Dennis Crouch
The principle that patent prosecutors are following today is in the headline: Get Technical or Get Denied. The following is a case-in-point.
Nonprecedential decision today in Clarilogic v. FormFree Holdings affirming that the claims of FormFree’s U.S. Patent No. 8,762,243 are ineligible under 35 U.S.C. § 101 as directed to an abstract idea. [Decision: clarilogic] The patent is directed toward a credit reporting scheme. The gist – according to the court:
In brief, the … system seeks a potential borrower’s financial information from a third party, applies an “algorithm engine” to the data, and outputs a report. . . . the logic rules applied by the engine are received “from government entities or particular users.”
Claim 1 is drafted as a seven step method as follows :
1. A computer-implemented method for providing certified financial data indicating financial risk about an individual, comprising:
(a) receiving a request for the certified financial data;(b) electronically collecting financial account data about the individual from at least one financial source,(c) transforming the financial account data into a desired format;(d) validating the financial account data by applying an algorithm engine to the financial account data to identify exceptions, wherein the exceptions indicate incorrect data or financial risk;(e) confirming the exceptions by collecting additional data and applying the algorithm engine to the additional data,(f) marking the exceptions as valid exceptions when output of the algorithm engine validates the exceptions; and(g) generating, using a computer, a report from the financial account data and the valid exceptions,wherein the financial account data comprises at least one of real-time transaction data, real time balance data, historical transaction data, or historical balance data; and the algorithm engine identifies a pattern of financial risk; the method is computer implemented, and steps (c), (e), and (f) are executed via the computer or a series of computers.
The Supreme Court’s atextual reading of 35 U.S.C. 101 has created a set of subject matter excluded from patentability – including abstract ideas. The two step eligibility framework under Alice/Mayo first asks whether the claims are “directed to” an abstract idea and then, if so, asks whether the claims include “something more” beyond the abstract idea such as an “inventive concept” that is “sufficient to transform the nature of the claim into a patent eligible application.” Quoting Alice. These issues have generally been treated as questions of law amenable to judgment by a court even at the pleading stage of a lawsuit.
Step 1: The claims are directed to an abstract idea because their focus is “on collecting information, analyzing it, and displaying certain results of the collection and analysis.” (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Here, the court suggests the claims might have passed the test if the “algorithm engine” had been further identified or explained, but simply “claiming an algorithm does not alone render subject matter patent eligible.”
Step 2: The requisite ‘something more,’ does not include recitation of the use of a generic computer. Here, FreeForm argues that its invention uses algorithms to transform data in parallel fashion to the way that Diehr used an algorithm to transform rubber. On appeal, however, the Federal Circuit disagreed:
In contrast to Diehr, claim 1 recites a method that changes the way electronic information is displayed via an unknown and unclaimed process. Absent any limitation to how the data are changed, there is little, if any, transformative effect. Data are still data.
The problem, according to the court, is that the patent simply does not reach any inventive “technical manner” in which the “data is gathered, analyzed, or output.”
Meanwhile, the robot cars which will (according to some very very serious people!) be conducting courtroom trials in twenty years continue to fail miserably:
Based on the data in the documents, the [Uber] drivers had to take over from the self-driving system every mile for one reason or another. They include navigation issues related to unclear lane markings, the system missing a turn or bad weather preventing it from working properly. Drivers also had to take over due to auto-detected hard decelerations or abrupt car jerks more frequently last week than in January.
Uber didn’t count events that might have led to serious accidents, such as those that would have damaged property or hit a person — those were counted as “critical interventions.” Thankfully, the vehicles drove an average of 200 miles between these critical interventions last week.
Yes, but those “use logic to drive a car” patents are totally worth zillions!
LOLOLOLOLOLOLOLOLOL
Keep throwing money down the tubes, Genius Investors. We’ll all build special highways just for you because you’re oh so important in your own minds.
?
MM, what if we create a new type of sentient being called Democratibots. Using the same arguments that Picard used to gain citizenship for Data, these Demoratibots will soon have citizenship, civil rights and the right to vote. Mass produced. They will eventually outnumber human voters and could “take over.”
I wonder how they would react to a patent suit against themselves personally for using circuitry or programming patented by others, including their facing an injunction.
Recall the Merchant of Venice and the pound of flesh?
Looking forward to your book.
Lol – kind of important to recognize that machines do NOT have those types of “rights,” eh Ned?
Of course, one of my favorite words fits here:
Anthropomorphication
(Machines just do not have ‘mental steps’ – no matter how much effort is put into the Zombification of that deceased patent doctrine).
