EasyWeb => Easy 101 Invalidation

EasyWeb v. Twitter (Fed. Cir. 2017) (nonprecedential opinion)

In this case, the appellate court affirmed summary judgment that all of the asserted claims of five EasyWeb patents are ineligible under the Mayo/Alice interpretation of 35 U.S.C. 101 and therefore invalid.

Representative Claim 1 of U.S. Patent No. 7,685,247 is directed to a message-publishing-system that “accepts messages in multiple ways, such as by fax, telephone, or email” then verifies the message as being sent from an authorized sender, converts the message to a web format, and publishes the message on the Internet.  Although claim 1 is directed to a computer system, it includes a functionally claimed software component:

A message publishing system (MPS) operative to process a message from a sender in a first format, comprising:

a central processor;

at least one sender account;

at least one storage area configured to store at least a first portion of the message;

and software executing in the central processor to configure the processor so as to:

  1. identify the sender of the message as an authorized sender based on information associated with the message in comparison to data in the sender account, wherein the identification is dependent upon the first format;
  2. convert at least a second portion of the message from the first format to a second format; and
  3. publish the converted second portion of the message so as to be viewable in the second format only if the sender has been identified as an authorized sender.

Following the now standard two-step eligibility analysis, the court first found the claim directed toward an abstract idea.

Claim 1 merely recites the familiar concepts of receiving, authenticating, and publishing data. As we have explained in a number of cases, claims involving data collection, analysis, and publication are directed to an abstract idea.

Of import here for the abstract idea finding is that the claim simply uses generic computer technology rather than improving-upon the technology or designing particularized components.

Moving to step-two, the court looked – but could not find – an “inventive concept” beyond the claimed abstract idea sufficient to “transform the nature of the claim’ into a patent-eligible application.” (quoting Alice).

Although EasyWeb argues that an inventive concept arises from the ordered combination of steps in claim 1, we disagree. Claim 1 recites the most basic of steps in data collection, analysis, and publication and they are recited in the ordinary order. In sum, all the claims are directed to the abstract idea of receiving, authenticating, and publishing data, and fail to recite any inventive concepts sufficient to transform the abstract idea into a patent eligible invention.

Its decision is not quite correct, the Federal Circuit does not find abstract ideas simply because a claim involves “data collection, analysis, and publication.”  However, when (as here), the claim is directed toward these activities at a high level of abstraction, then the Alice/Mayo approach easily fits.

Analytically, the decision adds further weight to the theory that steps 1 and 2 are closely linked and are highly likely to correlate with one another.

Dennis Crouch

About Dennis Crouch

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

79 thoughts on “EasyWeb => Easy 101 Invalidation

  1. Alice gave Laurie what he wanted. You just write what they did in a couple of sentences and say that it is basic and easy. You then invalidate all the claims.

    In other words, Laurie spits on them and says your invention stinks ’cause I say so.

    We are not a country of laws anymore.

  2. So had the applicant attached the source code as an incorporated appendix to the application – and then used ‘means for’ section 112 as the way in which to state the claim – would the patent have survived 101, albeit on a narrow – source code appendix is the structure of the claim basis? Is this basically what you are saying Ned? The claims are overbroad and the specification not enabling (because no structure, i.e., source code, is disclosed)?

    1. iwasthere, today, including pseudo code for program steps might be sufficient.

      But, no, not means plus function. Simply, put into the claim the novel functionality disclosed. Simply saying format 1 and format 2 tells no one with any particularity what they are, nor identifies any novel functionality of the format to security function.

      One needs to be able to understand the invention from the claim.

      These claim are as vague as all get out.

      1. Ned,

        I cannot seem to find in the words of Congress this requirement for pseudo code….

        Could you be so kind to provide a citation of the proper authority that backs up your statement?

        Thanks,

        As to “One needs to be able to understand the invention from the claim.

        Are you not oversimplifying that a little? It is not just “one,” but instead it is one Person Having Ordinary Skill In The Art.

        And please note that it was your own beloved Supreme Court that has sought out to super-empower that very same Person Having Ordinary Skill In The Art, thereby mandating that what “passes” – both in the claim as well as in the specifications – as sufficient necessarily diminishes.

        Sure, I doubt that the Supreme Court recognizes the necessary connections between what they did and the results of what they did, just as I am sure that they no doubt would attempt to blame “scriveners” for reacting to what they have written, but, as they say, the world still turns.

  3. Costs to Appellee. I wonder if the Federal Circuit will be doing this more often in its 101 cases and Rule 36 dispositions to reduce the number of appeals.

          1. Pardon the potential re-post….

            Sadly, it is but the typical refrain of your script for the past 11 years.

            You are not really surprised, are you?

  4. So, were just ignoring this bit then?:

    wherein the identification is dependent upon the first format;
    convert at least a second portion of the message from the first format to a second format;

    I’m not familiar with the natural law wherein identification is base on a format. Are you?

    It certainly doesn’t preempt all receiving, analyzing and publishing as quite a bit of that doesn’t involve identification based on format.

