
    technological progress.”

    The claim there:

    A data storage and retrieval system for a computer memory, comprising:
    means for configuring said memory according to a logical table, said logical table including:
    a plurality of logical rows, each said logical row including an object identification number (OID) to identify each said logical
    row, each said logical row corresponding to a record of information;
    a plurality of logical columns intersecting said plurality of logical rows to define a plurality of logical cells, each said logical column including an OID to identify each said logical column; and
    means for indexing data stored in said table.

    Can anyone look at this claim and tell me what’s patentable about it (under Alice, that is)? The only way to do it is research the “improvement” made to some “software”, and then somehow correlate that “improvement” with the claim.

    How the hec k is an Examiner supposed to do this? And what do I tell my client? Currently, I’ve been telling them that I have no idea whether their claim is valid or not; they’ll have to wait until litigation.

    Also, why aren’t the claims under Alice valid under this theory? They involved computer software that was an improvement over other software.

    1. why aren’t the claims under Alice valid under this theory?

      This is just my opinion, but I read Trading Techs as the CAFC throwing up their hands and saying “heck if I know what Alice means. Let’s just treat Alice as confined to its own facts and try to sketch out a 101 test based on our own precedents, unburdened by the more confusing aspects of Alice.”

      In other words, if you are having a hard time reconciling this case to the holding in Alice, join the club. I do not think that they can be reconciled.

      I think that this case represents a bolder presentation of the trend we have seen emerging in the CAFC over the last three months of some of the judges realizing that they have tried to implement Alice, and it just cannot be done. Mayo and Alice are just too entirely self-contradictory.

      Instead of continuing to beat their heads against the wall trying to implement an inherently undiscernible standard, it appears to me that certain judges (Taranto, Reyna, Newman, Moore, and O’Malley) are just going to give up on it and forge a new test. Meanwhile, Dyk, Wallach, Mayer, and Hughes are sort of apostles of Alice and are going to do their level best to see that Alice is implemented in a strong sense by resolving any internal contradictions in Alice always in favor of unpatentability.

      1. Mayo and Alice are just too entirely self-contradictory.

        Tell everyone what’s “self-contradictory” about those cases, Greg.

        Also, the fact that PatentBob is “confused” about something isn’t evidence of anything except, maybe, that the earth hasn’t completely blown up.

    2. Greg, the difference between Alice and here is simple. In Alice, the claims were directed to a business method, non statutory. Here, an improvement to the way computers operate.

      Now, this is why I believe the Supreme Court and the Federal Circuit as a whole are following Flook/Bilski (Stevens) reasoning and not the Bilski majority which never bothered to explain its reasoning.

      1. I am hard pressed to see how these claims are any more an improvement to how a computer operates than were the Alice claims. Both amount to a discovery that you could do X on a computer. This is not like Enfish where you have (arguably) created a method of indexing data that makes it faster to find certain kinds of data. The claim itself purports to be a method of placing a trade order, not a method of improving computer function. I know that Judge Newman’s opinion characterized these claims as improving computer function, but I think that it is to ingenuous to take that at face value. The invention claimed in Alice improved as much computer function as the invention claimed here.

        1. Greg: I know that Judge Newman’s opinion characterized these claims as improving computer function, but I think that it is to ingenuous to take that at face value.

          That’s because Judge Newman l i e d. Plain and simple.

          1. Good point. I should have said “the invention claimed in Alice,” rather than “the Alice claims.” I hope my meaning was clear enough, despite the lack of clarity with which I presented my argument.

            1. It’s all good I don’t mean to be pedantic. The reason I correct people on this point is to try to combat the near constant conflation with words scribbled on a page with an invention. Expunging that conflation helps prosecution.

              1. And quite right you are to do so. I wish more people would trouble themselves not to confuse deceptively similar ideas, and to call me out when they see me indulging a muddle. Clear distinctions beget clear thinking, and clear thinking avoids erroneous conclusions.

                1. Your reply is deceptive, my friend Greg – as you avoid conversations with the people that do the very thing that you “wish more people would do.”

    3. You have to somehow “divine” whether something “is an improvement to way computers operate”,

      Because a certain class of incompetent and/or ethically bankrupt patent attorneys is apparently incapable of writing claims that describe an eligible invention.

      If you’ve invented something that “is an improvement in the way computers operate”, it’s a bit odd — to say the least — to recite limitations about “displaying prices.”

      And I know this will sail right over your flat head. It’s super nuanced!

  5. Does anyone know the procedural posture of this case? I was perplexed to see that the sole issue on appeal was whether the district court correctly decided that the claims were patent-eligible. I would expect to see a 101-only opinion on appeal when the district court goes against the patentee on 101 because the case is over at that point.

    But with a 101 win for the patentee, there remain a whole bunch of validity, infringement and damages issues left to resolve. Why the trip to the Federal Circuit at this point? Ordinarily that would be an improper interlocutory appeal. I must be missing something.

    1. Ordinarily that would be an improper interlocutory appeal

      If the district judge allows it, it’s not improper, as far as I know.

      1. Perhaps you have in mind the procedure of 28 USC 1292(b). That could well be how this case ended up at the Federal Circuit, but here the court did not mention that statutory exception to the final judgment rule.

        1. I looked at the defendants-appellants’ brief and the attached district court judgment. It appears that the case proceeded to trial after the 101 ruling, and the patentee won a $15.8 million judgment. Best I can tell, the defendants-appellants limited their appeal to the 101 issue (maybe I missed something). If so, I’m a little surprised that there wasn’t any claim construction, validity, infringement or damages issue worth appealing.

  6. MD: I want in the Decision a discussion why program-writing is “technologic”

    LOL

    You’ll never see any such thing because addressing the manner in which old programmable computers are programmed to execute ineligible logic (remember: that’s the sole reason that programmable computers were created) will give away the game.

