Intellectual Ventures: XML Patent Invalid

by Dennis Crouch

Intellectual Ventures v. Capital One (Fed. Cir. 2017)

In parallel decisions, the Federal Circuit has affirmed two lower court judgments that Intellectual Ventures patents are ineligible under 35 U.S.C. § 101. This post discusses the Capital One decision and leaves Erie for later.[1]

Collateral Estoppel Following Partial Summary Judgment: An initial issue is that of collateral estoppel.  In a parallel still-pending case, a SDNY district court found IV’s Patent No. 6,715,084 ineligible under Section 101.[2]  That decision was a partial summary judgment – not yet final judgment – since other patents are still at issue.  Still, the MD district court in Capital One found that the prior invalidity decision collaterally estopped IV from arguing validity in this case. On appeal, the Federal Circuit affirmed the preclusion – finding that, under 4th Circuit law, a sufficiently complete partial-summary-judgment of invalidity is sufficient to preclude a patentee from asserting a patent in a parallel case.  This outcome contradicts the Federal Circuit’s prior decision in Vardon Golf (issue preclusion does not flow from partial summary judgment prior to final judgment).[3] However, the Federal Circuit distinguished that case by noting that Vardon Golf was based on 7th Circuit law rather than 4th Circuit law at issue here.

The two additional patents at issue in Capital One (U.S. Patent Nos. 7,984,081; and 6,546,002) cover the editing of XML data.  A representative claim (claim 21) of the ‘081 patent is directed to an “apparatus for manipulating XML documents” and includes a processor along with operational elements (software?).  The patent claims use of a hierarchy of data structures for creating a dynamic document. At the top of the hierarchy is a “management record type” made-up of “primary record types” that are, in turn made up of “data objects” designated by “data components” of an XML document.  A user interface allows modification and modifies (in an undefined way) the underlying XML document.[4]

Alice Step 1: Reviewing these elements, the Federal Circuit found that “the patent claims are, at their core, directed to the abstract idea of collecting, displaying, and manipulating data.”  IV had argued that the claims offered “a concrete solution” to the problem of dynamically managing multiple sets of XML documents.   That view, according to the court, limits the patent to the XML technological environment but does not make it any less abstract since XML documents were already well known and used in routine business transactions.

Further, the inventor’s naming of the data structures with unique names does not overcome the fact that the limitations are directed to generic data types and “merely encompass the abstract idea itself of organizing, displaying, and manipulating data of particular documents.”

Alice Step 2: In applying step two of Alice, the court looked for whether the claims included something “significantly more” than merely describing the abstract idea and applying well-understood, routine, conventional activity.”  In considering the claims at issue, the court found “no inventive concept” beyond the aforementioned abstract idea.

[T]he Claims recite both a generic computer element—a processor—and a series of generic computer “components” that merely restate their individual functions—i.e., organizing, mapping, identifying, defining, detecting, and modifying. That is to say, they merely describe the functions of the abstract idea itself, without particularity. This is simply not enough under step two.

Repeating its prior statement regarding the inventor’s coined-terms, the court wrote: “The mere fact that the inventor applied coined labels to conventional structures does not make the underlying concept inventive.”

Invalid.

 

= = = = =

[1] Intellectual Ventures v. Erie Indemnity (Fed. Cir. 2017) affirming invalidity of U.S. Patent Nos. 6,510,434; 6,519,581; and 6,546,002 under 35 U.S.C. § 101 (eligibility).

[2] See Intellectual Ventures II, LLC v. JP Morgan Chase & Co., No. 13-cv-3777-AKH, 2015 WL 1941331, at *17 (S.D.N.Y. Apr. 28, 2015) (“JPMC”).

[3] Vardon Golf Co. v. Karsten Manufacturing Corp., 294 F.3d 1330 (Fed. Cir. 2002).

[4] Claim 21.

An apparatus for manipulating XML documents, comprising:

a processor;

a component that organizes data components of one or more XML documents into data objects;

a component that identifies a plurality of primary record types for the XML documents;

a component that maps the data components of each data object to one of the plurality of primary record types;

a component that organizes the instances of the plurality of primary record types into a hierarchy to form a management record type;

a component that defines a dynamic document for display of an instance of a management record type through a user interface; and

a component that detects modification of the data in the dynamic document via the user interface, and in response thereto modifies a data component in an XML document.

= = = = =

As an aside, folks might be interested in looking back at the i4i XML Patent No. 5,787,449 that resulted in the $200 million verdict against Microsoft.

About Dennis Crouch

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

190 thoughts on “Intellectual Ventures: XML Patent Invalid

  1. As far as most investors are concerned, the standard warning in prospectuses — “past performance does not guarantee future results” — might as well read “Wjxsndf omv gyjrhubji qmta gjq ek blgy zbq oynru.” A new initiative at the SEC could be one small step in the right direction.

    According to the Trumpette (MM), the two phrases are equivalent.

    Just think: a machine that takes space, energy, and time to process information like our brains do is considered not eligible under 101 ’cause it is a witch. I think if Trump really wanted to drain the swamp, then he should disband the Fed. Cir. and reform it to get rid of the current judges (Google selected.)

    1. “if Trump really wanted to drain the swamp, then he should disband the Fed. Cir. and reform it to get rid of the current judges (Google selected.)”

      We agree on one thing at least. Too bad about federal judges being appointed for good behavior. At least we could abolish the CAFC once and for all though.

      1. How would you feel Owen if we did that as a part of jurisdiction stripping of the Supreme Court of the non-original jurisdiction of patent law appeals and set up a new Article III court (to preserve the judicial review holding of Marbury) in place of the now tainted CAFC?

  2. The article suggested looking at the i4i XML patent 5,787,449 patent.

    It seems that ‘449 patent claims in means plus function form and discloses basic embodiments in the specification. But presumably the “equivalents” of these embodiments could be argued to cover generic computer-implemented XML processing.

    The ‘081 patent has a “computer-implemented method” that involves organizing, identifying., etc., a “programmed memory” with stored instructions for organizing, identifying etc. (seemingly a variant on Beauregard), and a means-plus-function-style claim.

    But in the case of the IV ‘081 patent, the “embodiments” disclosed in the specification seem as vague and purely functional as the claim elements, so it is difficult to see how 112(f) could get you to something that would not be tankable as “abstract” under anything other than pre-Alice CAFC law.

    State of the art? The priority date of the ‘081 is 2001. By 1998 art could draw on the XML specification (W3C), the DOM specification (W3C), which would seem to be expressly designed as an API implemented in Java and JavaScript (and implemented appropriately in other standard languages) precisely for modelling XML documents in computer memory as “dynamic documents” and modifying them. Of course a “non-programmer” would not write Java code, but Java 1.2 came out in 1998, with the Swing API with GUI widgets for building user interfaces that a PHOSITA might naturally turn to build a tool to enable non-programmers to modify XML documents.

    The ‘081 specification has no mention of DOM or Swing, or any mention of any tools designed to enable the PHOSITA to succeed in building GUI user interfaces to enable non-programmers to modify XML documents. The specification indeed seems to mention nothing but XML, DD (dynamic documents), primary record types (PRT) and management record types (MRT). The inventors have been their own lexicographers. A “PRT” seems to be defined as follows: “A PRT is similar to a relational database table: they contain most of the data”. The definition of an MRT: “A MRT is a grouping of PRTs; they contain pointers to individual PRT records and some calculated data”. So which of the following would be PRTs? Linear arrays? Python lists? associative arrays? C structs? Python dictionaries? Javascript classes? Linear arrays of associative arrays? Relational database tables?, groupings of relational database tables? Or might any of these be MRTs? And if the definitions of the PRTs and the MRTs are difficult to construe, how would one construe the claims in the light of the specification to ascertain the metes and bounds of the claims?

    I suppose it would be uncharitable to suggest that the inventor might have had little knowledge of the art of XML-processing, even back in 2001, but was skilled in the art of creating flow-diagrams and apparent “structure” described in terms of relationships between these PRTs, MRTs, and DDs, interacting with one another in ways amenable to being described in the English language that clearly would have been sufficient to impress some current former CAFC judges in earlier years that the specification disclosed “sufficient structure”. But surely a true PHOSITA would make an attempt provide at least a basic survey of the state of the art within the specification. But the “Description of the Related Art” mentions nothing technical beyond “XML documents”, “XML formats”, “relational data-base schemes” and “message formats”.

