Supreme Court: Challenging Quick-Look Eligibility Denials

by Dennis Crouch

Broadband ITV v. Hawaiian Telecom (Supreme Court 2017)

A newly filed petition for writ of certiorari offers a substantial challenge to the quick-look eligibility decisions that have been so popular among district courts.  The challenge here is especially focused on no-evidence eligibility decisions that serve as a substitute for an obviousness determination.

In the case, the claims of BBiTV’s U.S. Patent No. 7,631,336 have been repeatedly upheld as non-obvious before a Hawaii district court ruled them ineligible on summary judgment.  In its 103 analysis, the Hawaii court also denied summary judgment of obviousness – finding questions of material fact regarding whether (1) elements of the claims were found in the prior art or (2) PHOSITA would have been motivated to combine those elements.  In its simultaneous 101 decision, however, the court determined as a matter of law that those same elements were “well-understood, routine, conventional activities previously known to the industry” that lack the “inventive concept” required by Alice.  The decision was (as is now common) affirmed without opinion by the Federal Circuit.

The petition challenges the decision and the newly-popular approach of using eligibility as a shortcut to more difficult and fact-intensive obviousness analysis. The three three questions:

1. Evidence for Underlying Factual Findings: Whether the statutory presumption of validity set forth in 35 U.S.C. § 282 applies to claims challenged under 35 U.S.C. § 101, as set forth by this Court in Microsoft Corp. v. i4i L.P., 564 U.S. 91 (2011), when the ultimate legal conclusion relies upon underlying findings of fact, such as whether the additional novel and non-obvious elements of the claims are merely well-understood, routine, and conventional or whether they add an inventive concept.

2. Standard for Summary Judgment: Whether, unlike every other area of law involving motions for summary judgment, as set forth by Fed. R. Civ. P. 56 and Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986), and its progeny, a district court may resolve material underlying fact disputes against the non-movant party on a summary judgment motion for lack of patent-eligibility under § 101.

3. Not All Abstraction Are Abstract: Whether the judicially-created exception for “abstract ideas” broadly includes any abstraction of a claim (including novel business practices or methods of organizing human activities) or only “fundamental” and “long-standing” (i.e., pre-existing) practices and methods, as recognized by this Court in Bilski v. Kappos, 561 U.S. 593, 611 (2010) and Alice Corp. Pty. v. CLS Bank Int’l, 134 S. Ct. 2347, 2356- 57 (2014).

The questions begin with the implicit understanding that, although a question of law, eligibility decisions are based upon a set of factual determinations that should be treated like any other factual determination by the court.  This approach is directly contrary to the approach often taken these days that follows Judge Mayer’s concurring opinion in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).

An important legal question here is how close the link should be between obviousness and eligibility.  Post-KSR and Alice, there does appear to be substantial connection between the obviousness analysis associated with combining-old-elements and the eligibility analysis of elements that are “well-understood, routine, and conventional.”  The two should often correlate, the court here may have the opportunity to explain the differences both in doctrine and procedure.

Read the petition here: [LINK]

Amicus Briefs in support of the Petition are due by May 17, 2017.

 

88 thoughts on “Supreme Court: Challenging Quick-Look Eligibility Denials

  1. Case number for Broadband iTV v. Hawaiian Telecom at CAFC is 16-1082. Oral argument is on CourtListener here:

    link to courtlistener.com

    On March 15, 2017, there was a posting on Patently-O entitled Eligibility: Get Technical or Get Denied. It seems to me that the title would be an appropriate summary of the course of oral argument in this case.

    The ‘336 patent is on Google here:

    link to google.com

    1. Excerpts from the oral argument (probably with transcription errors)…

      01:24 Judge Taranto: Let me see if I can understand this. You’re not claiming that the uploading of the metadata together with the video is the invention. If I understand correctly, your invention in the claim here is the idea that you’re automatically uploading the metadata and populating the EPG with the data that’s there, right?

      Petitioner Lawyer: Well there’s – if I understand Your Honor’s question – what we claim, the stated objective or the end sought is the ability for the content provider to upload their content onto the video publisher’s system. That is right in the first two lines of the claim.

      Judge Taranto: And to integrate it with the EPG.

      Petitioner Lawyer: I’m sorry?

      Judge Taranto: And to integrate it with the EPG.