“Lol – kind of important to recognize that machines do NOT have those types of “rights,” eh Ned?”
Be sure to tell your new robot overlord that when they come asking.
Tell you what 6, the day we have “robot overlords” is the day I stop being concerned with patent law.
Until that happens, let’s try to see if Ned and Malcolm can at least try to get patent law correct when it comes to machines, manufactures, and processes.
I don’t think I’ve ever asked you anon. Are you for or against AI research? Any limits you think we should put on it?
Also some people on the planet already have robot overlords.
Your turn is coming.
link to digitaltrends.com
Sorry 6, the only thing I see there is your fe tish.
Lol!
Wakey wakey anon, time for work!
Come home early anon!
Work hard anon!
Your reply is non-responsive.
Maybe try again (with something inte11igent).
Dennis, seriously, why do you allow MM to continue to dominate this blog? You have a paid blogger dominate everything on this blog.
MM: your post is ridiculous. It has nothing to do with patent law and merely shows that you believe you can judge technology and have distain for technology. Patent law should be and maybe used to be (now it is run by Google judges like Hughes) not judging the technology by your personal feeling, but by apply the law.
You are a disgrace MM.
Doesn’t this go to show that all software is not obvious?
Doesn’t this got to show that driving a car is not an inherent ability of computers, even though computers are designed to be programmable?
Doesn’t this go to show that if they get it right, the invention will be non-obvious and worthy of a patent?
Doesn’t this go to show that the eventual claim to a method of driving a car of the form:
A method of driving a car comprising:
Receiving desired destination information;
Receiving current location information;
Accessing map information;
Accessing local rules of the road information based on the current location information;
plotting a route based on the desired and current location information and the map information;
Receiving at least one video input representing a forward, side and rear view around the car;
Receiving at least one radar signal representing a forward, side and rear view around the car;
Analyzing the video and radar information according to the following set of rules (insert here the successful rules);
and controlling a speed and direction of the car to follow the path based on the analysis of the video and radar information and the local rules of the road information.
…should and would be patent eligible, if only because this is the sort of progress we want to promote and to do so would also promote the general welfare, provide for the common defense and help ensure domestic tranquility?
sounds of silence….. sue prize, sue prize, sue prize.
In other sub-threads below, I see that the “cat has the tongue” of both DP and Ned.
With Ned, it is customary for him to run away when inconvenient points are put on the table of discussion.
I was hoping for more from DP.
Somebody has to have the last word. I am too engrossed in contemplation of the myriad ways in which those … uh … those scary creatures that live under bridges, you know … can paralyze the effective functioning of economies that are over-dependent on kangaroo-power.
Lol- 🙂
But, Anon, yes, I would concede to you that the Second Law of Thermodynamics is a “law” and that “thermodynamics” is part of physics, and therefore the Second Law of Thermodynamics is a law of physics that is not invariant under time reversal.
I would also concede that, if you ran the film of that thrown ball backwards, the ball would seem to get colder and gain kinetic energy, so the trajectory would differ from the corresponding forwards film, but nevertheless the trajectory of the ball would be approximately a parabola, viewed forwards or backwards, so there would be no appearance of anti-gravity (which was the original point at issue).
But then, it would likely only be within the mind of a human beholder that some subtle patterns in the distribution of quarks, electrons, etc. will resolve itself as the perception of a mammoth being attacked by a sabre-toothed tiger.
Nevertheless human culture has traditionally recognized a distinction between ingenuity on the one hand and natural philosophy on the other. The man who had been “working for eight years upon a project for extracting sunbeams out of cucumbers, which were to be put into vials hermetically sealed, and let out to warm the air in raw inclement summers” would, were he to succeed, deserve the grant of letters patent rewarding his inventiveness and ingenuity with exclusive rights in his invention for a limited period of years. But the Academy of Lagado had two “sides”, and the “projectors in speculative learning” resided on the opposite side to the inventors – though many seem to have engaged in what later would be called “applied science”. It seems that the Academy was a center of excellence in linguistics. Nevertheless some of its members were research-active in natural philosophy, one of whom had written a treatise on the “malleability of fire” for which he was seeking a publisher.
“But then, it would likely only be within the mind of a human beholder that some subtle patterns in the distribution of quarks, electrons, etc. will resolve itself as the perception of a mammoth being attacked by a sabre-toothed tiger.”
The subtle patterns will be what they will be regardless of the presence or absence of the mind of the human beholder.