    It’s also why you never see anyone asserting claims to “A method for instructing an instructable computer to execute logic, comprising typing instructions into said computer with a keyboard, wherein said typing includes the following keystrokes …” and similar such claims. And that’s true no matter how awesomely valuable and earth shattering the “new logic” is.

    Go figure.

    1. …to execute ineligible logic…

      Once again, how goes your copyright on logic?

      A simple question, Malcolm, but one that simply eviscerates your dissembling.

      Are you ready to explain how [Old Box] – with no change – somehow has new capabilities?

      Hint: use the inherency doctrine in your answer.

      1. Hint: oldbox has no new capabilities. It’s still oldbox, even when it has new software.

        Does new software have new capabilities? It may, but they are abstract. Are those capabilities machines? No. Manufactures? Maybe. Compositions of matter? No. Processes? Maybe.

        Are they too abstract to patent? Some say yes, some say no, and I say no if a machine uses the information, and yes if a person does.

        The law was not written with software inventions in mind, nor have courts come to a working agreement about it. Until that happens, your opinion is just as worthless as mine. So sad.

        1. “Hint: oldbox has no new capabilities. It’s still oldbox, even when it has new software.”

          Nonsense. New capabilities for my old box is why I installed the new software.

          1. If the box could not previously run your new software, and you change it in some way so that now it can, then oldbox has new capabilities.

            If the oldbox can run software designed to be executed on it, regardless of what that software does, oldbox is still the same oldbox.

            How many ways does this need to be illustrated? Looms and patterns? DVD’s and DVD players? Lathes and CNC codes? TV’s and TV transmissions?

            If the TV can suddenly display signals from the flux on anon’s tinfoil hat, it would be newbox. If it can still only show that which is broadcast as TV signals, its oldbox.

            1. You think you’re so smart, Martin! But watch this: printed matter doctrine! inherency! Grand Hall! box of neutrons! and most importantly, the Wright Brothers.

              Consider yourself decimated!

              /patent maximalist off

              1. Not yet, anon’s keyboard must have worn out or he/she is on the way to Trump’s inaugural, but I assume by tomorrow AM I will have been asked and answered but good…..

                1. Or, you can try to understand the terrain upon which you want to do battle…

                  😉

                  …and there is a clear difference between the capability of “running software” and the capability that running particular configurations of software provide – much like the importance of not just haphazardly throwing protons,neutrons, and electrons together, and putting them together in a specific configuration.

                  That’s Malcolm’s purposeful dissembling aside, of course.

            2. Yes. Those are all new machines. It is merely a point of view.

              You can call something a music box or you can call it a pop goes the weasel player. If you invent a pop goes the weasel player you can claim the precise configuration of fingers on a drum and the precise dimensions of the harp elements.

              If you later determine a gearing arrangement and a drum finger placement that plays a different tune, that’s a new invention.

              Is a manual typewriter different than an electric? Sure it is. Whats different about them? Well, for one thing, the electric has additional parts.

              Likewise, a computer with only WORD is a different machine from one with both WORD and EXCEL.

              1. Likewise, a computer with only WORD is a different machine from one with both WORD and EXCEL

                mmmm hmmm. Sure it is.

                My car is a different machine when Rihanna is installed in the CD player than it is when Rihanna and Ariana Grande are installed in the CD player.

                Totally different machines. Really.

                1. Yay – nothing like not paying attention to the point already made (like so many times that even Malcolm has volunteered admissions against his interests as to knowing and understanding the legal points of the exceptions to the judicial doctrine of printed matter.

                  But hey – you just don’t care about the actual law, that much is clear – no matter how that lack of caring has left you scarred with your own emotional wounds from being sued, eh Mr. Snyder?

        2. Hint: oldbox has no new capabilities. It’s still oldbox, even when it has new software.

          Eminently no true.

          Summed up in one word: configure.

          (hint: do you configure your television set? Or is there inherency at play there?)

          1. This makes zero sense. Bolding the word inherency does nothing to clarify. Either the computer is being “improved” or it is not. It certainly is not.

            The software may be an improvement over prior art software, or the “bond trading system” as a whole may be improved, but the computer’s ability to run any variation of instructions within it’s designed I/O instruction set is not changed an iota, nor is your TV “configured” when you change a channel. If you change the power supply, or the display driver, or the tuner, or the input interface, you have changed the TV. If you merely change the input signal, you change nothing about the TV.

            How. Many. Times.

            1. And the screw isn’t changed when it is a component of an invention either. It is still a screw. Whats your point?

              component 1 : computer

              component 2: software

              component 1 + component 2 = new machine.

              1. component 1 : Old computer

                component 2: New software

                component 1 + component 2 = Old computer + New Software

                Why such violence to the English language and common sense?

                Because new software is hard to place in “Inventions Patentable”, so the patent bar can get paid instead of the copyright bar?

                Plus I’m pro-software patent bub. Just not when the software achieves utility by processing information consumed by human beings.

                You want to patent mpegs and clever self-driving algorithms, and clever phone number algos and a million other things, have at it.

                The machines are still old machines unless there is new physical structure, because machines are physical things, as a child knows.

                1. And yet – your own “I am pro-patent” stance fails because you want something different as the law – something completely untethered to law, history, or heck, even facts.

                2. There are new physical structures. You just have difficultly seeing them because they are small. They are the electrical and/or magnetic fields that are installed or modified as a result of the software installation.

                3. Les,

                  He refuses to acknowledge that software has – as it must, since it works – the critical part of the exceptions to the judicial doctrine of printed matter: the functional relationship.

                  This functional relationship is NOT “only in the mind” because computers do not have minds.

                  This is the beauty of one of my favorite words: anthropomorphication.

                  On another thread I posted the following link – it further debunks the misconception about software as somehow “thinking:”

                  link to aeon.co

                  Mr. Snyder will of course clench tight his eyes to such facts, simply because they do not align with his personal agenda.