      Petitioner Lawyer: Right. And to have it integrated into the EPG. In the prior art the updating of the EPG was done by the cable operators themselves.

      Judge Taranto: OK, so it’s now done automatically. The problem is, is there anything here more than an idea of automating it using a generic computer? I mean, does – the patent doesn’t tell you …s

      Petitioner Lawyer: Oh, but it does, Your Honor. It provides a detailed recitation on pages 15 and 16 of our reply brief. It goes through … a detailed how, with detailed means, of how to .. the end sought. And the end sought was the ability of the content provider to upload video over the – onto the operator’s system. This element about uploading along with the metadata. The reason why that element, or that section of it, is important is –

      Judge Taranto: Take me to 15 of the reply brief. Show me where it tells you how to automate this, as opposed to just saying it can be automated using the computer.

      Petitioner Lawyer:But the claim tells you how to achieve the ultimate objective, which is the system I have described. Starting on the first step, step (a), element (a), how the uploading of VOD content is limited, how it’s done. It’s done in a digital format, via an online network –

      Judge Taranto: But that’s not –

      Petitioner Lawyer: But yes, Your Honor –

      Judge Taranto: – telling you how to do it. Where does it tell you how to do it, as opposed to telling you, doing it is a good idea?

      Petitioner Lawyer It tells you that how to do it right in the next step. But first of all you have to do it along with the metadata. (b) tells you how to do it. (b) is the technological solution. How the video is converted. It tells you it has to be converted, and that the title has to be linked, and then in in (c) these converting and linking steps tell a person of ordinary skill in the art how to go from step (a) to step (b) – I mean, from step (a) to step (c) –

      Judge Taranto: It basically tells you to do it, and somebody with ordinary skill in the art would know how to do it.

      […]

      09:30 Judge Dyk: Did your expert submit or did you argue that transmitting a file along with metadata was something new or is it more particular to transmitting this kind of file with this kind of metadata.

      Petitioner Lawyer: What our expert opined and what I believe the record below was is what the district court found and what the PTAB found was that uploading a video file in a VOD system which is what we are talking about here was not taught in the art. That was an element that was missing from the art. That was the grounds upon which Judge Kay denied…

      [Judge Dyk thereupon repeated the question.]

      1. Very, very much like Dann v. Johnston. Simply automating a known procedure is not invention. However, if the claim claims new technology in doing so, well that was what Taranto was looking for.

      2. the end sought is the ability for the content provider to upload their content onto the video publisher’s system

        LOL

        Because nobody ever published their data on someone else’s data publishing system before. A super confounding challenge!

        Meanwhile the PTO is handing out a zillion patents on methods of using passwords to prevent people from …. publishing data on someone else’s data publishing system because otherwise it’d be super easy to do that.

        Logic patents = j0ke. Long live the maximalist cl 0wns!

      3. uploading a video file in a VOD system which is what we are talking about here was not taught in the art.

        “B-b-b-but these are copyrighted videos. With ads attached! It’s totally different you’re honor!” <— hucksters and grifters in the logic patenting "arts" are an embarassment to the legal profession

  2. Attempting to crystallize out some recent thoughts concerning SCOTUS and 101.

    (I) I would suggest the hypothesis that SCOTUS might interpret that Copyrights and Patents Clause of the US Constitution to require “invention” as a sine qua non for the issuance of a valid patent. Because that clause only authorizes the grant of exclusive rights to “inventors”, and one could argue that there cannot be an “inventor” without an “invention” that embodies some “inventive concept”. And I would presume that one cannot define in a statute how the word “inventor” in the US Constitution is to be interpreted. Etc.

    (II) In the past week, I have been working through the saga of Warner-Jenkinson and Festo, as documented in SCOTUS and CAFC opinions. To me, those opinions suggest that SCOTUS has been, and would still be, sensitive to inventor’s rights – provided that they can discern true invention in the subject matter of the patent at issue, and they are more likely to find this in patents drawn to traditional manufacturing processes than in the subject matter of issued patents of the sort that currently fall foul of 101.