(Note that I am not saying that more than a human mind intruding with a type of measurement action would be absent some effect – but that effect, too, is not bidirectional as far as the arrow of time goes)
As for the malleability of fire, I am reminded of a long ago undergraduate course in which we were studying that very subject… (but for very real world concerns related to the space program).
Now I have been provoked into posting, I thought I might as well take the opportunity to sing my own cover version of the Old Piano Roll Blues.
There are two desktop computers in this room. One was delivered by Dell. The other sort of came together by accident; I didn’t originally intend to provide myself with a second desktop computer, but one thing led to another. I focus on this second desktop computer. It started off with the purchase of a package from a retail store containing an ASUS motherboard with usual chips and a desktop fan. I had intended it to replace a defunct motherboard, but it turned out that the target case had a non-standard form factor. So off to the shop to purchase a desktop computer case and (if I remember correctly, as a separate purchase) the main fan. The machine subsequently assembled contains two internal hard disks, purchased at different times. The rest of the kit is plugged in, with stuff from previous machines or purchased separately: monitor, external USB optical disk reader, speakers, a USB-cabled and a wireless keyboard, a USB-cabled and a wireless mouse. To me, the assembly consisting of the motherboard, casing, fan and monitor, with the mouse and keyboard as control is the machine. It has an operating system, the BIOS, which can run operating systems copied onto partitions on the internal hard disks, or on optical and USB storage. That BIOS operating system is the intrinsic operating system that, from my point of view, is intrinsic to the machine, and enables it to play operating systems on storage media, either on the “internal” hard disks, which are merely bolted into trays and plugged in to the motherboard with SATA connections. Currently one hard drive has a bootable partition with a Fedora Linux operating system, and the other hard drive has a FreeBSD operating system that I don’t use.
People might say, what is the use of a “computer” without an operating system that can run useful applications? What is the use of a CD player without CDs? What is the use of a “record player” with a turntable for vinyl LPs without a vinyl LP on that turntable? What is the use of a potato peeler without potatos to peel? What is the use of a combine harvester without a crop to harvest? Do people not consider record players as machines unless they have an LP already sitting on the turntable ready to play? Does flipping the LPs over, or putting a new CD in the CD player create a new record player or CD player? If not, is my desktop computer a functional machine at those times when it doesn’t have an operating system installed on internal hard disks? what is the essential distinction between, on the one hand, plugging a bootable memory stick into a USB port on my desktop computer, or a bootable DVD into the optical reader, and, on the other, putting a CD into a CD player and playing it?
On that desktop machine, I do not normally upgrade over the network, so, about once a year, the disk partition containing the Fedora Linux operating system is reformatted, and the newly-released upgrade is installed. Also I transfer software updates to repositories on the hard disk, and update from time to time, and this often replaces the Linux kernel. But, to me, it is the same computer that I assembled a few years ago, though the running kernel changes on a regular basis. And then, of course, when I upgrade the operating system, I will be booting off an external USB device. Maybe that computer is not particularly useful unless I have booted a partition with an installed operating system to run an application. But a CD player is pretty useless unless it has a CD loaded and is playing it. A coffee plunger is pretty useless without coffee and hot water in it. The “machine” there is surely not the coffee plunger plus coffee plus water?
The other desktop, that I am using to post here, is dual boot, with Windows 10 on one bootable partition and Fedora Linux on another. On the rare occasions when I boot into Windows, I don’t feel as though the desktop I am interacting with suddenly transforms into a different machine.
So, to me, the desktop machine is a machine for running programs on storage media, where one storage medium, typically an internal HD partition, is singled out as the one containing the binary for the operating system currently in use. But, when running Linux, the binary file containing the Linux kernel is just data for the real operating system, namely the computer BIOS.
And the monitor just displays pretty pictures, usually in GUI mode, but occasionally in text mode, just like an old dumb terminal.
In view of the above, the Alappat doctrine that installing software on an existing computer creates a new machine makes no intuitive sense. The core of the computer, with the BIOS operating system is the pianola. The storage media, bootable or otherwise, are just the piano rolls.
You are confusing yourself by not giving proper credence to the “functionally related” aspect of the patent doctrine that applies here.
Try experimenting with a Britney Spears CD when you should be using an actual boot disk (or any disk with which you want to change a machine by configuring that machine with software). Being coy about this does NOT help your credibility, DP, as clearly you have been around long enough to already know this.
But, as I understand it, the Printed Matter Doctrine, in its current formulation, is a CCPA/CAFC doctrine. One can ponder, from a personal perspective, what a doctrine should be, irrespective of what is currently in force. Those examples involving, if I remember correctly, sequences of numbers printed on bracelets do not, to me, carry much conviction.