  7. Has the deadline passed for a cert petition to reverse McWrong? It must be getting close. This decision is just as bad as McWrong (which was, unfortunately, precedential). One reason to confine this case to non-precedent was surely to minimize its importance and decrease the otherwise phenomenal likelihood that the Supremes will crush the opinion into dust.

    Just how bad is it? Well, try to wrap your head around all this nonsense:

    The court found that these patents are directed to improvements in existing graphical user interface devices that have no “pre-electronic trading analog,”

    News flash: graphics were used to present data before electronics. Also, data was presented using graphics generated electronically eons before this patent was filed. That technology and those “analogs” were in the public domain and that is all that matters for the analysis.

    The district court explained that the challenged patents do not simply claim
    displaying information on a graphical user interface.

    LOL Now get ready for this next part. Scrivener’s delight!

    The claims require a specific, structured graphical user interface

    There is a things displayed on parts of the screen! Therefore: “structured.” Yes, friends, the US patent system is a j0ke. Electronic displays that have no distinguishing physical structure (relative to the prior art) are deemed by the fiction writers on the CAFC to be “structured” based on the information displayed thereon. Clever!

    paired with a prescribed functionality directly related to the graphical user interface’s structure

    Oh, wowee zowee! The things are in locations for a reason! And what’s this about “prescribed”? Is that different from “recited”? Of course it isn’t. But it sounds so much more … serious! And the more window dressing the better when you’re trying to keep things as opaque as possible.

    The short version of the word salad I quoted is : the claim recites a user interface in functional terms. Why not just say that? Well, we all know the answer to that question …

    that is addressed to and resolves a specifically identified problem in the prior state of the art.

    That’s nothing but boiler plate bal0ney recited by every patentee using functional claiming to protect logic “on a computer.”

    But here’s where the decision goes completely off the deep end (this is page 7). First Newman attempts to compare this claim to the claim at issue in the CAFC’s equally r0tten DDR decision, i.e., she suggests that the claim solves “a problem specifically arising in the realm of computer networks”. That’s absurd. The claim tells you right off the bat what it is: “a method for displaying market information.” If these guys thought they were solving a “computer networking problem”, don’t you think they would have simply claimed that instead of this narrow pile of ineligible g@rb@ge?

    But wait! That’s not all. The best part comes at the end of this paragraph where Newman states “the graphical user interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract idea and ineligible concept.”

    Say what?! Since when? As the CAFC itself has explained on literally dozens of occasions: the novelty of the ineligible abstraction or concept doesn’t matter for squat. The Supreme Court as well is crystal on this point. So where did Newman dig this up? Unbelievably, she tries to pin it on Mayo! And even more unbelievably, the cite she provides is completely off point (“the patent must “amount to significantly more in practice than a patent upon the [ineligible concept itself]”).

    The rest of the analysis is an absolutely unintelligible attempt to distinguish this case from reams of cases where the CAFC has found the claims ineligible (and remember: those cases don’t include the dozens of Rule 36 smackdown of ineligible claims that the CAFC has published, including a couple more this morning).

    The farce continues.

    1. “The court found that these patents are directed to improvements in existing graphical user interface devices that have no “pre-electronic trading analog,”

      News flash: graphics were used to present data before electronics. Also, data was presented using graphics generated electronically eons before this patent was filed. That technology and those “analogs” were in the public domain and that is all that matters for the analysis.”

      These remarks seem to indicate that you have fixated on the word “pre – electronic.” However, the phrase has additional words including “trading analog.”

      In the olden days traders did not have a graphical display. First everything was done over the phone and with little slips of paper Later there were text based alpha-numeric displays (sort of a green on black motif). Also, there was a lot of yelling and slips of paper and offensive sport coats:

      link to youtube.com

      Sure, there may have been yearly charts prepared, but those weren’t used while trading.

    2. “But wait! That’s not all. The best part comes at the end of this paragraph where Newman states “the graphical user interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract idea and ineligible concept.”

      Say what?! Since when? As the CAFC itself has explained on literally dozens of occasions: the novelty of the ineligible abstraction or concept doesn’t matter for squat. The Supreme Court as well is crystal on this point. So where did Newman dig this up? Unbelievably, she tries to pin it on Mayo! And even more unbelievably, the cite she provides is completely off point (“the patent must “amount to significantly more in practice than a patent upon the [ineligible concept itself]”).”

      Since you and the Supremes keeps saying things are abstract because they are old…. like hedging for example.

      Reread Bilski, including the Oral Argument… One of them said is was abstract because it was in his old text book.

      1. you and the Supremes keeps saying things are abstract because they are old…. like hedging

        “Hedging” is both old and abstract. Nothing controversial about that.

        And the Supremes never said that the correlation the infringer “thought about” was old.

        Try to keep your facts straight, Les. I know it’s very difficult for you.

          1. They said it was abstract because it was old.

            No, they didn’t. This is myth.

            You are confused. Remember? You and your cohorts have been telling everyone you are confused for years now. Never forget that.

            Part of the reason you are confused is because you have a reading comprehension problem. Another factor is that you don’t even try to understand what the Supreme Court is saying.

            At least stop spreading the misinformation. It’s not like we can’t see what you’re doing.

            1. You are confused. Remember? You and your cohorts have been telling everyone you are confused for years now. Never forget that.

              You forget Malcolm, that your “one bucket” trick does not work and that what one person says cannot be attributed to another just because YOU place them all into one (cohort) bucket.

              As for “At least stop spreading the misinformation.” – heed your own advice first.

        1. “In light of these precedents, it is clear that petitioners’ application is not a patentable “process.” Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk: “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” 545 F. 3d, at 1013 (Rader, J., dissenting); see, e.g., …. The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea,…”

          To simply, as you often do to claims, its old, therefore its abstract….

          That’s from Bilski by the way, but the same inane logic is displayed elsewhere.

          1. “Hedging is a fundamental economic practice

            Read this a hundred times.