    (III) The following thought that has occurred to me on a number of occasions. SCOTUS applied the precedents of Bilski and Mayo to the facts of Alice, thus formally disposing of Alice under 101. Suppose that SCOTUS had disposed of Alice “under 103” by applying the precedent, and reasoning, of Dann v. Johnston (1976). I am thinking particularly of the short shrift given by SCOTUS to any notion that “nonobviousness” could arise from the mundane details of the computerized management of bank accounts, given the prevalence and ubiquity of computerized account-management in banking institutions. Accordingly the representative claim in Alice was surely even less “patent-worthy” than those in Johnston’s application.

    Similar reasoning could be applied mutatis mutandis to the communication of hierarchical data structures, for example, in web applications. And maybe here one has the seeds of a patent doctrine perhaps reminiscent of the scènes à faire doctrine in US copyright law? I don’t suppose that such a doctrine, if it had emerged, or if maybe it eventually emerges out of current 101 case law, would prove popular with the Patent Bar.

    And, although Johnston was formally disposed of under 103, it would presumably be susceptible to disposal under Mayo/Alice. The Dirks Patent referenced in the SCOTUS opinion would presumably exemplify the abstract idea for Stage 1…

    1. link to en.wikipedia.org

      Distant Perspective, it probably would have saved the patent system a lot of angst had the Supreme Court held in Dann v. Johnston that the patenting of computer implemented business methods was ineligible subject matter without invention in the computer or computer systems involved.

      I note that Richard H Stern was on the brief for the government in that case. Stern likes to break down an invention and explain it to the court in a way that makes it seem trivial. He did that in Benson, and probably did that in Johnston, which probably helps explain why the court held the claimed invention to be obvious.

      Of interest in the summary from the Wikipedia is that Gilesa Sutherland Rich dissented from the majority holding that the claims were eligible over Benson because they were directed to a machine as opposed to a process. It was Judge Rich’s observation that any competent craftsman could claim an invention such as in that case either as a machine or process.

      Ultimately, Judge Rich’s view in Johnston prevailed in Alice. Rich’s views in State Street Bank, which were 100% flipped from his views in Johnston, have obviously not stood the test of time.

      1. Apropos Giles S. Rich, two quotations from SCOTUS oral argument. The first I came across years ago; the second a couple of days ago.

        Justice Stevens: “I have always admired Judge Rich, who was very active in drafting the ’52 amendment.” (Bilski oral argument, p.17)

        Justice Breyer: “I take it a teaching is you put all the prior art — that’s what I guess that’s what Judge Rich explained, which I thought was very enlightening to me in I can’t remember the name of the case, Wigmore, Winsmore -” Mr. Dabney: “Winslow.” (KSR oral argument, p.9)

        After some searching, I found Application of Winslow (CCPA, 1966) on casetext.com here:

        link to casetext.com

      2. Here is Application of Johnston (CCPA, 1974), straight from the horse’s mouth:

        link to scholar.google.com

        Judge Rich’s position was the Benson controls. Nevertheless he wrote “[i]t may well be that I seem to have been inconsistent. As the author of the opinion of this court in Benson, which was wholly reversed, I have not been persuaded by anything the Supreme Court said that we made a ‘wrong’ decision and I therefore do not agree with the Supreme Court’s decision.” He later wrote: “I deem it to be the Supreme Court’s prerogative to set the limits on Benson, which was broadly based. I hope it will do so.”

        I note also that SCOTUS seem to have followed Chief Judge Markey’s dissent, so maybe Johnston was not as disruptive of CCPA/CAFC jurisprudence as I suggested above. But it still seems to me poles apart from “formalistic” application of TSM and what seems to be the current somewhat formalistic strict-TSM-inspired interpretation of Graham in recent CAFC decisions.

        1. I have L O N G noted that Judge Rich (as you note with one of your quotes) was in prime position to distinguish between the non-controlling DICTA inserted by the scrivening of the Supreme Court and any holding that bears weight as to the very law that he helped write.

          People really do need to NOT treat Benson as any type of “final word,” and must realize that Benson (and Flook) were indeed cabined (See Bilski).

          We currently have such a mess of contradictory Supreme Court ramblings that a decision can be cited for rather contradictory meanings.

          As scriveners, the Supreme Court has made a mess of 101.

          It is high time that they themselves are removed from the writing of patent law.

  3. Ned the Ed:

    Music ? Seriously? So, you are saying a music player is the same as an information processing machine? Where is the “processing” part in the music playing?