And I don’t see a bright line between human-readable data and machine-readable data, but that is another long post that I don’t want to get into right now.
And, after all, maybe if TC Heartland and Lexmark are reversed, the situation will be getting close to the point where the only currently valid CAFC precedents and doctrines surviving from the 20th century formulated independently of SCOTUS are those that SCOTUS has not yet got its hands on. But maybe the Phillips standard will be the exception to the rule: perhaps SCOTUS are unlikely to wish to get bogged down in the details of claim construction.
Check out the Hricik side of the blog and look for my very easy to understand Set Theory explication for the excpetions to the judicial doctrine of printed matter.
Whether something “carries conviction” for you or not is rather immaterial.
That’s not being rude, that’s just being real.
LOL:
Love that cute historical parallel:
“only currently valid ___ are those that SCOTUS has not yet got its hands on. ”
Last time that happened, Congress woke up and delivered the Act of 1952.
This time I would love to see Congress employ their Constitutional power of jurisdiction stripping to remove the non-original jurisdiction of patent appeals from the Supreme Court, set up a new (and untainted) Article III court (to preserve the holding of Marburg), and finally put a stop to the nose of wax mashing.
OK, I will bite on this now.
The Wikipedia article on “Vesting Clauses” quotes Article III, Section 1 of the U.S. constitution as follows:—
“The judicial Power of the United States, shall be vested in one supreme Court, and in such inferior Courts as the Congress may from time to time ordain and establish. The Judges, both of the supreme and inferior Courts, shall hold their Offices during good Behavior, and shall, at stated Times, receive for their Services a Compensation which shall not be diminished during their Continuance in Office.”
I will assume, for the purposes of this comment, that not only the wording but also the punctuation and capitalization just quoted correctly reproduces the original text. I have seen the text of the U.S. Constitution in other more authoritative sources, but for purposes of this comment, I am assuming that the above quotation is accurately presented.
I was wondering yesterday whether or not the U.S. Constitution preserved 18th century norms of capitalization, and if so whether the adjective “supreme” qualifying “Court” was capitalized or not. It is not. Note that in “United States”, both words are capitalized. This clearly indicates that this phrase functions as a proper noun, and that whether or not the “States” are united is immaterial for purposes of constructing this constitutional clause.
But given that the clause refers systematically to a “supreme Court”, indicates that the Court is indeed supreme. This seems confirmed later in the reference to “supreme and inferior Courts”. And the specific use of the word one seems to imply clearly that, under any reasonable canon of statutory or constitutional construction, there can only be a single supreme Court. All other Article III courts that Congress may “from time to time ordain and establish” are, under the text of this clause, inferior courts.
The “one supreme Court” would not be supreme unless it exercised appellate jurisdiction over all the other “inferior Courts” that, collectively with the “one supreme Court”, constitute the body in which the “judicial Power” of the United States is vested.
Your reading nullifies the Constitutional power of jurisdiction stripping and thus cannot be correct.
Once again, DP, you aim merely to confirm a preconceived notion, and thus miss the meaning of the law.
Each – and every (including the judicial branch) – are subservient to the Constitution, and you need to understand that the Foun ding Fa thers designed the system so that the Supreme Court was NOT supreme over the Constitution.
Look into the Federalist Papers as to the concerns with a too-powerful Judiciary.
DP,
Your reading is also incomplete in the notion of “original jurisdiction” accompanied by the fact that the judicial power from the Constitution is a limited power.
Sound-byte lawyering (as it appears that you are attempting) is deceptively simple, but nonetheless incredibly incorrect.
But being coy that Alappat is not as dead as King Tut helps your “credibility” as determined by….you?
Listen to arguments in front of any CAFC panel; they virtually laugh out loud when some hapless lawyer invokes the “new machine” argument without pointing out some new physical aspect of the “new machine”.
DP, your location of the BIOS as part of the “machine” is pretty arbitrary, you may as well say the OS is too.
From my POV, I can see an argument for software as a machine component if the information is not consumed by persons (e.g BIOS and lower-level OS functions), but if consumed by persons, it’s inevitably expressive and the “function” cannot be fairly, repeatedly, and economically separated by the workings of patent law.
Alappat is not dead.
If you want to pretend otherwise, that of course is your business.
As is peddling that fantasy of yours which has zero connection with “the workings of patent law.”
Alappat is SO dead.
Which has zero to do with my subject matter proposal.
Beg to differ, Martin. But the holding of Alappat is excellent law. It is the dicta that is dead.