            And then remember this:

            Fundamental economic practices are ineligible for patenting

            And adding “a computer” or “a display” does not suffice to change this result. Likewise, limiting the economic practice to some sub-field (e.g., trading in corn futures) changes nothing.

            You want to patent a new cash register? Go ahead. Just describe the new cash register in objective structural terms distinguishing its structure from prior art cash registers. You’re in the clear. Of course, that requires some skill in a patent eligible art. Too difficult for you? Boo hoo hoo hoo hoo. Just stick to writing software then and enjoy the special protection that Congress created for you.

              1. they ruled that it was abstract because it was old.

                Again: that is false.

                The fact that some abstract subject matter is “old” is probably the least helpful thing if you are trying to protect that abstraction by combining with some prior art non-abstract subject matter.

                But new abstract subject matter doesn’t get you anywhere, either, unless you and your jurist/examiner are both out-to-lunch. This is perfectly clear if you read Mayo and Alice and use your brain, instead of your wallet, to help you understand.

                1. It is not false. I pasted the text. If age isn’t a factor, then why mention it. Why not just end the sentence with hedging is a fundamental economic practice period, full stop. (which is of course nonsense by the way). The law of supply and demand might be fundamental. Hedging is not.

                  Answer: Because the ruling is: its old, therefore its abstract.

                2. If age isn’t a factor, then why mention it.

                  To underscore just how incredibly junky those claims are.

                  Maybe you haven’t noticed but scrivening fancy legal jargon around ancient data processing tasks is a full-time job for the worst players who ever participated in any patent system, ever. Bilski was a wake-up call. The maximalists tried to hit the snooze button but they got hammered with Alice. Then the hit the snooze button again. Gee, I wonder what happens next.

                3. You are not being inte11ectually honest with the point that you and Les are talking about, Malcolm.

                  He cornered you, and all that you had left was ad hominem.

                  Of course, that’s pretty much all that you had to begin with, which just leaves you the same – and in the same corner.

                  “Go figure Folks”

                4. No, it was to bolster the assertion that it is fundamental. The implication was, its old, therefore its fundamental, therefore its abstract.

                  Anyway, you asked “since when” in regard to Judge Newman’s assertion …

                  There’s an answer: at least since Bilski.

      2. Reread Bilski, including the Oral Argument

        Statements made in oral arguments aren’t holdings.

        Bilski itself stands for very very little, by the way. Methods of betting and “hedging” and gambling on future events are ineligible abstractions. That’s a surprise to anyone? Also the fact that you can claim something as a “process” does not mean that it’s automatically eligible for patenting (Bilski’s attorney took the opposite position, in case you’ve forgotten).

        1. “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” 545 F. 3d, at 1013 (Rader, J., dissenting); see, e.g., …. The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea,…”

    3. Maybe Malcolm (once again), you are trying to dissemble about a point that you have volunteered admissions against your interest upon.

      You appear to want to plot a version of printed matter doctrine; whilst neglecting the “functionally related” aspect and your own admission about knowing and understanding controlling law as to the exceptions to the judicial doctrine of printed matter.

      You do know that such dissembling in a court would be unethical to say the least, and you would be sanctioned, right?

        1. …and it’s not as if you are attempting to make an argument to change controlling law – you are (purposefully) obfuscating on a critical point of law that you have admitted to knowing.

          That’s worse than outright l i e i n g.

          And you run rampant doing this same old same old.

    4. MM, we agree on the last bit concerning novelty. Whether the ineligible subject matter is new or old is entirely beside the point. Newman fundamentally does not get it, and the rest of the court will not sign on to this opinion, so it is rendered non dispositive.

  8. Patentees may also consider petitioning the court to make this decision precedential.

    Fair enough, but they really should not have to in this case. I can understand the value of leaving the CAFC the option of making some opinions non-precedential, but that option should be used very sparingly (as opposed to Rule 36 judgments, which may necessarily be used frequently when case loads are high). Ideally, where there are more than (e.g.) 5 issues at stake in an appeal, with different issues pressing in contradictory directions vis-à-vis the ultimate verdict, the court may well say to itself “no lower court is every going to be able to tease out an applicable rule from this welter of competing drivers, so let’s just take this one out of the realm of precedent, so that district court judges need not break their skulls trying to reconcile it to other more intelligible precedents.”

    There was nothing about this case that was similarly hard to follow, however. The only thing that is hard to follow about it is that it appears to confine Alice to Alice‘s own facts. That is to say, it appears to ignore the controlling SCotUS precedent. If the CAFC really is going to cabin Alice thusly, they need to have the courage of their convictions and do so. It is cheating, as it were, to rule in contradiction of Alice, but to try to sneak their defiance past by making it “non-precedential.”

    1. it appears to ignore the controlling SCotUS precedent.

      Oh, it’s worse than that, Greg. Newman completely mischaracterizes the Supreme Court’s decisions in both Alice and Mayo.

      This case drives a truck right through Supreme Court precedent. That’s why it’s not “precedential”. It’s this decision that is “limited to its facts.”

      Not that it matters much. McWrong is also completely inconsistent with the Supremes and plainly opened the gates for Newman and her handful of like-minded colleagues on the CAFC to reach whatever decision re eligibility that they wish, at least when the claims have plenty of extraneous verbiage.

      Meanwhile, junky “do it on a computer” claims that are indistinguishable from this one (after you sweep away the irrelevant bal0ney) are being Rule 36’d left and right by Newman and her fellow judges. It’s a farce.

    2. It trespasses against the underlying logic of stare decisis to have lots of non-precedential decisions. And lately there are a lot. According to Dennis’ count, the CAFC handed down more non-precedential decisions in 2015 than precedential ones, and was on track to do so again in 2016 as of June. It is hard to maintain stare decisis when decisions are not made precedential.

      1. A much bigger problem than “precedent” versus “non-precedent” are the Rule 36 opinions.

        There are far, far more Rule 36 opinions upholding District Court and PTAB decisions that claims are ineligible than the contrary. Those Rule 36 opinions are published without listing the claims that were at issue and found ineligible, and without any statement whatsoever as to the basis for the holding.