    1. But surely a true PHOSITA would make an attempt provide at least a basic survey of the state of the art within the specification.

      An absolute non-starter – for ANY art field, and if any attorney did such, they would be facing serious malpractice charges.

      1. “An absolute non-starter – for ANY art field, and if any attorney did such, they would be facing serious malpractice charges.”

        The application I’m reading right now has one.

            1. Not in vain at all Les, merely highlighting a propensity to think that finding an application means more than what it actually means (finding an application).

      2. “But surely a true PHOSITA would make an attempt provide at least a basic survey of the state of the art within the specification.”

        An absolute non-starter – for ANY art field, and if any attorney did such, they would be facing serious malpractice charges.

        LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

        If what “anon” says is true, it ounds like there’s some big big money to be had defending patent attorneys … most of whom routinely “survey” the “state of the art” in their specifications.

        But of course there’s no truth to what “anon” is saying. As usual.

        1. most of whom routinely “survey” the “state of the art” in their specifications.

          LOL – wrong. More than wrong, blatantly wrong.

    2. The reason we don’t include a survey of the related art is that 103 has changed. Now examiners will just look at the related and spout off that it is all obvious with no evidence.

    3. Going back down memory lane, I realise that, back in October 2004, I did create a software application allowing non-programmers to modify data in XML format using a GUI application.

      In the department where I work, there is the necessity, once a year, to gather and process a large volume of data during a period of around 3 weeks every year. My work colleagues tended not to have desktop computers that ran operating systems on which MS Office software can be installed, so it would not have been practical to ask for the data to be returned as an Excel spreadsheet. And requesting this would certainly have resulted in complaints from colleagues. In any case, extracting data from a spreadsheet using point-and-click menus was an is a tiresome and time-consuming process.

      The task my colleagues needed to complete would correspond to filling in a column in a spreadsheet with the new data to be processed. Accordingly I wrote a program or script in Python. The templates for data entry were sent round in an XML format. My Python script would set up a GUI spreadsheet-like interface for data entry, with appropriate scrolling behaviour. When my colleagues, some of whom were “non-programmers”, typed the marks into the GUI, a “dynamic document” in standard data structures was updated, and the XML document was modified.

      I have just been looking at some of the Python code from 2004. The XML-formatted data files were read and modified using Python’s xml.dom.minidom module, and the graphical interface was created with TK widgets using Python’s Tkinter module. When deployed, my colleagues used the spreadsheet-like application to update the XML files, which they then emailed back to me.

      I certainly would not have regarded this as an invention, more an application of standard software tools for their intended purpose. And computer programming is not an intrinsic part of the day job, so I certainly would not have had the skills of an appropriate PHOSITA. I was simply getting practice learning how to use these tools. The program worked! And the program was developed and deployed after the 2001 priority date but before the 2006 filing date of the 7,984,081 patent.

      (And the program was not put on sale or otherwise made available to the public. It was just a tool for local administrative use.)

      1. Distant, the coding may have been routine, but was the idea of using a GUI to update underlying code old or new generally? If it was an old idea, then the application to a specific example is not invention.

        But if it was not old, perhaps it was an invention….

        1. Ned, LaTeX is a markup language widely used in areas such as mathematics, computer science and physics. LaTeX was around in the 1980’s, and built upon TeX developed by Don Knuth and first released in 1978. There are various GUI front ends for creating and editing LaTeX. One of them is LyX, which seems to have been released in version 1.0.0 in 1999. The concept of entering tabular information into a table would be suggested by the prevalence of spreadsheets.

          So the idea of using GUI interfaces to parse and modify documents in markup languages was in 20th century art.

          Not quite as old as the priority date for the ‘081 patent, the book “Python in a Nutshell” by Alex Martelli was published in 2002. Older books include “Programming Python” which appeared in 1996, and discussed building GUI interfaces with Tkinter. Going to the 2002 “Python in a nutshell”, as it is to hand, I note that “Tkinter GUIs” is Chapter 16, Structured text: HTML is Chapter 22, Structured text: XML is Chapter 23, and these chapters, with an indication of their contents are on facing pages in the list of contents. If we assume that the PHOSITA has a background in Java programming, the PHOSITA almost certainly implemented the “Hello, World!” program as a GUI application, using either AWT or Swing. Books like Sams “Learn X in Y days” series would tend to emphasize using Java to build GUI interfaces. The DOM used for parsing HTML and XML was initially developed for Java and JavaScript (ECMAScript), which were the first languages supported by web browsers. So one would expect that the PHOSITA, confronted with the problem of allowing non-programmers to update data held in XML format would combine the teachings of widely-sold computing textbooks, using the DOM API published by the W3C consortium as the basic tool for parsing XML, probably using either implementations in Java or else implementations constructed around James Clark’s Expat XML parser (released in version 1.0 in 1998). Given the motivation to create an interface for non-programmers, there would surely have been multiple teachings to suggest using the widgets commonly used to develop GUI interfaces in the programming language of choice (Java, Perl, Python).

          This would go to whether my claimed “invention” would be obvious over references presented in separate chapters of a single book, widely available in good bookstores, together with what I would have thought was a strong motivation to combine the teachings of the separate chapters.

          1. Distant, thanks.

            What appears to be missing from the examination of software patents are educated and experienced programmers.

            1. How long has the manufacture in its own right and design choice of ware that is software compare to the other wares of hardware and firmware) been around, Ned?

  3. Ned says: “The process in question must otherwise be eligible and when it is, it remains such even tough it uses old machines.”

    Certainly, when what is being claimed is a process, what you said is true.

    However, when what is being claimed is a machine, the process does not need to be eligible.

    For example, process of playing a song is not eligible.

    However, a machine that performs the process of playing a song is
    eligible.

    link to patentimages.storage.googleapis.com

  4. Notice the Trumpettee (aka MM, aka the anti-patent judicial activist) does not respond to any substantive comment. Never does.

    And, Ed the Ned, is like an autistic person creating his own words for new witch tests.

    This case is another case of judges gone wild. We don’t need no prior art. We don’t need no obvious arguments. We have Alice (a g#n).

  5. This case illustrates the absurdity of Alice- introducing obviousness issues into a 101 analysis. “XML documents were already well known”?? That should never be included as a rationale under 101. Patents like this should die under 102/103, not 101. Invalidity was probably the right outcome, but the rationale is absurd.

    1. “XML documents were already well known”?? That should never be included as a rationale under 101.”

      It’s not a “rationale”. It’s a fact. And the relationship of the claim to the prior art is always relevant to a determination that the subject matter of the alleged innovation protected by the claim is eligible. And that’s not going to change because, logically, it can’t. The only way to avoid this is to get rid of subject matter eligibility considerations entirely. Good luck with that!

      Consider also how silly your “argument” in another context, say, an ineligible claim such as the following:

      “A method of cooking an egg, comprising (1) breaking an egg in a circular pan and (2) following the instructions in a recipe book, wherein the instructions are written in Swahili, and wherein the instructions indicate that the pan should be continually turned counterclockwise at a rate of 1 degree per second.”

      Are you really going to sit there and argue “Swahili language recipe books were already well known? That should never be included as a rationale under 101.”

      Patents like this should die under 102/103

      News flash: patents “like this” do, in fact, die under 102/103 all the time. The entire “art” of logic patenting is clogged up with ineligible and invalid junk because 75% of the practitioners don’t understand the law and most of the rest of play silly word games like the hapless scriveners in this case. Every week it seems like there’s a new “hot” term that logic patentistas are supposed to stick into their claims. First it’s “mobile”, then it’s “dynamic”, then it’s “data structure”, then it’s “distributed”. It’s all g@rbage is what it is.

      1. Go respond to the substance of my response to you.

        Trump boy.

      2. You really are so unethical MM. Go respond to the substance of what I wrote. You are making up case law, conflating case law, ignoring science, etc.

        Just ridiculous.

      3. Trumpette (MM) :>>The entire “art” of logic patenting

        Your behavior is unethical.

    1. “Mendel’s discovery that genes produce discrete effects—blue eyes or brown, but never blends.”

      Never blends? “Pink snapdragons come about when a red and a white snapdragon are cross-pollinated”

      link to newhealthadvisor.com

  6. MM>>>The question always boils down to the nature of the alleged “innovation” that is being protected by the claim. If the “work piece” is “data” and somehow the “meaning” of the “data” is critical to the patentability of your “device”, then you’re in a load of trouble from a 101 standpoint because data is ineligible for patent protection.