    Has your stereo ever diagnosed a tumor? Driven a car?

    You make the same ridiculous arguments that Stern does.

    1. About time someone challenge this nonsense. There are without question factual issues in an Alice analysis.

      1. There are without question factual issues in an Alice analysis.

        Wrong. Consider:

        1. A method of computing, comprising using a computer to determine whether a 2-D image is an image of a human face, wherein said image is copyrighted.

        The specification states that the prior art includes using computers to determine whether a 2-D image is an image of a human face.

        What’s “the factual issue”? More specifically, what’s “the factual issue” that requires a trial and millions of dollars of expert testimony?

          1. My strawman? LOLOLOLOLOL

            There isn’t a “factual issue” in that claim. And that’s true of 99.9% of the junky logic on a computer claims out there.

            Nice try, though! Dust kicking works on the rubes, “anon”, and it surely works on your clients whose money who steal. But it doesn’t work on me.

            1. Yes, Malcolm – your strawman.

              The straw is in particular to the other item in my post: that functional related aspect.

              Might I remind you of your own volunteered admissions against interests regarding the exceptions to the judicial doctrine of printed matter wherein the “functionally related” phrase is pertinent…?

              That’s what I thought.

              Hence, your ad hominem is – as usual – baseless and meaningless.

              Accusing people of theft with no basis for your accusation cannot square with your ethical restraints on your advocacy – if you cared at all for those limitations on your “lawyering,” that is…

    2. Night, I am making no suggestion that software is per se ineligible by talking about music. I only talk about music so there is no controversy at all about whether the claim includes ineligible subject matter and also includes ineligible subject matter in a mix.

      1. It looks like Dragon got me again. I should have said that the claim mixed eligible and ineligible subject matter together – music and machine.

        It is interesting that in Dann v. Johnston, the Supreme Court held a computer implemented accounting method obvious on the basis that computer implementation of accounting methods was notoriously old at the time and that the particular method of tabulation was fairly disclosed in a prior art reference, Dirk. Thus the court did not happen to reach the issue of whether accounting methods or other business methods were directed to ineligible subject matter, which was heavily briefed in the case and one of the holdings of the decision below.

        1. Please elaborate. Did I incorrectly describe the operation of a music player? Is a song recording not data or information? Can a song recording be converted into sound without processing?

          1. Obtuseness with NSII:

            Q: What is thing over here made out of?

            A: It is made out of protons, neutrons and electrons.

            Q: And what is that other thing over there made out of?

            A: That other thing over there is made out of protons, neutrons and electrons.

            Q: Isn’t everything – talking about objects – made up of these very same protons, neutrons and electrons?

            A: Yes

            Q: Then everything must be the same as everything else, right?

            A: No.

          2. 0btuseness with NSII:

            Q: What is thing over here made out of?

            A: It is made out of protons, neutrons and electrons.

            Q: And what is that other thing over there made out of?

            A: That other thing over there is made out of protons, neutrons and electrons.

            Q: Isn’t everything – talking about objects – made up of these very same protons, neutrons and electrons?

            A: Yes

            Q: Then everything must be the same as everything else, right?

            A: No.

            1. I assume you were trying to make a point, but I found it confusing. Are you stating something other than the fact that distinctions exist? If so, that is meaningless in the abstract. The issue is whether certain distinctions matter for certain purposes. Your “example?” was pointless and a non sequitur.

              In case it wasn’t clear, the issue is whether all information processing machines constitute patentable subject matter. If not, why not? “Just because” is a perfectly acceptable answer, if that is your basis.

          3. Night as usual has religious feelings about information processing, but in fact, computers are both direct descendants of music players and the original inspiration for information processing machines.

            Watch this short informative and provocative video on the exact subject of music and computers, plus a surprising foundation of innovation generally.

            link to ted.com

            1. Did you miss the Crouch piece?

              link to patentlyo.com

              Further, it is entirely unclear just what point you are trying to make, Mr. Snyder.

              Or are you still pretending that there is no line between the Useful Arts and the Fine Arts? (please recall past counter points presented to you on the differences between say the manufacture of violins – patent eligible – and the playing of violins – patent ineligible).

                1. Your post is unclear, Mr. Snyder.

                  Specifically, “Because there is no bright line between fine arts and industrial arts?