        It’s ridiculous and there’s no excuse for it except for laziness.

          1. Hm, for whatever little it is worth, I disagree. The CAFC is not like the SCotUS—i.e. it does not get to choose which cases it hears. If someone files an appeal, the CAFC has to decide it. If the opinion below is sound, and the issue at stake is bog ordinary, there is no reason for the CAFC to use up the valuable time of its judges (or clerks) re-inventing the wheel. Just let the ruling below stand. Rule 36 affirmances are a perfectly sensible way to do that, and to dispose of the mass of cases that really do not merit an opinion.

            1. Greg: Rule 36 affirmances are a perfectly sensible way to do that, and to dispose of the mass of cases that really do not merit an opinion.

              I’m not asking for an opinion. All I’m saying is that it would be extremely helpful to everyone to know at least (1) what claims were at issue in this case whose judgment the CAFC has decided to affirm; and (2) under what statutes did the claims survive or fail.

              This isn’t “re-inventing the wheel” at all. This is just a basic courtesy to people who are trying to get a grasp on what the CAFC is doing. “Re-inventing the wheel” is kicking Supreme Court (and, in some cases, CAFC precedent) to the curb and writing a precedential opinion that is internally contradictory and reads as if the writer is thinking about subject matter eligibility for the first time, in a vacuum. That would appear to be what you’re asking for.

  9. the court here holds that the patent covers a technological invention

    But it’s non-precedential.

    And it’s one of the least coherent subject matter eligibility decisions ever written, which is really saying something.

    1. Non-precedential does not mean what you seem to be implying that it means – leastwise for the parties involved (if the same parties are involved at the PTAB, the fact that this decision was labeled non-precedential matter not one bit on whether the “law of the case” is binding.

  10. Dennis, overall the opinion is sound. But when it says, “[T]he graphical user
    interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract idea and ineligible concept,” the opinion blasts off into the surreal. This fully explains why the opinion was not and will not be listed as precedential.

    1. overall the opinion is sound.

      There is nothing “sound” about this opinion.

      If you took this opinions statement of “the law” and filed it with the Supreme Court or even most panels on the Federal Circuit I would expect some serious blowback.

  11. First, if the doctrine of equivalents were to be applied, how could this “invention” ever be examined? If a similar graphical representation were used in dozens or hundreds of other instances where changing one variable affects one or more other variables, and none of those were found in patent documents, how would prior art be uncovered?

    Next, who is the appropriate PHOSITA here? Bond traders? Graphic artists? Statisticians?

    Next, how does this differ from a slide-rule or any two-dimensional new, non-obvious and described technical graphic in terms of subject matter?

    Next in what world is this an improvement to the capability of the system as a whole? They can’t mean the computer system, because it can only do what it did before the program was loaded and can only do the same things after the program was loaded. Thus the “system” they mean can only mean the bond-trading system, of which the computer is only one part, or they mean the use to which a person puts a patented article (i.e. a result). If someone uses the same display concept not for bond trading, but say for forecasting hotel room occupancy based on nearness to a holiday, are they infringing too?

    This is a perfect example of where my proposed doctrine would be simple to apply: this invention generates information, which is entirely abstract, from computer program instructions, which are entirely abstract, for consumption by a human being, the value of which information is unique to each user, and therefore is impossible to fairly value, alone, or as a component of the software solution within which it is found.

    It should be ineligible for patenting.

    should be ineligible as an abstract result of an abstract method.

    1. “Next in what world is this an improvement to the capability of the system as a whole? They can’t mean the computer system, because it can only do what it did before the program was loaded and can only do the same things after the program was loaded.”

      Um, no…sometimes a “system as a whole” is both hardware and software, *integrally* functioning thanks to a truly *inventive* concept. You don’t get to strip away certain aspects of what make the system what it is, and then say that what’s left is abstract.

      Some software and business method patents really are “junk” – but that threshold isn’t where you seem to think it is.

      1. So does this bond-trading system include the bond trader?

        When a graphics engineer improves the screen resolution, does that improve the bond-trading system?

        When the bond trader minimizes her trading screen and brings up Facebook, is it still a bond trading system? How about if instead of minimizing the trading app, she unloads it? Is it still a bond trading system?

        How about if she loads the trading app from a USB stick that she then puts in her pocket. Is the computer on her desk still a bond trading system?

        Who is the PHOSITA in this system? Is it the interface designer, who may know nothing about bond trading whatsoever? Or is it a bond trading expert we would have to frame the obviousness inquiry around?

        Kind of odd that a person who knows nothing of bond trading might be the person skilled in the art of improving bond trading systems….

    2. First, if the doctrine of equivalents were to be applied, how could this “invention” ever be examined?

      Some claim terms do not have equivalents. If it really is as hard as you say to identify the relevant equivalents, then that may merely mean that there are not any. It is not objection to the validity of a claim that certain elements may simply lack equivalents.

      Next, who is the appropriate PHOSITA here? Bond traders? Graphic artists? Statisticians?

      Once again, this strikes me as a weak objection. Innovation does not confine itself to our pre-defined categories. Sometimes a given claimed invention draws on several different categories, in which case the PHOSITA simply will not fit neatly into one category either. On the other hand, we all knew people in college who were double majors in (e.g.) philosophy and physics, so people with overlapping expertise sets do exist.

      [I]n what world is this an improvement to the capability of the system as a whole? They can’t mean the computer system, because it can only do what it did before the program was loaded and can only do the same things after the program was loaded.

      Nonsense. A computer loaded with software does many more things than a computer without software. This point hardly seems worth asserting. I am not a comp. sci. major, but I have turned on a computer before that had no operating system loaded, and also turned on a computer with an operating system loaded. The two experiences were discernibly different.