Anon, for the 14th thousand time I ask you to tell us what the holding of Alappat was.
And for the 14,000 time, do you recognize that a case has a holding for any argument that would change the result?
You present a false view that I have not delivered on what at least is one holding in the Alappat case.
I most certainly have.
And I did so in our very first interaction on this matter.
anon, “first?”
Anyone here believe that?
Our discussions on Alappat are in the archives.
Feel free to read them (apparently, perhaps, for the first time).
But, anon, it would be easy to provide a link. Please do.
It’s in the archives.
Why should I say again what you refuse to engage in?
anon, since you said it was the first thing, I assume you know exactly where to look and what to look for. You said that your statements were proof that you were not prevaricating. Yet you stand here before the world and do not defend yourself, implying, of course, that such proof of not prevaricating does not exist.
Everybody knows, anon, that you do this all the time — referring back to non existent statements you made in the past about this or that. You never to my knowledge have ever backed up the referrals with links to your statements, nor simply stopped all the running around in circles by simply making the statements once again, now, on the record that everyone can see what you said without conducting a fruitless and exhausting search.
Ned – it was a hyperbole in that we have discussed this at depth several times, and each and every time we get close to having an inte11ectually honest conversation of the holdings (yes, plural) of Alappat you simply run away.
Every
Single
Time
For you to then come back and claim that it is I that refuse to hold the conversation is beyond chutzpah.
It is patently dishonest and unethical.
Distant Perspective, remember that that diatribe by Rich about programmed computers being special machines and therefor per se eligible was just dicta. The holding of the case was that the claims, drafted in MPF format, covered the hardware disclosed — and equivalents, which could be programmed computers executing each MPF element, which together, in the claim, all added up to a rasterizer of a graphics unit for a display — a very specific machine.
It was not until State Street Bank did Rich go all they way to Dante’s inferno and simply declare the programmed machine eligible.
Alappat seems to have been messy, with jurisdiction issues, and it also involved means-plus-function elements. From my perspective, I would take issue with the fact that the input is specified as “illumination intensity data”, and the “machine” is functionally claimed as a “rasterizer” which presumably generates data to be displayed on an oscilloscope screen, but does not include in the claim the element of displaying the information on the screen. The issues that I would have with the claim would be resolved, if the claim itself had involved elements that explained how the “illumination intensity data” was arrived at, or at least did not specify some vaguely-defined genus of “data”, and if the claim had incorporated the element of displaying on the oscilloscope screen – so that what was specified in the claim took the form of an improvement to an oscilloscope.
The remarks above are motivated by a reading of Diehr, that, to me, distinguishes Diehr from Benson and Flook. In relation to Diehr, maybe the opening of the door does not strike people as sufficiently inventive, but then, in 1981, programming a computer to compute solutions to the Arrhenius equation would seem to me even less “inventive” than opening an oven door. So, from my perspective, any “inventive concept” must derive from the ordered combination of claim elements.
Now consider the process claimed fully from end-to-end, considered in terms of “information” generation and consumption, along the lines of the proposals that Martin Snyder regularly advocates here. No information is consumed that is not produced within the claimed process, and no information is produced that is not consumed within the claimed process. The temperature sensors generate “information” that flows into the computer, is transformed, flows out, and is consumed at the control that determines when the mold door is to be opened. Thus we have an exemplary industrial process, with elements such as measuring temperatures in the mold etc. that require to be considered under 102 for novelty and 103 for obviousness. The computational part is just another claim element in the process.
By contrast, Flook takes, as input for any calcuation “data” obtained from goodness-knows-where, feeds this into an exceptionally elementary equation which, although not apparently disussed in the record, cannot possibly be regarded is in any way novel or inventive. The output is some number that is to be treated as an “alarm limit” to be used in some unspecified and certainly unclaimed fashion in some sort of process for catalytic conversion of hydrocarbons. What is claimed in Flook seems to provide nothing remotely resembling an “inventive concept” of any description. The formula is just an arbitrary formula. You could “invent around” it by simply specifying another formula, equally arbitrary, but different from that specified in Flook’s patent application. In terms of “information flow”, the “process” in Flook’s claim consumes unspecified data not arising in the claimed process, and produces other information, in the form of an “alarm limit” that is not consumed in the process. So there are significant differences between Flook and Diehr that are highlighted by a “semiotic” analysis.
In summary, for Benson, claim 13 is the pure abstract idea, and claim 8 is a pianola-type claim in a very small computational device that turned out to be anticipated by a prior art shift register (Couleur).