    Such ignorance. So, let’s see, why do you bother to write sentences MM? What are the judges paid for? Unbelievable. So, a machine that takes space, time, and energy to generate “‘meaning’ of the ‘data'” is abstract, but this is what is most valued in people. This is what the judges are paid for. This is what you labor over in writing your comments.

    The funny thing is that MM doesn’t see the connection between his absurd assertions and Trump’s behavior. It is the zeitgeist. We have people that are telling us things that are against common sense, logic, science, patent law, and common decency. We have MM the purveyor of unethical near psychotic nonsense streaming from his keyboard, and yet, according to MM and his medieval mob there is no meaning to any of it–“‘meaning’ of the ‘data'”.

    Just bizarre. We have definitely entered a time where reason means nothing. MM: just grab that pu$$y.

    1. The thing that scares me right now is that MM who is a member of the new might makes right party is part of a movement where rational thought and dialogue means nothing. They do not engage in any meaningful way, but say things that are against modern rational thought.

      I really do not like the fact that this type of thinking inevitable leads to war. We are just seeing the frothing madness of people like MM in patent law, but inevitably this is pervading all parts of our society. MM is definitely the Trump of the patent world.

      1. Of course, ultimately, this all goes back to Lemley. If Lemley were ethical, he could have put a stop to this. But, instead Lemley fanned this with this unethical behavior.

      2. “They do not engage in any meaningful way, but say things that are against modern rational thought.”

        This is true somewhat.

        “I really do not like the fact that this type of thinking inevitable leads to war.”

        Probably true.

        “MM is definitely the Trump of the patent world.”

        You mean the SJW of the patent world. They’re the opposite of Trump.

        You’re conflating the two camps bro.

        1. >>They’re the opposite of Trump.

          The tactics are the same. That is why they are the same as Trump.

          MM is a Trumpette.

          1. “The tactics are the same.”

            Um, no they aren’t. One is feelings-based bullying and authoritarianism. The other is just plain ol everyday bullying and authoritarianism. The former is, surprisingly perhaps for some, much much much worse nearly every time it is encountered in real life.

            But they are similar.

            1. A difference without a distinction, 6.

              As I was first to note: Malcolm very much is the Trump of this patent blog.

              1. “A difference without a distinction, 6.”

                Actually the distinction is ginormous irl. Which I’m trying to convey to you, but your being near asperger’s level of EQ is hampering you from understanding.

    2. Everyone should notice too that what MM is doing is conflating SCOTUS cases and misrepresenting them.

      No case holds that information processing is per abstract.

      MM: is a charter member of the grab the p****.

    3. NW So, a machine that takes space, time, and energy to generate “‘meaning’ of the ‘data’”

      I’d like to see a machine generate meaning. Human beings supply the meaning NW, in their minds.

      What do the quotes around data mean anyway? Is there more than one kind of information?

      Trump is a manifestation of widespread ignorance, which has been cultivated, if not directly intentionally, than at least somewhat intentionally, for over 40 years. He is also totally off-topic.

      1. >>I’d like to see a machine generate meaning. Human beings supply the meaning NW, in their minds.

        Martin, this is a ridiculous statement. Of course machines generate meaning. The meaning may be something like turn right, this is cancer, here are the representations of the images from the image sensor, etc. M2M communication is meaningful.

        I put the quotes around it because MM did. Trump: Martin you are like Trump. You are not willing to engage in meaningful debate where science, patent law, and ethics matter. Just look at my answer to you above. Clearly M2M communications are meaningful with a fair definition of meaningful including functional useful.

        1. Turn right, this is cancer, here are the representations of the images from the image sensor are M2H, unless they are M2M.

          I think M2M algorithms should be eligible as processes under any reading of abstraction. However, if they are not non-obvious, and fully described, they should not be patentable, and if they are not new, they should not be eligible since they are not actually inventions. If a claim is an aspiration or a functional description, it can be an abstract idea despite being a non-abstract process.

          The Supreme Court is very clear on the latter. It would be good if they became clear on the former. But either way, you are completely off-base if you think every variation possible on a computer system will ever again be nearly automatically found eligible or patentable without significant novelty, under 101 or any other patent statute.

          1. So you are kind of agreeing with me while throwing in all sorts of other things.

            1. I’ve been writing for literally years on this subject.

              I agree that some information processing methods, which are entirely intangible and have nothing to do with improving computer systems, may in fact be the proper subjects of patents.

              But patent maximalists ideologues have no interest in nuance, since we all know that it’s better that 10 innocent firms be destroyed than one infringer go free.

          2. He is noticeably confusing eligibility and patent ability….

    4. MM: just grab that pu$$y.

      Go f ck yourself, you miserable c re ep.

      1. No substantive response. What a surprise.

        1. Not sure a substantive response is even possible to your “P” statement…

        2. How is he supposed to make a substantive response to that lol?

          MM> “No, I did not grab that pudding”.

          lol

          1. …does that depend on what the definition of “is” is?

            😉

  7. Dennis, I think we are going to need a new lexicography as to ‘final judgments.’ 1. Final judgment of the Court of record, 2. final judgment by the court of appeals, and 3. final judgment after all SCOTUS appeal are exhausted by time, and 4. final judgment as to the issue of the mandate, and 5. final judgment as the exhaustion of the APA with the IPR. Because issue preclusion and res judicata, is being very selectively applied.

    1. It is certainly at odds, with all the other law concerning when a judgment is ‘final’ and issue preclusion and res judicata and law of the case applies. The CAFC is making patent law the ‘red headed step child’ of jurisprudence.

  8. MM “And third of all, “easily configured hunks” that do nothing more than what they were designed and expected to do are per se obvious”

    Yes, they are. The injustice is that to prove them obvious is (at least) a million bucks, if not two million bucks, plus years of grinding discovery and the business-herpes of patent litigation hanging over one’s head. Insane for every variation of logical process that one might imagine.

    If something is so obvious (or aspirational) that there is no chance of an invention existing within the claims, it’s then beyond obvious, which is another way of saying ineligible

    In my scheme, these claims would be eligible processes because the XML is consumed by machines, but ineligible for not being invented or discovered, which is not quite the same thing as being anticipated or obvious under 102/103, because you can’t very well have a non-obvious non-invention.

    1. Coming from someone who does not understand obviousness, a comment on “per se” obviousness is downright laughable.

      1. Your comments are as ineligible as these claims usually are; lacking any actual content.

        Do say, how do I not understand obviousness anon? What inviolable insight about software from 1952 might you offer? TSM? Secondary indicia?

        You got nothing. You never do.

        1. Lol – except the point here Marty is how little YOU have.

          Try to keep up son.

    2. Martin, uniting things that do no more than they do separately is not patentable not because they are obvious but because they are not “new.”

      “We conclude that while the combination of old elements performed a useful function,[4] it added nothing to the nature and quality of the radiant-heat burner already patented. ”

      “[4] 35 U. S. C. § 101 provides:

      “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

      Absent here is the element “new.” For as we have said, the combination patent added nothing to the inherent characteristics or function of the radiant-heat burner.”

      1. Ed the Ned: this is so deceiving. You and Stern are so full of witch tests.

        Ed the Ned: >”uniting things that do no more than they do separately is not patentable not because they are obvious but because they are not ‘new.”

        Ed the Ned, you are playing games with the word “new,” and the level of abstraction by which an invention is analyzed. In fiber optic cable, the glass doesn’t nothing “new” as an individual component. In fact, in any invention, the atoms do nothing new in the invention. So, you are playing a game of abstraction level to analyze an invention. And, then acting as if you are the smartie boy and that others won’t get what you are doing. Just like Stern does. We get it. You aren’t fooling us. You are bullies with Google bucks–not intellectual elites.

        You are the ones that are throwing shade on our civilization –not enlightening our civilization. You are the destroyer of our civilization by destroying civil debate and intellectual honest debate.

        1. All Ned is doing is embracing the “Big Box of Protons, Neutrons, and Electrons” mindset.

          After all, protons, neutrons and electrons are (nearly) as old as the universe, and any and all configurations of those items are only using those items according to laws of nature as equally as old, thus “No patent for you.”

        2. So the unhinged, insane, unworkable, unjust flip side is that every last variation that can be distinguished between two or more items is worthy of a new patent, and can only be proven non-worthy by the full panoply of a completed federal court litigation.

          Oh. OK then.