      1. Sometimes a given claimed invention draws on several different categories, in which case the PHOSITA simply will not fit neatly into one category either.

        So we can get all loosey goosey on POHISTA and that’s not a wee problem?

        I have turned on a computer before that had no operating system loaded, and also turned on a computer with an operating system loaded. The two experiences were discernibly different

        They are structurally identical. I have looked at my TV when it was tuned to channel 9, and it was all static. I have looked at it when it was tuned to channel 3, and the football game was on. The two experiences were discernibly different. Did I have two TV’s?

        1. So we can get all loosey goosey on POHISTA and that’s not a wee problem?

          I guess I do not agree with the characterization “loosey goosey.” The PHOSITA here is someone with experience in statistics and graphical display and bond trading. The fact that the PHOSITA does not fit into only one of those arts is not really a legal problem, just a complication.

          1. The bit about PHOSITA really speaks to procedure and why a subject matter inquiry is not actually a 102/103/112 inquiry even whilst looking at novelty, non-obviousness, and complete description.

            Until an invention is construed as to the actual location of the contribution of the putative inventor, you can’t model the PHOSITA, which means you can’t apply 102/103/112.

            That’s why the Markman procedure should be expanded to include subject matter eligibility. 12(b)6 is ridiculously inadequate and unfair to both sides.

        2. I have looked at my TV when it was tuned to channel 9, and it was all static. I have looked at it when it was tuned to channel 3, and the football game was on. The two experiences were discernibly different. Did I have two TV’s?

          Judge Newman did not say that a computer with the claimed software is a second, new computer. She said that the software “improve[s] the functioning of a known system.” I would say that tuning to a station with a signal improves the function of your t.v., relative to tuning it to a channel without a signal.

          1. I would say that tuning to a station with a signal improves the function of your t.v., relative to tuning it to a channel without a signal.

            That’s interesting. I see no functional change whatsoever; the TV was built by it’s designers to tune to TV channels when they are present and to display static when no TV channels are present. Those TV channels must meet the precise specifications for wavelength and digitization; if they do not, they are something other than TV channels for that TV

            The computer was built by it’s designers to process instructions when they are present and to display nothing when they are not present. Those instructions must meet precise specifications for syntax, and if they do not, they are something other than program instructions for that computer.

            If you devise improved TV channels or improved instructions, independent of the content of those channels or instructions, you have improved the systems. If you modify the content, you have created new content for use by those systems, and you should have some protection for your content so that it may not be stolen and used by others without reward to you. The proper intellectual property for content is copyright. The so-called “functional” aspects of the content – be they for entertainment, or bond trading, or computer-gaming, or anything else that the unmodified systems may process, are pure abstractions that have no place in a sane patent system IF they are being consumed by human beings.

            Because machines cannot be said to have minds, and only minds can host abstractions, if information is consumed by non-human actors and contributes to a functional result, the nature of the abstraction is materially different. It may remain intangible, but it’s not a creation of mind, and that, to me, is all the difference in the universe.

            1. The computer was built by it’s designers to process instructions when they are present and to display nothing when they are not present.

              This is a perfectly fair point, and it seems to my mind to bespeak a sort of gestalt shift in how one looks at software. Is it really achieving a “technical effect,” or is it just “content”? The statute is written in a way that it can be construed consistent with either view. As it happens, the SCotUS favors your view (at least for the moment), and therefore your view is the law (or at least closer to the law than my own view).

              I will say this in defense of my view. Fundamentally, the patent system has three goals: (1) to encourage discovery; (2) to encourage disclosure; and (3) to encourage dissemination (usually commercialization). That is to say, you want to find out new things, tell them to other people, and make the practical applications of those discoveries available to the relevant markets. When someone writes new code for the computers in my car that makes the car more fuel efficient, that is just as much in furtherance of those three goals as when someone else changes the shape or size of some engine part in a manner that also improves the fuel efficiency. Therefore, from the bluntly practical point of view, it seems to me sensible to treat the software invention the same as the mechanical invention.

              I confess, however, I cannot offer a logical refutation of the argument you offer. It seems logically sound enough to me. I am just not sure that your approach ends up giving the sort of liberal encouragement to innovation that we should want to give.

              1. Greg if I did not agree with this When someone writes new code for the computers in my car that makes the car more fuel efficient, that is just as much in furtherance of those three goals as when someone else changes the shape or size of some engine part in a manner that also improves the fuel efficiency. then I would be in the MM camp that no software or non-novel physical structure should be eligible.

                I’m not in that camp, but I draw the line at human consumption of abstract content. Non-humans cannot consume content as abstractions, because only the human mind may host abstractions. |

                Even if we manage to create machine sentience, and even if the technology we use is wet, I draw that line at the human mind as a universal principle.

                1. Fair enough. Allow me to rephrase.

                  If someone invents an assay that lets me know whether my son will have peanut allergies when he is older, that is just as much in furtherance of those three goals as when someone else invents a vaccination to prevent peanut allergies. Therefore, from the bluntly practical point of view, it seems to me sensible to treat the invention that provides information to a human the same as the invention that physically alters the human’s thymic system.

                2. If someone invents an assay that lets me know whether my son will have peanut allergies when he is older, that is just as much in furtherance of those three goals as when someone else invents a vaccination to prevent peanut allergies

                  If the assay method is a new structure or use of existing structures, non-obvious, and fully described, it should be patented. If its a conventional assay, but a newly discovered correlation, what you have is a new piece of information, and a scientific discovery, but you don’t have a patentable thing, and the value of that information is unique to you.

                  A vaccine is a composition of matter, and even if it’s a known composition being used in a new way, the result of the method is still a physical change in the world, which is the same change in every instance where it’s used, not an abstract item of information of different value to each user.

                  Therefore, from the bluntly practical point of view, it seems to me sensible to treat the invention that provides information to a human the same as the invention that physically alters the human’s thymic system.

                  No, it’s bluntly impossible fairly to value that information, or to Constitutionally monopolize it if it was obtained by means in the public domain.