                  Try again.

      1. NS II,

        You are beating a very dead horse and your multiple questions here have long been answered.

        (one of the comments rescued out of the “moderation trap”: … the part about “functionally related” and the part about Useful Arts, NSII.

        This is not a new concept (even as Ned continues to obfuscate with a known non-starter).)

  4. Methinks that the petitioner protests too much. Take a claim for improved music on a conventional music player. The claim, considered as a whole, can be nonobvious if the music is given patentable weight. And yet the music player itself can be as conventional as all get out.

    The whole point of excluding music from patentable weight in the novelty analysis is to make sure that the invention being patented is actually a machine and not the music, subject matter that we all can agree is ineligible. To me, this is exactly what the Bilski/Mayo/Alice formulation does.

    Clearly the Supreme Court gets it. Clearly this petitioner does not. Moreover, I believe that the Supreme Court is avoiding 103 precisely because of the requirement of 103 that the claim be considered as a whole.

    1. Ned,

      Once again, please stick to the proper type of Useful Arts in your attempted examples.

      Wolfgang Pauli comes to mind…

      1. Once again, please stick to the proper type of Useful Arts in your attempted examples.

        Isn’t the proper type of Useful Art the issue? Music cannot be summarily dismissed. A song is a process of making sounds. A song file is a type of software that includes instructions that can be performed by a computer. If a computer outputs the results of these instructions on a speaker, this might alter the mood of a listener. A mood-altering drug is useful.

          1. This is NOT a matter of ANY “not wanting to address straight forward hypotheticals.”

            This IS a matter of removing obfuscations that are easily seen to be attempts at dissembling.

            Get out of the weeds, please.

        1. Fine Arts versus Useful Arts NSII

          This is very basic stuff – and this is also why Ned’s frolic is rather unhelpful to any meaningful discussion: you have people only too eager to jump into the weeds with the “music” angle.

    2. So Ned the Ed has decided again to forget about software/hardward/firmware.

      And play to the ignorant masses.

      Ned the Ed: ever searching for the next client. Have invalidity arguments will travel to the ED of Texas.

      1. Isn’t the software/firmware/hardware analysis distinguishing between writing in pencil, writing in ink, and writing in stone?

        1. Let’s be careful: new non-obvious hardware distinguished from existing hardware in objective structural terms (e.g., not in terms of information content or logic) is eligible (certainly eligible under Alice).

          The failure to acknowledge this fact is part of the disingenuous game that the proponents of software patents like to play. If something very critical to progress in the computer-related arts is in fact eligible for patenting (which it is) then the baby is just fine even if the dirty bathwater is thrown out. And that fact destroys their mewling “argument” about “nothing being eligible”.

          1. ..,and yet again, the fallacy of one optional claim format somehow being more than just an option…

            Malcolm, please stop dissembling.

  5. DC: In its 103 analysis, the Hawaii court also denied summary judgment of obviousness – finding questions of material fact regarding whether (1) elements of the claims were found in the prior art or (2) PHOSITA would have been motivated to combine those elements. In its simultaneous 101 decision, however, the court determined as a matter of law that those same elements were “well-understood, routine, conventional activities previously known to the industry” that lack the “inventive concept” required by Alice. The decision was (as is now common) affirmed without opinion by the Federal Circuit.

    This result is odd but it’s just as likely it’s a problem with the district court’s obviousness analysis.

    The claims at issue here are 100% pure junk. Let’s just get that out of the way first. If you see a claim that recites “hierarchical menus” it’s pretty much guaranteed to be junk for straightforward reasons that nobody in 2017 should need to have explained to them. This claim isn’t an exception. Go ahead and beat yourself up trying to convince yourself that it’s not junk if you like. That’s your problem.

    But the bigger problem is the relentless effort to sow confusion about eligibility and the analysis under 101 when, in fact, it’s not terribly complicated. The alleged difficulty certain types of patent attorneys have is not the analysis but the result. If you start from the proposition that junk logic claims simply must be eligible (because $! because investers! because method!), then you are never going to “get” subject matter eligibility. Again: that’s your problem. It’s not a problem with the subject matter eligibility analysis.