          1. No Martin. We have 103 and 112 that take care of all those.

            1. He is complaining that those sections of law are not fast or cheap enough (so he wants to mishandle another section of law to get to his desired Ends).

            2. The “New” in Section 101 does not go away just because you want it to. If something is so beyond obvious that it can’t be an invention, there is no need to get to 102/103/112, and you shouldn’t be able to get there anyway without a construed PHOSITA, which means you have to look at what the art is, which means some reflection on prior art.

              1. I have no trouble with the “new” part, but that is explained pretty well in 102

                What I have a problem with is introducing random, vague, unpredictable tests into a statute where there is nothing there to support their inclusion

                Section 100 for example specifically says an eligible process includes a “NEW use of a KNOWN process, machine, manufacture, composition of matter, or material”

                So statute on its face tells one you cannot bar new functions/processes b/c they are on “conventional” computers.

                1. A process includes a new use of a known process, but that’s not a tautology. It’s actually very clear as to what a process is for the purposes of the patent law. Very. Clear.

                2. Martin, agreed.

                  A process that is nothing more than dealing with abstractions is not a patentable process and it does not become patentable simply because it uses old machines.

                  The process in question must otherwise be eligible and when it is, it remains such even tough it uses old machines.

                3. As explained previously Mr. Snyder, there is no tautology if you understand the historical aspects of patent law and the broadening that Congress sought from the “old-school” ways of manufacturing (the things that Ned often references), and the fact that such “old school” is but a subset of the modern use of the word “process.”

                  Maybe if you were less antagonistic to those views that happen not to align with your desired end state, you might learn something.

                4. the broadening that your fever dreams produce was endorsed not by Judge Rich or by any subsequent court- the entire point in Bilski was that they would not commit to such a broadening- nor would they commit to the narrowing which most reasonable people might expect, since virtually everything human beings do can be characterized as a process, 99.999% of which cannot be patent eligible in a sane world.

                5. Your attempted “endorsing by the court” does not in any way change what Congress did.

                  The fact that the score board is broken IS the issue here.

              2. The congressional record (already shared) explains the “new” in 101, and it is just not in accord with your feelings or Ned’s recreation of the Act of 1952.

                You really do need to open your eyes so that you stop stumbling about this terrain.

                1. Scalia and the originals could give a hoot about the Congressional Record, which would only be meaningful anyway if conjured not in your fever dreams, but in an actual statutory interpenetration case decided by the Supreme Court. Which, of course, it has not been.

                2. anon, congress did not rewrite 101. “New” in 101 has always been independent of “known or used” by others.

                  101 has been in its present form since 1793. Perhaps the illiterate, under-educated, or the misled may not have known this, but nevertheless, such is the case.

                3. Ned, you are simply and utterly wrong on this point.

                  This goes hand in hand with your attempts to minimize what Congress did in 1952, vis a vis 35 USC 100, 35 USC 103 and 35 USC 112.

                  You do really need to recognize what happened in 1952.

      2. The court is simply wrong. A new combination is new, because it is a new combination.

        To say it is useful, but added nothing is absurd.

  9. This case has almost nothing to do with the claim at hand and everything to do with the Plaintiff asserting the claim. Whatever gymnastics were involved, this panel was not going to have an IV patent held valid, regardless of the scope.

    1. Bluto, I don’t know if this is right. But what is certain is that we are STILL cleaning up the Rich mess.

      And yet, there are many who still argue for the 101 nominalisim that Rich long advocated and which never was consistent with the Supreme Court cases and which has now been so emphatically tossed into the trashcan of history that one really begins to wonder about the people who still do not get the message. People cannot be that d*mb.

      1. Once again Ned with your Windmill Chases against Rich, when we both know it was Congress that acted in 1952.

    2. Well, that is the point of the entire doctrine – discretion to punish disfavored plaintiffs.

  10. Ohhhh – crystal shard spinning…

    😉

  11. What a load of Cr@&.

    How is ” “collecting, displaying, and manipulating data” an abstract idea?

    How does the Fed. Cir get away with distilling the claim down to a gist when it is their rulings that prohibit this?

    The Claim is to a device. How is THAT an abstract idea?

    How does :a component that detects modification of the data in the dynamic document via the user interface, and in response thereto modifies a data component in an XML documen, not reflect a transformation of an article (the XML document)? How is that not tangible? How is that not significantly more than the abstract idea of collecting, displaying, and manipulating data?

    Hey MM: Lookie, yet another absurd its abstract because it is old: ” does not make it any less abstract since XML documents were already well known and used in routine business transactions.”

    Fed Cir: Lumber, rope, cloth, pulleys and flight were all old too. Was the Wright Flyer an abstract idea?

    1. Hey MM: Lookie, yet another absurd its abstract because it is old: ” does not make it any less abstract since XML documents were already well known and used in routine business transactions.”

      Hey, you’re missing the easily understood and reasonable point that you can’t rescue an ineligible abstraction by reciting some old unpatentable junk, e.g., a particular “field of use” or a particular species of “content” or a legal status or quasi-legal status of the “data”

      How is ” “collecting, displaying, and manipulating data” an abstract idea?

      Data <——— the red flag goes up; information is the quintessential example of abstraction

      The flag doesn't go down merely because the data is "collected." The flag doesn't go down merely because the data is "displayed". The flag doesn't go down merely because the data is "manipulated" somehow. The flag doesn't go down merely because the data is both "collected and "displayed" somehow. The flag doesn't go down merely the data is both "manipulated" and "displayed" somehow. The flag doesn't go down merely because the data is both "collected" and "manipulated" somehow. And the flag doesn't go down because the data is merely "collected, displayed and manipulated" somehow.

      You've got to have more. What qualifies as "more"? Well, it's a shrinking target. We all know that. And it's going to keep shrinking. "Use rules"? You think "use rules" is going to qualify as "more"? I can assure you that the Supreme Court will disagree.

      Remember that what the patentees here (and elsewhere) are trying to protect is logic instructions written for machines that were created to follow logic instructions. Everybody knows that the instructions themselves — the information — isn't eligible for patenting. That's not contestable anymore. Instead we have this legal fiction that everything is totally "structural" when the instructions are written down on a "medium". The question the CAFC is struggling with is which instructions are eligible after they are written down.

      Right now the CAFC is toying with the silly idea that they can distinguish between “logic that’s worthy of patent protection” and “logic that isn’t worthy of patent protection.” The correct answer is that logic does not belong in a sane patent system, period, and some of the reasons why is that (1) there is no coherent practical way to distinguish between various types of “new” logic and (2) logic is a fundamental building block of progress that we don’t want to tie up with patents. Those are just some of the reasons that “logic” wasn’t set forth as eligible subject matter in the patent statute.

      1. Data, aka information, is not an abstraction. Information is a measurable and quantifiable physical aspect of a physical object or system. It’s as real as temperature, pressure, voltage, etc.

        1. HoPB, there is indeed a difference between the bit and its value.

          1. Ned: there is indeed a difference between the bit and its value

            A bit can have two states. So, yes, there is a difference between “a bit” and “a bit state”. This trivia has nothing to do with the technology being claimed here or in 99.999% of the patent claims out there.

            HoPB Information is a measurable and quantifiable physical aspect of a physical object

            Oh, ba l0ney. I can attach all kinds of meaning to any object. Nothing about that attachment changes the object in any objectively measurable or quantifiable way. A piece of paper with “01001010” written on it could mean “five” or it could mean “Leave the building immediately or risk certain death.” The paper weighs the same. The temperature doesn’t change.

            That’s what we’re talking about here.

            These instructable computing machines exist for one reason only: to store and process and output information according to whatever instructions we provide to them. Nobody would ever assert that an old car becomes a “new car” when a new driver sits in the seat but somehow everything changes when the car is a shiny computer. Heck, then the old car becomes a “new car” merely becomes the same old driver learned how to get to Bob’s house.

            Information …. is as real as temperature, pressure, voltage, etc.

            Note that all those things are ineligible for patenting. You can’t claim a “new temperature” or a “new pressure” or a “new voltage.” And you can’t distinguish and claim an apparatus that achieves such effects merely by reciting the new effect. You’ve got to describe the new physical structure responsible for the effect.

            This is why it remains entirely possible to claim an eligible new computing machine. Just describe the machine in structural terms that distinguish it from prior art computing machines. It’s been done before …

            1. Your attempt (again) at wanting an optional claim format to somehow be something other than merely an option is noted.