  12. “…also currently being challenged on 101 grounds in CBM proceedings…”
    It’s hard to imagine how the PTAB could now reach the 101 question. The Federal Circuit says the claims are not patent-ineligible, shouldn’t that be dispositive? Assuming the PTAB and the court are using the same claim construction. Can anyone think of scenarios under which the PTAB could now possibly hold these same claims 101-ineligible?

    1. Sure, the PTAB panel enters one paragraph discussing the CAFC decision followed by the sentence, “we are not convinced.”. They then go about their merry business of invalidating the claims without a care in the world. Thus throwing another year or more of delay into the litigation that started in 2005. Justice delayed is once again justice denied.

      1. Yeah, PI, that line has been TM’ed by the PTAB, and it fully signals that the burden really has shifted to the patent owner to prove patentability.

        1. Ned – and yet again I find you whining about something – without as yet showing that you understand that what you are whining about happens because certain sticks in the bundle of property rights that belong to a granted patent are taken at a very particular instant of time.

            1. Not at all Ned.

              The primary fault is yours.

              Step one: show that you understand the rather plebeian property law concept of sticks in a bundle (you haven’t even come close to doing that yet)

    2. See, e.g., link to wilmerhale.com

      The difference in standard would be one way of saying, yeah, CAFC found them eligible, but we are operating under a different standard.

      I, generally, think collateral estoppel (and the variants) should be stronger – one attempt by a party and done.

      1. Good point Slaffles – when that particular difference in standard applies.

        In the matter of an instance of law, the law remains the same under “both” standards, isn’t that so?

        😉

  13. Haven’t yet read the text of the Decision but from the extracts shown above the following leaps out at me.

    First, on precedent: “….specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter.”

    Second, the specifically claimed subject matter is eligible as:

    “…a solution to a problem in the software arts”

    So I want in the Decision a discussion why program-writing is “technologic” and why the “solution” is a technologic modification.

    Perhaps it will help close the seemingly endless argument on these pages, whether writing code for a computer is, per se, a technologic act.

    1. Gottschalk v. Benson, 409 U.S. 63 (1972) involved a method for converting binary-coded decimal (BCD) numerals into pure binary numerals on a general purpose digital computer. The invention increased by 33% the efficiency of digital computers. Would that now be patentable under TT?

      1. In short, yes, but Benson was poorly reasoned, and that’s even setting aside the judicial creation of exceptions to 101 based on what were really enablement concerns in the pre-1952 caselaw. This is because Benson’s claims should have been patentable under even Benson’s own logic. The “nutshell” of the Benson Court’s reasoning is this:

        “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case.”

        This second sentence is incorrect as a factual matter. The Benson claims did not cover all ways of “converting BCD numerals to pure binary numerals” on a computer, just some of them. For an easy example of this, consider that the claims don’t preempt a BCD to decimal to binary conversion (what a human might do by hand). And don’t just take my word for it: the Benson Court itself acknowledged a nuanced distinction between this method and other methods of BCD to decimal conversion, stating earlier in the opinion that “[t]he method sought to be patented varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation.” So as noted above, the Benson court was wrong to think that the “practical effect” of these claims was to patent the idea of BCD to binary conversion.

        Moreover, the Court also has the analysis backwards when it further stated that “[t]he mathematical formula involved here has no substantial practical application except in connection with a digital computer.” Who cares? It is irrelevant whether the claimed method could be performed without the claimed computer components, because that wasn’t claimed. What is relevant under Benson’s reasoning is merely whether the so-called idea of “BCD to binary conversion” was monopolized by this claimed steps. And it wasn’t.

        But I would daresay that Benson’s claims would logically be found eligible under the majority of the 2016 Fed. Cir. precedent. First, the claims are not “directed to” BCD to binary conversion, but to a specific way to perform that conversion. The “essence” or “character as a whole” or “focus” or “basic thrust” of the claims is thus to this specific implementation, not the general concept of BCD to binary conversion. And frankly, this sort of focal point analysis has been the law before this TTI case; it is set forth as the initial step in the “directed to” inquiry in Internet Patents Corp, Enfish, Electric Power, McRO, Affinity Labs v. DirecTV, Merial, TLI, Fairwarning IP, Bascom, and Rapid Litigation Management. Moreover, even if this focal point analysis were disregarded, the Benson claims would be patentable at the “directed to” inquiry under the Enfish safe harbor (an improvement to computer functionality) or the non-preemption logic of McRO (an improved method of BCD to binary conversion, not the only method), and the Benson claims would in any event be patentable at the “inventive concept” inquiry using the logic of Bascom (a particular arrangement of elements providing a technical improvement over prior art ways of BCD to binary conversion).

        1. E, Ultimately what Benson has come to stand for is that mathematical algorithms are not statutory processes. They have to be applied in a conventional process or machine to improve them.

          1. That’s quite a casual (and patronizing) dismissal of my point that doesn’t actually address anything I said.

            But I’ll do you a courtesy that you don’t do me and accept, for argument’s sake, your premise that Benson can be captioned as “mathematical algorithms are only statutory when applied in a conventional process or machine.” Even with this understanding of Benson, then at least some of Benson’s claims would be eligible, because they are implemented by way of “reentrant shift registers.” Do you disagree?

            But in any event, I do not accept the apparent breadth of your premise. Benson’s reasoning all stems from the proposition that “one may not patent an idea.” Well, the term “mathematical algorithm” would not ordinarily be an equivalent term for an “idea” to a layman, so it seems that Benson does not use the term “mathematical algorithm” in the way we might ordinarily understand it. Instead, Benson implicitly defines that term using a quote from Mackay Co. v. Radio Corp. that states that “while a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” The term “mathematical expression” as used in Benson refers to a formulation of a “scientific truth” in the language of math (e.g., e=mc2, which is not restricted to some particular applied domain). This is emphasized by the distinction drawn in this quote between scientific truths and “novel and useful structure created with the aid of knowledge of scientific truth” (which Benson implies would be eligible).