One can the look at Abele and Alappat, to see how these fit in with the analysis outlined above.
Your analysis is deeply flawed, DP – you are hunting to fit some pre-conceived idea into the historical narrative, and you are not taking into account the very historical biases of the various Justices involved (and the push back that Judge Rich was able to provide, seeing as he understood better than anyone what Congress actually did in the Act of 1952).
That is why Ned attempts to denigrate Judge Rich.
Regarding legislative intent and purpose…
In connection with remarks below, I suggest bearing in mind that confirmation hearings for Judge Gorsuch’s nomination to SCOTUS start next week, and that Judge Gorsuch is an avowed “textualist” who seems to align himself closely in that regard with the late Justice Scalia. This might perhaps be relevant in pondering whether appointing Gorsuch to SCOTUS will change things with regard to the receptiveness of SCOTUS towards the sorts of “everything under the sun” arguments typically presented in, for example, AIPLA amicus briefs.
So on to Scalia himself and what “textualism” meant for him. I first encountered a discussion of the SCOTUS case Edwards v. Aguillard, 482 U.S. 578 (1987) in the essay “Justice Scalia’s Misunderstanding” in the collection of essays Bully for Brontosaurus by Stephen Jay Gould. The SCOTUS opinion is available on justia.com here:
link to supreme.justia.com
To the best of my knowledge, Scalia was a Catholic, not a Southern Baptist, or a member of a denomination particularly associated with promoting “Intelligent Design” positions, and therefore I presume that his dissent would not be based on a personal espousal of the principles of “Creation Science”, though there may be some practicing Catholics who are also young-Earth creationists. The whole opinion is long. I draw particular attention to section III of Scalia’s dissent (joined by Rehnquist).
Apologies in advance for the length of the quote following, though I also expect that some would find it far more readable and interesting than the personal opinions I myself express here.
“In the present case, for example, a particular legislator need not have voted for the Act either because he wanted to foster religion or because he wanted to improve education. He may have thought the bill would provide jobs for his district, or may have wanted to make amends with a faction of his party he had alienated on another vote, or he may have been a close friend of the bill’s sponsor, or he may have been repaying a favor he owed the majority leader, or he may have hoped the Governor would appreciate his vote and make a fund-raising appearance for him, or he may have been pressured to vote for a bill he disliked by a wealthy contributor or by a flood of constituent mail, or he may have been seeking favorable publicity, or he may have been reluctant to hurt the feelings of a loyal staff member who worked on the bill, or he may have been settling an old score with a legislator who opposed the bill, or he may have been mad at his wife, who opposed the bill, or he may have been intoxicated and utterly unmotivated when the vote was called, or he may have accidentally voted “yes” instead of “no,” or, of course, he may have had (and very likely did have) a combination of some of the above and many other motivations. To look for the sole purpose of even a single legislator is probably to look for something that does not exist.
“Putting that problem aside, however, where ought we to look for the individual legislator’s purpose? We cannot, of course, assume that every member present (if, as is unlikely, we know who or even how many they were) agreed with the motivation expressed in a particular legislator’s preenactment floor or committee statement. Quite obviously, “[w]hat motivates one legislator to make a speech about a statute is not necessarily what motivates scores of others to enact it.” United States v. O’Brien, 391 U. S. 367, 391 U. S. 384 (1968). Can we assume, then, that they all agree with the motivation expressed in the staff-prepared committee reports they might have read – — even though we are unwilling to assume that they agreed with the motivation expressed in the very statute that they voted for? Should we consider postenactment floor statements? Or postenactment testimony from legislators, obtained expressly for the lawsuit? Should we consider media reports on the realities of the legislative bargaining? All of these sources, of course, are eminently manipulable. Legislative histories can be contrived and sanitized, favorable media coverage orchestrated, and postenactment recollections conveniently distorted.
So much for Scalia. Maybe all current SCOTUS Justices are comfortable with a textualist approach when considering patent law.
I have actually drafted or participated in drafting some “remarks” intended to become part of the legislative history. Typically, we did this when legislation was crafted by the patent bar and urged upon Congress.
The other day on Gene Quinn’s site I was reading some of his remarks on the legislative history for the AIA where time after time legislators indicated that the upcoming legislation would have a grace period that would be good against third-party prior art. But as Gene said, his review of the actual legislation indicated that the grace period was only good against the acts of the applicant himself.
I wonder just how many votes were swayed by the inaccurate discussion of the legislation. Had they understood what they are really voting for, would they have still voted, “Aye.”