            2. “Oh, ba l0ney. I can attach all kinds of meaning to any object. Nothing about that attachment changes the object in any objectively measurable or quantifiable way. A piece of paper with “01001010” written on it could mean “five” or it could mean “Leave the building immediately or risk certain death.” The paper weighs the same. The temperature doesn’t change. ”

              The paper does not weigh the same. It now has ink, graphite or something similar on it and both the temperature/specific heat of that substance and the pressure applied to the paper in making the markings had a bearing on the temperature of the paper, at least locally.

      2. “How is ” “collecting, displaying, and manipulating data” an abstract idea?

        Data <——— the red flag goes up; information is the quintessential example of abstraction"

        In this case, data is the work piece. What bearing does the work piece have on whether a claimed device is an abstract idea?

        1. What bearing does the work piece have on whether a claimed device is an abstract idea?

          The argument is not that “the device” is “an abstract idea.” Stop playing that game. It doesn’t work. You’ve been told that before.

          The question always boils down to the nature of the alleged “innovation” that is being protected by the claim. If the “work piece” is “data” and somehow the “meaning” of the “data” is critical to the patentability of your “device”, then you’re in a load of trouble from a 101 standpoint because data is ineligible for patent protection.

          An argument that starts from the proposition that “all devices are eligible” and then works backwards from that is really really weak sauce in 2017. It was weak in 2005, frankly, but now it’s hardly even worth addressing.

          1. The argument is not the device….

            Leave it to Malcolm to get even the argument wrong.

            Pretty darn sure that the statutory categories of 101 ARE the argument.

            Sure, you want to pretend otherwise (along with the “Gisting/Abstracting” broken scoreboard, but THAT fact that the scoreboard is broken is directly at issue.

            1. the statutory categories of 101 ARE the argument.

              Oh, in that case let me remind you: that argument lost, bigtime. Like four times in a row, and most of those times were unanimous.

              Just in case it isn’t crystal clear to you, the mere recitation in a claim of subject matter that falls within one of the so-called “statutory categories” isn’t enough to guarantee eligibility of the claim. Not even close.

              We could get into why this is the case but given that you somehow can’t grasp the above-mentioned facts, I am certain the explanations will sail right over your head. Maybe try again next year when things are looking even worse for you.

              1. Keep on celebrating the broken scoreboard all the while the issue is THAT broken scoreboard….

                Someday you just may catch up…

          2. So I have to ask – given you that now assert all devices in which the main object is to manipulate data – how in the world is claim 1 of this patent then eligible?

            link to patents.google.com

            Looks to me like a sensor doing what a sensor does, and not much else?

            1. That is some serious g@rbage right there.

              Wow.

              Also I’m not sure what you are suggesting that I’m asserting. What you wrote doesn’t parse.

              1. the “reply” got misplaced; it was for Ned – who *seems* to represent the patentee of that citation

                I don’t understand why he can assert that systems that simply “collect, process” and “output” (present/display) data are no good in IV when that is the fundamental principle of almost all computing machines looking at some input

                1. The proper patent doctrine to engage with in this discussion would be inherency.

                  Except for the fact that the anti-software patent folks would obviously have a problem with that.

        2. What bearing does the work piece have on whether a claimed device is an abstract idea?

          Put another way, when the only thing remotely structural described in the claim is older than the hills, reciting some ineligible “work piece” gets you nowhere.

          Might as well try to patent a “telescope” “configured to observe” a new asteroid. Or patent a “text reading device” “configured to read” a new book to you. Or patent a “signal scrambling device” “configured to scramble” a signal comprising “password information, wherein the passwords were created by a man wearing a tie on a rainy Sunday in Detroit”. Everyone can see what you’re trying to do. You’re relying on the ineligible “work piece” to obtain a right to tell other people what to do with the prior art. You can’t easily get away with that game anymore. The fact that you could get away with it in the past is unfortunate and we’ll be cleaning up the mess for years.

          1. 6. The optical system of claim 1, further comprising an optical component for providing a medium field of view, the optical component having a third optical axis and configured to be mounted within the housing, the housing configured to rotate to a third position wherein the third optical axis is at least substantially coincident with the imaging axis.

            US6392799B1

            link to patents.google.com

            So….. you know…

          2. “Might as well try to patent a “telescope” “configured to observe” a new asteroid. ”

            1. A scanning wide-field telescope comprising:
            a primary reflecting mirror and a corrector assembly,
            wherein the corrector assembly is configured between the primary reflecting mirror and a viewing end of the telescope, and is configured to move within a first trajectory,
            wherein the first trajectory comprises movement from an axis that is substantially parallel to a center line of sight of the scanning wide-field telescope to an axis that is substantially parallel to a peripheral line of sight of the scanning wide-field telescope, and
            wherein the center line of sight and the peripheral line of sight are not parallel.

            US8115994B2

            link to patents.google.com

            So…. you know…

            1. Yea, you know, claiming a new telescope that is physically distinct from previous telescopes by virtue of its configuration. That proves….something….

              1. Three resistors in parallel versus three resistors in series…

                Now multiply a million fold (the same concept applies).

                If a claim spells out “a machine” then the claim is “directed to” a machine (that’s not a game – that’s just plain English).

                1. Great – tell that to BOTH sides in the Alice case concerning certain claims that were stipulated by BOTH sides to having passed the machine statutory category portion of 101.

                2. Both sides can stipulate till the cows come, but the courts nor the PTO have ever said something you can’t pick up is a machine.

                  Please cite…oh…you never do….why bother typing it…

                3. Martin – the claim here is to an apparatus. The mass isn’t specified, but, depending on your work out schedule, I feel confident you could pick it up.

                4. Les, you can’t pick up an XML document and these claims have nothing do with the computer systems they run on. Clearly.

                5. That’s not clear to me in the slightest Martin. The claim is to an apparatus that processes data about XML documents in a particular way.

                  Why are you asserting otherwise?

                  I think to assert otherwise is scrivening.

              2. You can’t “pick up” any method claim for that matter

                What does that have to do with eligibility? Methods/processes are set out specifically as a category of eligible subject matter.

          3. “Might as well try to patent a “telescope” “configured to observe” a new asteroid.”

            1. A weapon-mounted optical scope configured to operate in a combat mode and a training mode, the weapon-mounted optical scope comprising:
            an observation telescope configured for viewing of an image of a target ;
            a laser transceiver coupled to the observation telescope and configured to communicate using an optical signal;
            an identity determination unit communicatively coupled to the laser transceiver and configured to make a determination regarding the target based, at least in part, on identification information received using the laser transceiver;
            a simulation unit communicatively coupled to the laser transceiver and configured to transmit simulation information, using the laser transceiver, when the weapon-mounted optical scope is operating in the training mode; and
            a location information unit communicatively coupled with the simulation unit and configured to calculate location information indicative of a location of the weapon-mounted optical scope;
            wherein:
            the observation telescope, laser transceiver, identity determination unit, simulation unit, and location information unit, are physically incorporated into the weapon-mounted optical scope;
            the laser transceiver is configured to receive data indicative of the location of a receiver unit, and communicate the data to the simulation unit; and
            the simulation unit is configured to use the data and the location information to determine a distance of the receiver unit from the weapon-mounted optical scope.

            US9068798B2

            link to patents.google.com

            1. Hey lookie! Les can do a search of the USPTO database.

              Wow.

              Let’s give him a cookie.

              You know what other patent is in the USPTO database, Les? Alice’s patent. And that proves …. what? LOL

              1. Hey lookie MM can says stuff isn’t patentable when it clearly is and when proven wrong he can make childish remarks. LOL

          4. …workpiece….

            Please tell me you understand softWARE better than that.

            1. There has never been a point in time, “anon”, in either of our lives, when your understooding of software exceeded mine. Please quiet down.

              1. LOL – making claims that are simply not substantiated by your rants here.

                “Go figure Folks”

          5. MM, it is the difference between the bit and its value. The content of what a telescope sees is both physical and a value. What it sees are stars. But the identification of a particular star is an abstraction.

            1. But the identification of a particular star is an abstraction.

              Not when the identification is related to actual attributes.

              A blue squash ball reflects light at a certain wavelength no matter what you want to call “blue.” You want to call the label “blue” an abstraction, when it is not an abstraction – it is simply the artifact of language tied directly to the physical universe. (ps, let me know how much that actual physical universe wavelength weighs 😉 , or how transitory such might be by looking up into a clear night sky)

              All you are doing Ned is playing semantic games here.