            Benson defines an “algorithm” as “[a] procedure for solving a given type of mathematical problem,” not as the specific procedure for solving a specific problem. With this in mind, Benson describes the “algorithm” at issue in its claims as “a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another.” In doing so, Benson draws a contrast between “the generic formulation” and “programs [that] may be developed as specific applications.” Benson itself is not particularly clear on what this dichotomy implies, but I believe the intent is to suggest that specific applications of a general algorithm are eligible, despite the fact that the “generic formulation” itself is not (if this were not the intended reading, then what would be the point of this discussion of “specific applications”?).

            From this language in the opinion, it is my view that Benson actually stands for the proposition that while a general idea or a results-defined mathematical statement would be classified as an ineligible “mathematical algorithm,” a specific implementation should not be. But Benson’s claims are – in reality – specific implementations of the general concept of BCD to binary conversion, not broad recitations of the general concept itself, so I think Benson’s ultimate finding of ineligibility does not follow from its reasoning. As a result, to the extent that Benson remains precedential (given the vast number of more recent cases), I read the case not as suggesting that any “mathematical algorithm” is ineligible (as we might use that term in lay parlance), but to suggest only that claims that can phrased using the language of math are ineligible when they are recited at a high level and by their ultimate results, while claims including the specific steps for achieving those ultimate results remain eligible.

            1. E, what is important about any Supreme Court case is the way the Supreme Court itself characterizes it.

              Thus, in Flook we learned that mathematical algorithms are non statutory, and that the bit about “wholly preempt” was not a requirement. Simply referring to a use, even somewhat specific, was not “enough.” There had to be an inventive application.

              Later, in Diehr, we learn that math “applied” in a conventional process (to improve that process) was sufficient.

              In Mayo/Alice, we again learned that “abstract” material must be applied in an inventive fashion. However, this did not displace Flook’s statement that mathematical algorithm’s are nonstatutory or that wholly preempt was not required. What we learned is that “abstract” includes math (and business methods.) But to me, by circular logic, the Supreme Court is dancing around Bilski’s majority holding (calling business methods abstract) by really following Flook and the dissent in Bilski that math and business methods are nonstatutory. I just call it as I see it.

              Again, it is best not to focus on Benson’s reasoning. That has been eclipsed, especially the bit about “wholly preempt.”

              Now, regarding Benson’s claims, they were construed to cover the mathematical algorithm, with the computer preamble as a limitation on use: in other words, do it on a computer. This is precisely the kind of use limitation that was demolished in Flook, and finally disposed of in Alice.

              1. “Thus, in Flook we learned that mathematical algorithms are non statutory, and that the bit about “wholly preempt” was not a requirement. Simply referring to a use, even somewhat specific, was not “enough.” There had to be an inventive application.

                Later, in Diehr, we learn that math “applied” in a conventional process (to improve that process) was sufficient.”

                Yes, we learned if you change an alarm limit at the end of your method it is not an eligible method, but if you open a door at then end of you method, because a limit has been reached, then it is eligible….

                .so, always add some insignificant post solution activity, like opening a door to make your claim eligible.

                1. Les, the claims have to be more like Diehr than that. The claim as a whole must be directed to a specific inventive application and not to simply do it on a computer, or use it in a chemical process.

                2. Ned : Here is Diehr’s claim 1:

                  A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

                  providing said computer with a data base for said press including at least,

                  natural logarithm conversion data (1n),

                  the activation energy constant (C) unique to each batch of said compound being molded, and

                  a constant (x) dependent upon the geometry of the particular mold of the press,

                  initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

                  constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

                  constantly providing the computer with the temperature (Z),

                  repetitively performing in the computer, at frequent intervals during each cure, integrations to calculate from the series of temperature determinations the Arrhenius equation for reaction time during the cure, which is 1n v=CZ+x

                  where v is the total required cure time,

                  repetitively comparing in the computer at frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

                  opening the press automatically when a said comparison indicates completion of curing.

                  Other than opening the door, and the particular equation, how is it significantly different from the Claims in Alice?

              2. You are even more off than normal Ned.

                Do you recognize the parallel between what you just posted and the line from the Wizard of Oz (pay no attention to that man behind the curtain).

                May I also remind you (yet again) to read (heck even print it out here so that everyone can read it) what your state attorney oath says (I guarantee that it does not place the Supreme Court above the Constitution!)

                1. anon, your lack of understanding of the Supreme Court jurisprudence in this area is legendary. You interpreted Bilski as holding that “business methods are eligible subject matter.”

                  Of course, they are not and never legitimately have been.

                2. You remain the one that is off and I was the one perpetually correcting you that the holding in Bilski was NOT directed to “business methods” but instead was to “abstract.”

                  Your attempt to redefine history
                  F
                  A
                  I
                  L
                  S

            2. That’s quite a casual (and patronizing) dismissal of my point that doesn’t actually address anything I said.

              Easewaran, that’s Ned being Ned.

        2. Logic is ineligible subject matter.

          Carrying out logical operatings using an old machine that was designed for the sole purpose of carrying out logical operations doesn’t rescue the logic.

          That’s how it’s done. Everything else is a farce. All this CAFC jurisprudence keeping s0ftie w0ftie junk afloat is nothing more than a house of cards built on a foundation of 100% pure bal0ney.

        3. Logic is ineligible subject matter.

          Carrying out logical operations using an old machine that was designed for the sole purpose of carrying out logical operations doesn’t rescue the ineligible logic.

          That’s how it’s done. Everything else is a farce. All this CAFC jurisprudence keeping s 0 ftie w 0 ftie junk afloat is nothing more than a house of cards built on a foundation of 100% pure bal 0ney.

    2. MaxDrei,

      You want the very things that in the past you have refused to provide definitions for.

      I wonder if you grasp the irony.

Comments are closed.