And better yet, would the people backing the legislation but who had not yet read it still back it had they known what was there?
I may continue the discussion below in comments “replying” to a higher level posting, to avoid narrowing columns still further. I am wondering whether those legislators were democrats in the House? It seem as though the majority passed from democrats to republicans, and that the republicans on the Judiciary Committee were more consistently behind the AIA as passed than were the democrats on the Committee.
A web search found for me a compilation of the legislative history of the AIA compiled by a law firm. I won’t post a link here since, once I started working through it, it seemed that the firm had not intended public distribution (and therefore were possibly careless in placing it on the web without taking the precautions to prevent it showing up in search engines).
Obviously I agree with your thinking here DP.
LOL – the “allure” of the “I slept at a Holiday Inn last night.”
How quaint.
“diatribe by Rich”
And in cue, there goes Ned trying to scape goat the single most knowledgeable judicial person regarding what CONGRESS did in the Act of 1952.
You should be ashamed Ned.
Forking this comment off Ned Heller’s comment 21.3.2.
Usual disclaimer, IANAL.
SCOTUS and Statutory Stare Decisis
People may remember this phrase in the majority opinion in Bilski concerning the judicial exceptions for laws of nature, physical phenomena and abstract ideas: “And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.”
What did Justice Kennedy mean by “statutory stare decisis”?
I discovered the following article by Prof. Amy Coney Barrett, Professor of Law at the University of Notre Dame, published in 2005 in The George Washington Law Review:
link to scholarship.law.nd.edu
As explained in this paper, if a decision turns on a constitutional question, SCOTUS may be prepared to overrule prior precedent, because the process of amending the constitution itself is so impracticable. However, where the body of law is founded in statute, SCOTUS will not overrule precedent, essentially because Congress, if it disapproves of the law under governing precedent is free to legislate to amend the statute, and Congress is the body most appropriate to undertake this task. Thus, at SCOTUS level, where statutory stare decisis applies, prior precedent is only overruled in extremely exceptional circumstances. In the words of Prof. Barrett, statutory stare decisis at SCOTUS level is “super strong”.
Thus, in accordance with the principle or policy, SCOTUS would not overrule any of Funk, Benson, Flook, Chakrabarty, Diehr, Bilski, Mayo, Myriad and Alice absent some “special justification” to do so. If there is to be change in the interpretation of statutes governing statutory subject-matter, it should come from legislation in Congress. Unless and until Congress legislates, the Courts, especially CAFC, are expected to develop case law consistent with binding SCOTUS precedents.
The basic principle was set out by Justice Kennedy in the opinion for the Court in Patterson v. McLean Credit Union 491 U.S. 164 (1989), available on justia.com here:
link to supreme.justia.com
“Stare decisis compels the Court to adhere to that interpretation, absent some “special justification” not to do so. The burden borne by a party advocating the abandonment of an established precedent is greater where the Court is asked to overrule a point of statutory construction, which, unlike constitutional interpretation, may be altered by Congress. Here, no special justification has been shown for overruling Runyon, which has not been undermined by subsequent changes or development in the law, has not proved to be unworkable, and does not pose an obstacle to the realization of objectives embodied in other statutes…”
Distant Perspective, your point here about statutory stare decisis is exceptionally important because Judge Rich and generally the Federal Circuit, and the C.C.P.A. before the Federal Circuit, absolutely refused to follow the Supreme Court cases on statutory subject matter. Judge Rich seem to be of the view that the ’52 Patent Act overruled and did away with “judicial exceptions.” He further stated that “new” in section 101 only meant and was completely covered by section 102, when that was not consistent with the Supreme Court cases before or after ’52.
Generally the chaos of the last 40 or 50 years in patent law on patentable subject matter and generally can be traced to one man: Judge Rich.
Ned,
Once again (attempting) to impugn, instead of helpping a non-lawyer understand what Congress did in 1952 (and why Judge Rich was able to stand up to the Court, without ANY recriminations (funny how you never seem to address the fact Ned that Judge Rich was correct as to the meaning of what Congress did (and WHY Judge Rich would know that and the difference of the wax of nose mashing that the Supreme Court was engaged in.
Funny that, you were the person that presented an article on the importance of not following dicta as if it were law.
Do you remember that?
Also, any time you want to supply your State attorney oath, I will be more than happy to explain to our non-lawyer friend exactly why thinking that the Supreme Court “can do no wrong” is simply NOT in accord with our duties as attorneys.
Funny on that too – you never seem able to find that oath…
Ned, why don’t you re-post that article about the difference between (actual) holdings and dicta when it comes to stare decisis….?