      3. “Right now the CAFC is toying with the silly idea that they can distinguish between “logic that’s worthy of patent protection” and “logic that isn’t worthy of patent protection.” The correct answer is that logic does not belong in a sane patent system, period, and some of the reasons why is that (1) there is no coherent practical way to distinguish between various types of “new” logic and (2) logic is a fundamental building block of progress that we don’t want to tie up with patents. Those are just some of the reasons that “logic” wasn’t set forth as eligible subject matter in the patent statute.”

        The claim is to an apparatus, not logic. Even if “logic” were an aspect of the apparatus, the claim to the apparatus, if granted in an issued patent, would not tie up the logic. The claim would cover only the described apparatus. So, you can stop hyperventilating.

        Here: here’s a paper bag….

        1. The claim is to an apparatus, not logic.

          Sorry, Les. Scrivening doesn’t cut it anymore. It never did, really.

          I pity your clients.

          1. Scrivening doesn’t cut it any more…?

            Seems to be used (extensively) by the Supreme Court…

        2. Even if “logic” were an aspect of the apparatus

          If? IF?

          LOLOLOLOLOLOLOLOLOLOL

    2. “How is ” “collecting, displaying, and manipulating data” an abstract idea?”

      Get some data, show it, fiddle with it.

      “The Claim is to a device. How is THAT an abstract idea?”

      Nobody said that the claim, aka the attempt to claim the invention, was an abstract idea. And nobody said that the device was an abstract idea. They said that the claim was an attempt to claim an abstract idea I do believe.

      ” How is that not significantly more than the abstract idea of collecting, displaying, and manipulating data?”

      An xml document is data last I heard.

      1. “An xml document is data last I heard”

        So?

      2. “They said that the claim was an attempt to claim an abstract idea I do believe. ”

        OK, but its not. Its an attempt to claim an apparatus. The claim does not preempt all collection, displaying an manipulating. Therefore it is not directed at the “abstract idea” of collection, displaying an manipulating.

        1. The claim does not preempt all collection, displaying an manipulating. Therefore it is not directed at the “abstract idea” of collection

          Give us a break. That is not how the analysis works at all.

          Claims that “pre-empt” large general classes of abstractions are certainly going to have serious and most likely f@tal eligibility issues.

          But a claim that protects, in a particularly identified pre-existing field, any ineligible subject matter, no matter how specifically that subject matter is described, also has a huge 101 problem.

          1. That’s nothing but a lot of hand wavy scrivening.

            How does the analysis work, if not the way I suggested?

            Is it that someone just alleges something is directed to some word or set of words, declares that word or set of words to represent an abstract idea and that’s it?

        2. Its an attempt to claim an apparatus.

          Agreed that there was an attempt at something.

        3. “OK, but its not. Its an attempt to claim an apparatus. ”

          An attempt which just so happened to be an attempt to claim the abstract idea at issue in addition to being an attempt to claim the apparatus. Is what the court is talking about.

          That’s a no no.

          1. It is not an attempt to claim the abstract idea of ““collecting, displaying, and manipulating data.” It simply isn’t. The claim has no bearing on collecting displaying and manipulating satellite imagery. The claim has no bearing on collecting displaying and manipulating x-ray data. The claim has no bearing on collecting displaying and manipulating examiner overtime data. The claim would not preempt all collecting, displaying and manipulating of data. Accordingly, the claim is not directed to the alleged abstract idea.

            You can sit there and take a ridiculous position as examiner’s often do. But we know its ridiculous.

            1. “It is not an attempt to claim the abstract idea of ““collecting, displaying, and manipulating data.””

              Neither I or the court said that it was. Stop erecting strawmen brosefulous.

              1. You did to say it:

                “An attempt which just so happened to be an attempt to claim the abstract idea at issue in addition to being an attempt to claim the apparatus. Is what the court is talking about. ” 4.2.2.3.

                and according to the article above: ” the Federal Circuit found that “the patent claims are, at their core, directed to the abstract idea of collecting, displaying, and manipulating data.”

                Who do you think you’re fooling?

                1. Yes, I said the abstract idea at issue. The abstract idea at issue is not simply generic ““collecting, displaying, and manipulating data.”, that is only the overall category (think of that as a broad genus) of abstract ideas/concepts that are at issue. The claims limit the claimed subject matter down to a further field of use within that overall abstract concept (think of this as a narrower sub-genus within the overall genus just mentioned). And the field of use limitations here don’t change this claim into something eligible.

                  Duh.

                  “Who do you think you’re fooling?”

                  Nobody is fooling anyone. You’re erecting strawmen based on summaries by D in his article rather than reading the decision to see the court’s actual decision.

                  Here:

                  “Stripped of excess verbiage, the claim creates the dynamic document based upon “management record types” (“MRTs”) and “primary record types” (“PRTs”). The inventor coined these terms to describe the organizational structure of the data at issue. A PRT is a simple data structure that contains unspecified data extracted from XML documents and an MRT is merely a collection of PRTs. ”

                  Which is a sub-field under the overall abstract concept of “collecting, displaying, and manipulating data” such that the claims have had some field of use limitations tacked on.

                  “Thus, the patent’s recitation of XML documents specifically, does little more than restrict the invention’s field of use. ”

                  Learn to read the decision and not just the article Les. And stop thinking everyone around you is “fooling” you or whatever when you come up with your nonsense regarding 101. The court did just fine.

                  link to cafc.uscourts.gov

                2. “The court did just fine. ”

                  No. No it didn’t. The premise is that abstract ideas can’t be patented because they preempt entire fields.

                  Claim 24 does not do that. It does not preempt the entire filed of collecting, displaying and manipulating and it does not preempt the entire field of collecting, displaying and manipulating XML files.

                  Every claim can be declared to be under some category or other. That declaration cannot be sufficient to make the claim ineligible under 101. If it can, you are out of a job.

                3. Les for some reason my comment is getting caught in filters and won’t stop being caught. I’m just going to tell you, the remaining field of use limitations that limit the claim to a further sub-abstract idea do not save this claim bro. They’re trying to take a big ol chunk out of the overall abstract idea noted by D by limiting it down with field of use limitations. This is a no no. If you don’t know this by yet, and you’re arguing otherwise in open court or the PTO, it should be sanctions time. For realsies. You’re an officer of the court. You have actual responsibilities irl proceedings.

                4. Les, patents are reserved for those who actually create something new. No matter how detailed an abstract idea is, it remains abstract, not a new thing.

                5. Ned –

                  Claim 24 is to something real, not abstract. I have no idea whether it is new or not. I’m not sure why you are bringing up novelty.

                  6 – Filed of use? Is that what every drug manufacturing claim is too? Is the mixing heating and stirring an abstract idea and the specific chemicals, temperatures and time merely field of use?

                  Don’t be ridiculous bro.

    3. “Lumber, rope, cloth, pulleys configured for sustained, heavier than air, human flight” is absolutely directed to an abstract idea.

      1. how about

        lumber configured as an air frame including a warpable wing;
        cloth configures as a covering over at least the warpable wing;
        rope and pulleys configured to apply tension to the warpable wing in a manner controllable by an associated pilot from a pilot position in the air frame.

        1. I think that probably would probably not be directed to an abstract idea.

          I think information processing claimed with sufficient specificity can be eligible under Alice.

          But you guys won’t get there as long as you pretend the answer to ‘can a claim to a tangible device be directed to an abstract idea’ is ‘no’.

          1. Well if you read claim 24 in the article above, you will see that it is very much in the form of the claim you just agreed is probably NOT directed to an abstract idea.

            1. It’s not a matter of form. Its a matter of specificity.

              1. Thats what I meant by form. Claim 24 is similarly specific.

          2. Ben,

            It is someone else pretending that something that satisfies the machine statutory cateogory is an abstract idea.

    4. I’m with ya, Les. Knock it out on 102, 103 or 112 grounds. But stop this b.s. about the claimed invention being “abstract”.

  12. Page 17 says it all:

    “the claims do not recite particular features to yield these advantages. Although the claims purport to modify the underlying XML document in response to modifications made in the dynamic document, this merely reiterates the patent’s stated goal itself. Nothing in the claims indicate what steps are undertaken to overcome the stated incompatibility problems with XML documents to propagate those modifications into the XML document. Indeed, the claim language here provides only a result oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more.”

    Prost refused to give any technical “weight” to software functions. If the logic of how the functions operate cannot provide patentable weight, then all we are left with is copyright. MM wins.