    The general proposition (pay attention here, folks) is that if you have non-obvious structural limitations or a non-obvious series of steps in your claim that result in a transformation of matter that wasn’t previously understood to be possible using those steps, then your claim is going to be eligible. Note: this isn’t “conflation”. It’s just a reflection of the fact that most 101 determinations necessarily require an understanding of the prior art to determine whether “sufficiently more” has been added to whatever ineligible subject matter might be present in the claim. If your claim lacks either those two classes of combinations of limitations, the claim has eligibility issues. Period. This is not complicated. Pretending it’s not true represents a major disservice to your client, or malpractice.

    Where courts and attorneys get themselves into trouble is failing to recognize the difference between structural distinctions and distinct physical transformations (on one hand) and abstract limitations on the other hand (e.g., arrangements of information as opposed to structures; legal and quasi-legal categories, as opposed to structural categories; data processing versus the processing of physical matter). Applying existing technology designed for a general purpose to a specific class of pre-existing species falling within that purpose is not “inventing.” This is true no matter how you dice it and it’s true no matter what kind of fancy name you scriven for that new species. Competent attorneys will see right through that game.

    It’s also irrelevant that the PTO has been largely incompetent for the last quarter century when it comes to dealing with these issues. There is a lot of junk out there. Good riddance to it.

    1. The CAFC this morning (Westview Tr0lling v. A Zillion Deep Pockets):

      “[C]ollecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept.” Elec. Power Grp., 830 F.3d at 1353….

      If a patent uses generic computer components to implement
      an invention, it fails to recite an inventive concept under Alice step two. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (explaining that “generic computer components such as an ‘interface,’ ‘network,’ and ‘database’ . . . do not
      satisfy the inventive concept requirement” (citations omitted)).

      [note: merely adding some silly freshly-scrivened functional descriptor to any of these components changes absolutely nothing]

      Whether analyzed individually or as an ordered combination, the claims recite conventional elements at a high level of generality and do not constitute an inventive concept. See In re TLI Commc’ns LLC v. Automotive, L.L.C., 823 F.3d 607, 614–15 (Fed. Cir. 2016)

      Again: none of this is difficult. The only “difficulty” is that it leaves a certain class of patent attorneys holding the bag and trying to explain to their clients why they wasted so much money. And most of the grown-ups could really care less about that “difficulty.”

      There’s actually a lot of smart people out there doing real work that needs patent protection. Writing instructions for computers is not an “art” that belongs anywhere near the patent system. It never belonged there, and it never will. Shoe-horning it into the patent system has only created a playground for grift and b0tt0m-feeding. It’s also exposed some of the worst lawyering by the worst lawyers in the history of the plaintiff’s side of the legal profession.

      1. “[C]ollecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept.” Elec. Power Grp., 830 F.3d at 1353.

        MM do you realize that under this characterization of 101 law that has strayed so far from Alice yields counterproductive, ridiculous, anti-Alice results. For example, no matter how non-obvious, GPS systems that allow safe and more efficient aviation navigation, ineligible, computing systems that identify DNA defects to treat diseases, ineligible, radar/display computing systems, ineligible, etc. etc.

        This misguided legal analysis will fall either by an educated judiciary or by statute.

        1. Thanks for proving my point, Kent.

          Yes, it’s true: information and logic and correlations and math are important! Valuable, even. Why, without instructions it can be impossible for most people to make even very simple things work.

          But that doesn’t change the simple fact: information, logic, math and instructions don’t belong in a s@ne patent system. They certainly don’t belong in the patent system that the US Congress created which was designed to protect completely different things, i.e., new physical structures and new processes that transform physical matter.

          ineligible, computing systems that identify DNA defects to treat diseases

          Fyi, probably the absolute worst example that anyone can come up with to justify a return to State Street Bank. Keep up the great work, Kent.

          LOL

        2. This misguided legal analysis will fall either by an educated judiciary or by statute

          News flash: nobody except for a microscopic fraction of patent attorneys wants Prometheus/MetaboliteLabs claims (determine and infer) to be eligible for patents.

          If that decision is ever reversed, you’ll see a massive army of both ordinary and highly educated people (e.g., attorneys and scienitsts) giving maximalist greedy patent owners the finger. I’ll personally lead the drive to reverse the decision and it’ll get reversed in two seconds. Frankly, it’s hilarious that anyone could be so naïve but money-grubbing habits can blind people, especially patent attorneys. I’ve seen it with my own eyes, up close. It ain’t pretty.