I am sure that our rather quick study of a non-lawyer friend would enjoy that bit of understanding (even if it is rather inconvenient for you and your Windmill Chases).
anon, as a drafter and advocate behind the ’52 Act, Rich was the last person in the world to sit as a “judge” on the meaning of the Act.
Imagine der Fuhrer writing the history of the Third Reich?
To the contrary – that alone makes him the BEST person.
You have forever and a day simply failed to understand that.
Couple that with your “screaming silence” on 35 USC 100, and there is little doubt that what you advocate is simply not what the law IS.
And yes, we both know that – that is why you run and hide when you are reminded of the points on the table of discussion.
How is that providing your State attorney oath thing coming along?
Quoting here a short paragraph commencing IIC of retired Justice O’Connor’s opinion in State Oil Co, v. Khan 522 U.S. 3 (1997), where the Supreme Court “with the utmost caution” overruled one of its prior antitrust precedents:
“Despite what Chief Judge Posner aptly described as Albrecht’s “infirmities, [and] its increasingly wobbly, motheaten foundations,” 93 F. 3d, at 1363, there remains the question whether Albrecht deserves continuing respect under the doctrine of stare decisis. The Court of Appeals was correct in applying that principle despite disagreement with Albrecht, for it is this Court’s prerogative alone to overrule one of its precedents.”
Ned really needs to provide you with the article on the difference between Holding and Dicta, as it directly relates to what it means to overrule a precedent.
It is simply legal error to attempt to pick any phrase out of a Supreme Court ruling and say: “THIS is precedent and must be followed.”
DP –
If the yearly upgrade does not give you a new machine, then why bother with the upgrade?
What if instead of erasable media, what you are calling an operating system were part of the bios? What if it were not possible (e.g. due to the involvement of solder) to upgrade the bios, and to get whatever functionality that now motivates the yearly upgrade you had to purchase another copy of the machine, the only difference between the old and the new being the bios? Are these two now not different machines rather than copies of the same machine? Don’t you now have one machine that makes coffee and another that makes coffee and also makes fruit smoothies?
Your repeated use of the phrase “to me” makes it clear that you understand that this is all just a matter of perspective. Given that, it is not clear to me why you don’t want the patent system to promote progress in computer implemented methods the same why it promotes improvements in mouse traps and tooth brushes.
The patent doctrine for DP to pick up and read about is the patent doctrine of inherency.
Either the original machine is capable of the new functions that the upgrade provides, or it is not.
(this is nothing more than that old fallacy of the House television show “quip” which FAILS for the Morse decision)
DP clearly has enough intelligence and command of certain legal cases to show that he is – or should be – aware of the fallacy that he is engaging in.
Kind or reminds me of a certain poster at the Quinn blog that got busted for being a mouth piece (and nothing more).
Hint from anon concerning inherency gratefully acknowledged: note to self to look into this further. But almost certainly no further comment on this posting.
It is getting a bit long in the tooth – appreciate the exchanges, DP.
anon, I was following your continuance of the discussion with DP that I started when I was conjecturing how we could do anti-gravity. Running time backwards, inverting-time space don’t seem to work, even in theory. Stopping time would work. With no time movement, there would be no acceleration even if there were two masses adjacent.
Just before the beginning of the universe, time did not move and mass was nearly infinite. But without time, there was no gravity, right? No acceleration? The large mass could stay as rest without collapsing. This would all change, of course, if time started to move.
Ah, to build the anti-gravity machine. Almost as complicated as the transporter.
Stopping time….
You might as well simply try to live in a 2-Dimensional world…
Please do not try to “play” with physics when you clearly are out of your league there.
anon:
“You overlook a little something that Prof. Crouch coined as the Vast Middle Ground.
This of course is due to the Act of 1952 (something you, like Ned, seem intent on ig noring).”
Just a reminder: The 1952 patent act was silent on functional claiming outside of 112f. anon refuses the point to particular support for his claim.
Keep up the good work, Mr. President. Repeat the l-i-e long enough and surely everyone will believe it!
No Ben, it was not.
Open your eyes son.
…and maybe if you ask really really nicely, Prof. Crouch may explain the coined term for you
Unless of course, you think Prof. Crouch is a L I A R too…
Yeah, that’s what I thought.
Crouch’s October 20, 2014 post (“The Vast Middle Ground of Hybrid Functional Claim Elements”) does not claim that the 1952 act authorized hybrid functional claim elements.
Feel free to quote it, or anything, to prove me wrong.