    1. What’s the standard for en banc re-hearing? It makes sense to me at least, to set this up as in conflict with McRo, Bascom and Enfish, and ask the CFAC if software elements defined in terms of the logic of their operation have patentable weight under the 101 analysis.

    2. Greetings H2H

      “Nothing in the claims indicate what steps are undertaken to overcome the stated incompatibility problems…”

      Prost’s comments just prove my point. This has nothing to do with “eligibility” of the claim, she’s just arguing that there isnt enough there to pass muster under (what is really) 103. So if they had included a few more limitations that talked about specifically remediating the problem at hand, she would have less of an argument. I don’t see her saying software functions have no technical weight; I see her using a vague, visceral “gist” test that tells her when the claim is thin, it should be dead, who cares how you get there.

      Again all of this is just mental gymnastics because one can usually craft a claim that does this, it just takes longer, and has less infringement utility because now you have to prove one more thing about the claim. In the end it has little to do really with making patents “better,” its just part of the current SW company cabal’s efforts to make it harder to make them pay for infringement.

      1. JNG I don’t see her saying software functions have no technical weight; I see her using a vague, visceral “gist” test

        Remind everyone what the CAFC’s super serious and totally not “vague” “test” is for determining, e.g., whether an otherwise ineligible logical operation buried within a claim is sufficiently “structural” to pass 112.

        Then we’ll know how serious we should take this whining about “vagueness”.

        Go ahead. There must be a really thoughtful analysis in some very important forward-thinking CAFC decision, probably written by Judge Newman because she’s oh-so-“technical” about this stuff.

      2. My concern is that I can’t actually formulate a test that could be used to determine the boundaries on the analysis she used. The logical operation of the components is defined in the claims, but Prost attacks those as “result oriented solutions.” Do I have the write the actual pseudo-code? That’s basically got me in the copyright world. Maybe adding limitations relevant to the problem would help her, but again, if it’s in software and I can’t define those problems in functional terms, what do I do? Even it does work, it sure feels like sticking one’s finger in the air to see which way the winds blowing.

        1. My concern is that I can’t actually formulate a test that could be used to determine the boundaries on the analysis she used.

          What are the structural “boundaries” on this claimed “apparatus”? A “processor” and at least 6 “components”?? Seriously? C’mon.

          The logical operation of the components is defined in the claims

          Not that it should matter because “logical operations” aren’t eligible for patenting but “identifying”, “mapping” and “organizing” are just statements of functionality. They are exactly what Prost says they are: “result oriented solutions”.

          Note that Prost isn’t saying that every claim with a “result oriented solution” recited in it somewhere is ineligible. And she isn’t saying that every claim with a functional term in it is ineligible. What she is saying is that claims that purport to protect a logic-processing apparatus need to have a lot more detail in them besides a list of ancient generic logic processing functionalities and some field of use.

          In case you’re wondering what sort of detail will guarantee you a good result, here’s your answer: novel non-obvious structure described in objective structural terms. This is the grown-up world of patenting. You might actually have to have a strong background in science to succeed on a sustained basis in the patent system. Golly, what a harsh world we live in.

          1. Yay portraying an optional claim format as somehow being more than merely optional.

            Again.

          2. Prost seems focused on patent claims that as written, cover a desired outcome (or solutions to a problem) or a class of outcomes (or class of solutions to a problem).

            If that’s her lens, software is particularly susceptible to the analysis because software is claimed in terms of outcomes. Drafters write, “sorting the data set so that the sorted data has the XYZ characteristics.” They don’t write, “processing the data using an ABC sort with LMN parameters into a sorted data set” and leave unstated that the sorted data has XYZ characteristic. But that seems to be what Prost wants?

            I agree with you, generally, that patents should be drafted to “one of ordinary skill in the art,” and if done that way, using the language that OOOSITA would use, there are fewer problems with 101.

            1. They don’t write, “processing the data using an ABC sort with LMN parameters into a sorted data set” and leave unstated that the sorted data has XYZ characteristic. But that seems to be what Prost wants?

              She’s not asking that the results be left unstated. She is asking scriveners to recite the logical processes that lead to the desired results. Again: that is a huge gift to scriveners everywhere and it’s a gift that will be taken away eventually. I wouldn’t complain about it too much.

              What the patentee in this case has is a claim along the lines of

              An apparataus consisting of

              a black box that achieves [insert desired result]

              a black box that achives [insert another desired result]

              and a black box that achieves [insert another desired result].

              As ever, the logic patentee wants to argue that he/she doesn’t need to say anything more because the “skilled artisan” (i.e., a person who can write logic instructions for an instructable logic-executing machine) can figure out the rest. But the patentee isn’t claiming anything obvious! No sir. And the patentee isn’t just claiming a result. Nope. And being forced to actually describe an actual working embodiment and possibly being limited to that embodiment — oh the horror! The horror.

              1. Lol – Malcolm prevaricating again with “logic”….

                How goes that copyright on “logic” for you?

                What a schmuck.

              2. “She is asking scriveners to recite the logical processes that lead to the desired results”

                for the first time since I can remember I don’t disagree violently with some thought in your head – that is substantially what I was telling H2H before, in that you have to explain what SW tools are doing what, why, and how they achieve the result

              3. “As ever, the logic patentee wants to argue that he/she doesn’t need to say anything more because the “skilled artisan” (i.e., a person who can write logic instructions for an instructable logic-executing machine) can figure out the rest. But the patentee isn’t claiming anything obvious! ”

                Thats right. The skilled artisan can write instructions AFTER BEING TOLD the inventive combination of functions disclosed and claimed in the Patent.

                Just as the skilled artisan can look at a claim that says elements A and B are attached at points C and D with a fastener and select an appropriate screw, bolt and nut, rivet nail, snap, button or hook and loop strips.

    3. If I’d read the cited language out of context, I’d have though I was reading the basis for a 112 rejection.

  13. Dennis

    Reading these decisions, you can see right away they are simply the “Lazy 103 analysis in disguise” that the 1952 Act was supposed to eliminate. A few of us are old to remember the whole “gist of the invention” 103 faulty jurisprudence that was summarily trashed, only to be resurrected now in the form of “this is just calculating data” so its invalid under 101 instead. There is nothing in these claims that could not be addressed by a typical prior art analysis, but the fact is the judges have become overworked and now take the “get out of messy patent case free” card offered by 101 whenever possible.

    1. “this is just calculating data”

      And therefore ineligible.

      The 1952 patent act did not make math and logic eligible for patent protection. The Federal Circuit did that by waving their hands in the air and muttering some bal 0ney about the “essence of electronic structure.”

      Subsequently the Supreme Court smacked down the CAFC, hard.

      1. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter …” Seems to cover computation to me, which can be embodied as a method and a machine.

        You’ve never answered why patents for chemical processes that involve logic and math as elements are patentable. You’ve never explained why a machine in fixed silicon (e.g., an ASIC) configured to perform a novel useful algorithm is any different, with respect to 101, than a hunk of silicon whose physical state is easily reconfigured. You’ve never answered any of the substantive points about software patentability. You also ignore numerous judicial statements that there is no per se rule of software unpatentability. You ignore all of the many appeals decisions that have held “math and logic” (your oversimplification, not mine) patentable.

        1. “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter …” Seems to cover computation to me,

          It also covers the process of thinking about whether to eat blueberry pie or pistachio ice cream, wherein the pie and ice cream are placed in front of you.

          So there’s a mistake somewhere. A huge one.

          You’ve never answered any of the substantive points about software patentability.

          LOL What?

          You’ve never explained why a machine in fixed silicon (e.g., an ASIC) configured to perform a novel useful algorithm is any different, with respect to 101, than a hunk of silicon whose physical state is easily reconfigured

          First of all, 101 is applied to the claims. If you claim your “machine in fixed silicon” in objective structural terms, distinguished from the prior art on that basis (and not on its functionality), then you’re golden. Second of all, allegedly “new” “easily configured hunks” of anything that are distinguished from prior art “easily configured hunks” of anything only on the basis of the information content they store or some data processing “functionality” untethered to a defined structure are highly problematic from a 101 perspective. And third of all, “easily configured hunks” that do nothing more than what they were designed and expected to do are per se obvious and undeserving of patenting so quit your crying already.

          You also ignore numerous judicial statements that there is no per se rule of software unpatentability.