        3. GPS systems that allow safe and more efficient aviation navigation

          What about them? You think patents were responsible for GPS systems “on a plane”? You think there’d be no incentive to make safer planes without patents on GPS systems “on a plane”?

          Think again.

          There’s nothing at all “counterproductive” or “ridiculous” about refusing to grant or enforce a zillion patents on “use GPS to locate this other thing” claims. On the contrary.

          1. “on this other thing’…

            Sounds like an intersection of the exceptions to the judicial doctrine of printed matter and the patent doctrine of inherency…

            …and YOU want to poke others about the plain use of the English language?

            The irony is stultifying.

    2. …and once again the attempt to dissemble by calling for an optional claim format to somehow not be optional….

      The Merry Go Round spins round and round.

      1. You always have the option of drafting ineligible claims if that’s what turns your crank. Most people don’t have the money to waste on such frivolity.

        1. You always have the option of stopping your dissembling and trying to make an optional claim format into a non-optional claim format.

          As an attorney (self-professed), you are aware of ethical restraints to your advocacy, right?

        2. You always have the option of stopping your dissembling and trying to pass off an optional claim format as some type of non-optional claim format.

          As an attorney (self-professed), you are aware of ethical restraints to your advocacy, right?

        1. He likes to think that because functional language is “allowed” (or in his words is “optional” < he started using this phrase when Prof. Crouch used it one day iirc) then that means that if he uses it in his claim then it should be impervious to attack on 101 grounds in so far as the only reason the claim is failing 101 is because he used an "optional" claim format.

          He is mistaken, but he soldiers onwards.

          1. Further 6, Malcolm’s attempts geared solely to making an optional claim format be more than merely optional have be shown to be false with the use of the patent doctrine of equivalency (you might want to refresh your understanding with a re-read of Alappat).

            Recall that I put a counter point on the table for discussion of just such an “objectively physical claim” in regards to taking a claim well understood for those persons having ordinary skill in the art (concerning the optional format of using some functional language) and stating that an exact same claim coverage – due to the patent doctrine of equivalency) could be written (albeit extremely painstakingly) in tens or hundreds of pages of objective physical structure of a medium with hills and valleys at exacting locations (or if you like, varying light opacity with physical masks and lack of masks in a medium) – the veritable Beauregard claim reduced to its most basic objective physical state.

            If “forced” to comply with Malcolm’s fallacious desire, we would end up with claims that indeed would be nigh impossible for the public to understand.

            All that this reflects is that the language used in claims is meant to be understood in the context of those persons having ordinary skill in the art, and that the use of terms sounding in function simply is the cleanest (and thus best) way of describing certain innovation.

            Just watch out for those with other agendas driven by feelings to exclude innovation that they do not like.

            The plain fact of the matter is that a claim in the Malcolm-desired “objective physical structure” would be patentably equivalent to the optional form that he would deign to make NOT permissible to even use (the elevation of one optional claim format to somehow no longer be an option ).

            It is certainly not the aim – as you put it – for me to attempt to avoid any review under 101. It is – exactly as I have put it – the opposite aim to remove obfuscation and dissembling from those who simply do not FEEL that software reflects patent eligible innovation.

            1. Yes anon I know all about that. And you’d have us discard the fact that such language then just so happens to make the claim effectively a claim to an abstract idea.

              And also, perhaps new to this discussion ongoing for a decade now is an insight that I’d like to make. If you could write a given structurally recited claim down, WITH IDENTICAL scope to a given functionally recited claim, using structural terms in a hundred thousand pages or whatever, as opposed to using functional terms, then indeed, it is very possible that you have stumbled upon one of the rare, fabled unicorns. A structurally recited claim that also is invalid for attempting to claim the entire scope of an abstract idea. Although since you wrote the claim in structural terms you may have not bothered to inform the PTO of what that abstract idea is, and they may have trouble figuring it out since you didn’t tell them. Thus, such a claim might slide on through the system until you start to enforce it, and people start noticing that you generally believe it to cover an abstract idea.

              1. By adding the objective physical structure you think that such makes it into an abstract idea…?

                This is beyond a reach – even for you.