          In fact, software per se is ineligible for patenting. The judicial activist myth-making (that makes no sense at all) says that everything changes if you claim the instructions written on some “medium.” That’s beyond silly. But it’s not my house of cards that’s built on a foundation of fairy dust. It’s yours.

          Look, I’m not responsible for the poor advocacy of others. As Dennis points out, Microsoft chose to pay $200 million dollars to i4i rather than make a fairly straightforward 101 argument or even a decent 103 argument. Why did it choose that course? Because it didn’t want to shoot itself in the foot. So it made a bunch of l 0 sing arguments instead.

          [shrugs]

          1. Nice evasion of every substantive point put to you.

            Yay 11 years of Malcolm blight.

    2. There is nothing in these claims that could not be addressed by a typical prior art analysis

      Astute readers will note that there was a “typical prior art analysis” in this case. Take out the logic and the “typical prior art analysis” reveals that you’re left with nothing except a bunch of old hardware.

      Put a fork in it.

      1. Funny then how a bunch of “old hardware” did not have the new capability.

        Oh wait, maybe you want to use the known and easy to understand patent law doctrine of inherency to change your feelings-based rant into an actual legal point…

        (I won’t be holding my breath).

        1. a bunch of “old hardware” did not have the new capability [that the old hardware has when it receives instructions conceived of and written down by a human ].

          Nothing “funny” at all. It’s just like the old book with blank pages didn’t have the “new capability” of the identical book with recipes written on its pages. The latter book will enable your robot chef to “acquire the functionality” needed to cook your breakfast. That could be the difference between life and death! Super important! But ineligible for patenting.

          1. Except for the fact that it is nothing at all like the “book” example that you want to prevaricate with – as your very own volunteered admission against interests holds.

            (Hint: that’s called direct L I E I N G)

    3. JNG, Hotel Security was good law before and after ’52. What did it hold and why?

      Let me help.

      It is manifest that the subject-matter of the claims is not a machine, manufacture or composition of matter. If
      within the language of the statute at all, it must be as a “new and useful art.” One of the definitions given by Webster of the word “art” is as follows: “The employment of means to accomplish some desired end; the adaptation of things in the natural world to the uses of life; the application of knowledge or power to practical purposes.” In the sense of
      the patent law, an art is not a mere abstraction. A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of- the term, an art. Advice is not patentable. As this court said in Fowler v. City of New York,
      121 Fed. 747, 58 C. C. A. 113:

      “No mere abstraction, no idea, however brilliant, can be the subject of a patent irrespective of the means designed to give it effect.”

      It cannot be maintained that the physical means described by Hicks, -the sheet and the slips,-apart from the manner of their use, present any new and useful feature. A blank sheet of paper ruled vertically and numbered at the top cannot be the subject of a patent, and, if used in carrying out a method, it can impart no more novelty thereto, than the pen and ink which are also used. In other words, if the “art”
      described in the specification b~ old, the claims cannot be upheld because of novelty in the appliances used in carrying it out,-for the reason that there is no novelty.

      Hotel Security, 160 F. 467 at 469.

      Manipulation of data is itself an abstraction because data is abstraction. Other than manipulation of data, there is nothing else here claimed except “do it on a computer.”

      102/103 cannot address this kind of claim because the novel subject matter, the inventive subject matter, is not otherwise eligible and it is not applied improve anything that is otherwise patentable subject matter.

      1. Ned,

        Once again you trot out your (plain wrong) treatment of Hotel Security that was on NO ONE’s radar until some lacky of Justice Stevens picked it up.

        Please stop embarrassing yourself.

    4. Furthermore, your “history” of the ’52 Act is utter BS. It was directly addressed in Graham and labeled for what was.

      That said, it is also true that the Federal Circuit, under Rich, tried for a very long time to undo and ignore 101 and put every decision into 102/103. Where did that lead us? To State Street Bank and more than two decades of utter chaos and upheaval in patent law. It brought us the AIA and IPRs and CBM that are wrecking the patent system for those of us who have always dealt in bona fide inventions, inventions that really have to do with the stuff of the useful arts.

      I do not support your effort to rewrite history.

      “Who controls the past controls the future. Who controls the present controls the past.” Orwell, 1984.

      1. Not sure what you are alluding to with your comment or what is “directly addressed” in Graham. It says nothing about this particular point, and in fact further added more rigor, not less, to the examination of claims for patentability.

        The 1952 Act codified the standard set out in the Mercoid decision, which is mentioned in Aro:

        “….Yet this Court has made it clear in the two Mercoid cases that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent”

        That is why 103 was written as “….the claimed invention as a whole” – to remove the type of games we are seeing now in CAFC jurisprudence, except now in the realm of 101.

        1. remove the type of games we are seeing now in CAFC jurisprudence

          JNG – please give “cedit” where “credit” is due: what you are seeing in the CAFC is directly related to the Supreme Court scrivening.

          Recall the psychological experiment of simians in a cage, a stepladder and a bunch of bananas hanging from the top center of the cage. When the simians try to use the stepladder and reach up for the bananas, they are ALL firehosed. Soon, as any one simian tries to go for the bananas, the others beat down that one. Introduce a new simian and soon he too is acclimated to the “beat down” mindset. Over time, you keep on introducing new simians, and you will reach a point at which all the simians in the cage have never directly experienced a firehosing, and yet they will beat down any simian that tries to reach for the bananas.

          Look at the the Supreme Court’s (longstanding) animosity towards patent rights (all the way back to the self-captioning of “the only valid patent is one that has not yet appeared before us”)…

          1. Great story. I went looking for more details. Unfortunately it seems the experiment never happened:

            link to throwcase.com

            Still a great story though.

            1. It is a pschological story – try not to be so literal.

      2. You are not referring to the self-serving DICTA in Graham, are you?

        Man you really ARE embarrassing yourself.

    5. Yep, gist and heart of the invention BS was eliminated by 52 Act. And yet, here we go again.

      1. Those who do not learn from history….

      2. gist and heart of the invention BS was eliminated by 52 Act,

        LOL

        Show everyone where the 1952 act says you can’t use those words.

        Just kidding. The 1952 act doesn’t say that.

        What was “eliminated” is different from what is going on now. As others have noted, your inability to recognize or admit this is why you come across as an ign 0rant whiner. It’s also why you’ll continue to lose bigtime. [shrugs]

        1. …talk about someone refusing to learn from history….

  14. Section 101 merits aside, couldn’t Erie put together a solid 102/103 invalidity defense? XML is just less-constrained HTML, and HTML editing tools have been around since the mid 90s, at least. Not an unfair outcome, but section 101 is now a patent WMD — too much collateral damage and uncertainty.

    1. The only “uncertainty” with 101 is whether your attorney knows how to make a coherent argument, and whether you draw a panel that isn’t drunk on logic patent kool-aid. In that sense, 101 is less “uncertain” than 103 because 103 is subject to all these issues plus you have experts arguing about “unexpected results” flowing from previously uncombined physical structures.

      That doesn’t happen with logic. Because … logic. How many different terms can a lawyer invent for “if … then”? Answer: a whole lot. But that’s not patentable innovation.

      Logic on a computer patents are always tankable under 101. It’s just a question of knowing how to make the argument.

      The landscape is shrinking and it’s been shrinking for quite a while. There’s no “swinging back.”

      1. Section 103 arguments are based in facts of record. Section 101 arguments are based on stuff pulled from an upside down tophat.

    2. as applied, 101 is a joke, and everyone old enough to remember the founding of the CAFC knows it well

      that’s why it also funny to see how much mental m*st*rbation is expended by the likes of clowns like MM trying to defend what is nothing more than grossly incompetent understanding of the Patent Statute by the current SCOTUS and the interplay of the various provisions – the simple difference between “eligibility” and “patentability” is lost on folks who spend less than a few hours a YEAR ever looking at the Patent Act or patent issues

      1. trying to defend

        Trying? It’s a done deal. Mission accomplished except for the CAFC doing it’s two steps forward one step back dance until it gets smacked down again.

        And it doesn’t actually didn’t require much legal work at all. Logic is ineligible for patent protection. Information is ineligible for patent protection. The particularity or the field of use doesn’t change these fundamental facts that are central to the reasonable operation of any sane patent system.

        But go ahead and get to work on that database of prior art logic so the PTO can actually search and examine this stuff. Then we’ll know you’re serious.

        1. There you go again confusing whose job is what as a thin veneer over your anti-patent feelings…

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