                (ps, no unicorns whatsoever. Don’t know where you are getting that “insight,” but you don’t want to make it a habit of getting anything there again.

  6. Largely unrelated to the main topic here, but since we are talking about the SCotUS, I notice that the pace of decisions is picking up. Hopefully Lee v. Tam arrives soon, as I am sure that this is the one that we are all waiting still to see.

      1. All I am saying is that when the SCotUS rules as I predicted for that case, be prepared to be served a large slice of crow pie, covered in a generous measure of I-told-you-so sauce.

        1. If SCOTUS mis-rules, such is not an occasion for crow pie covered in I-told-you-so sauce.

          (and again, I cannot recall “how you predicted,” but from your response, I take it that you are in complete contradiction to my views on the topic)

          1. Oh, you sincerely do not remember? I thought you were merely being facetious in the interests of jocularity.

            I predict that the Court will like Tam to Walker v. Sons of Confederate Veterans, and thus reverse the en banc CAFC.

            Honestly, betting on the idea that the SCotUS has taken cert to affirm the CAFC seems like a very unlikely prospect. Affirmances for the CAFC are not quite as rare as hens’ teeth (there is always Bowman), but they are very few and far between.

            1. Thanks Gregg.

              You really do equate this to a government “owned” (controlled and required) item?

              Do you then push for the government to step in and pay for enforcement? Or do you insert the private ownership angle back into the equation at that point?

              As to the point of the Supreme Court taking cert for anything other than taking a fire hose to the simians in the cage reaching for the suspended bananas, my professed views on the law are grounded in first principles and what the Court should do. That the Court often (and especially often with patent law) meanders away from what they should do is quite a different story.

    1. As a taxpayer already fed up with the subsidizing of invisible sky d@ddy worshippers dedicated to trampling on my rights because of some b@loney in a 2000 year old book, I’m just as interested in Trinity Lutheran.

      I’m sure that’s also true of the True Freedom Luvvers who obsess over the First Amendment constantly here. LOL. Sure it is.

      1. “As a taxpayer already fed up with the subsidizing of invisible sky d@ddy worshippers dedicated to trampling on my rights because of some b@loney in a 2000 year old book, I’m just as interested in Trinity Lutheran.”

        Instead MM would rather the gubmit subsidize invisible ground daddy “state” worshippers dedicated to trampling on the rights of others because of some baloney written in a 1973 USSC decision.

        lol. lefties.

  7. “Post-KSR and Alice, there does appear to be substantial connections [sic] between the obviousness analysis … and the eligibility analysis of elements …” I’d characterize the conflation of 103 with 101 that has ensued post-Alice as evincing more than just a “subtantial connection”. But I don’t expect SCOTUS to pick up this case. Cleaning up the messes it has created seems to be as anathema to the court as it is to Congress and to residents of the White House (of both parties).

    1. Agreed.

      Meanwhile, if you will forgive a personal question, are you and iwasthere cousins? You two have a certain family resemblance. 😉

  8. Interesting posture of the case, as it specifically highlights the subjective, no evidence required, ipse dixit standard in the 101 Alice analysis. BTW, as I recall, there is direct legislative history that the modern patent act is specifically overturning the ‘inventive step,’ flash of genius,’ ‘inventive concept’ SCOTUS and 2nd Circuit case law, because those were too subjective in favor of an objective, evidentiary standard 101,102,103 framework. Meh, what a world.

  9. I do not think that I am going too far out on a limb here in predicting that the Court will not take certiorari on this one. I think that they are done (and want to be done) with §101 for a while (probably for the rest of the lives of the people who sat on Alice).

      1. Yeah, I do not predict denial of cert because I want that outcome. I just think that if they were not willing to take Sequenom, then I am hard pressed to imagine a §101 case that they will take. Four cases in less than a decade on one point of law is a lot, and I think that they have rather burnt themselves out on this topic.

  10. Although interesting, this petition doesn’t have much chance. A long introductory QP section with three questions presented, from a pure “patent attorney” rather than a SCOTUS attorney, make a tough hurdle to get over.

  11. “…the court here may have the opportunity to explain the differences both in doctrine and procedure.”

    I’m sure J. Thomas will tell us he knows it when he sees it.

    1. …or will simply declare that he does not have to provide a definition of (even) “he knows it when he sees it.”

      😉

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