    So then, why exactly isn’t : “wherein the identification is dependent upon the first format;
    convert at least a second portion of the message from the first format to a second format;”

    “significantly more” ?

      1. ” you don’t understand how “pre-emption” works.”

        I sure do. What I don’t understand is how “significantly more” works. Why wont you explain it to me.

        Why exactly isn’t : “wherein the identification is dependent upon the first format;
        convert at least a second portion of the message from the first format to a second format;”

        “significantly more” ?

        1. Why exactly isn’t : “wherein the identification is dependent upon the first format;
          convert at least a second portion of the message from the first format to a second format;”

          “Formatting” data is an abstraction.

          All data is in “a format.” “Identifying” “a format” adds absolutely nothing.

          But go ahead and defend this junk! You’re a very serious person.

          Cry a river over this junk being tanked. That’s how we know how serious you are. Cry really loud and really hard, like a big entitled baby. It’s an increasingly familiar scene among certain wealthy types of people.

          1. “All data is in “a format.”

            Perhaps, but not all identifying of a sender of a message is based on a format.

            “Identifying” “a format” adds absolutely nothing.”

            Identifying a format is not recited. Identifying a sender is. Identifying a sender based on a format does add something. I have declared it.

            How can you declare yourself junk claim czar when your reading comprehension is so poor?

              1. Anything gisted can be considered to be “an abstraction.”

                That being said – my statement stands – formatting data is not an abstraction. It is clearly not something “totally in the mind.”

                You are welcome.

                1. IDK“…

                  …while the perception is more along the lines of “IDC,”

                  …or perhaps, “IANLCTSCN

                  (I Am No L
                  onger Calling The Shots Concerning Narratives)

          2. “Format” is an abstraction. I agree that without details as what format and why/how it is functional to the security issue, it is claim at too high a level of abstraction to place any meaningful limitations on the claim.

            The claim as a whole is an abstraction.

            1. I agree that without details as what format and why/how it is functional to the security issue, it is claim at too high a level of abstraction to place any meaningful limitations on the claim.

              You are confusing breadth with abstract.

              Plainly – and unequivocally factual: formatting data is not an abstraction.

              It really does not matter how you feel about this fact, the fact remains.

      2. It’s not about “natural laws?” Then what is it about? Is receiving, analyzing and publishing a fundamental building block of something? Is it a natural phenomena? Is it a mental step? Is it math?

          1. Apparently you don’t understand it either, since you type LOL like a 12 year old rather than explaining WHY it is an abstraction.

            1. Why bother explaining something for the zillionth time to someone who will inevitably insist that, for patent purposes, new machines described in structural terms (e.g., new airplanes) are legally equivalent to a series of “if then” statements applied to data?

              What’s the point? You’ve been wrong about the most important questions since forever. Own it.

              1. What is it with you and the optional claim format of “in structural terms”…?

                You just cannot help yourself with your dissembling, can you?

                1. the optional claim format

                  Your bag of stale useless recycled scripts is looking especially thin these days.

                  LOL

                2. You confuse the topic of my post (your own staleness) and apply the ad hominem basically to yourself.

                  Nice job.

              2. Processes are eligible subject matter. Please Identify a valid patent (in your view) that claims a process, wherein an If, then (or a fairly equivalent when) is not at least implied in the recitation. Most every process has at least one decision point. Most every process is based on the type of logic that is applied by computers.

                Processes are patent eligible.

                Own THAT.

                And we all see that you are unable to explain “something more.” So, Own THAT Too.

            2. The law appears to be: (i) any process (under the sun) that does not transform an article or improve a machine or technical process and that was or could be be done in the human mind or by hand without a computer can be considered an abstract idea, (ii) any computer in existence at the time of the claimed invention and used for its intended purpose can be considered a generic computer, and (iii) any inherent functionality of said generic computer can be considered conventional computer activity. You cannot patent anything from (i) and appending anything from (ii) and/or (iii) is not enough to make (i) eligible.

                1. While I disagree with the holding in Alice because it ignored the statutory language, this is how Alice is being applied by the Federal Circuit. It’s a bloodbath.

              1. AI, there are cases where the specific software steps or method steps conducted at a specific location in a process that improve the operation and functionality of computer systems have been held eligible.

                The clear lesson is that software improvements are indeed patentable subject matter when claimed. The problem is that most of the claims being struck down are not directed at software, but instead are directed to the use of any software, method or hardware to implement a process claimed at the level of an abstraction, or a business method that has been defined by the Supreme Court in Bilski (and by the 2nd Circuit in Hotel Security) as being abstract.

                If you have a bloodbath it is because of Judge Rich and because of the folks at the PTO at the time of Alappat who began to issue any claim that recited a computer. It was these folks who drove US patent law into the swamp.

                Now you might object that you personally relied on the PTO position and the position of Rich to your detriment. But it was clear all along that the PTO and Judge Rich were defying the Supreme Court and willfully defying the Supreme Court at that. That state of affairs could not last forever, and wise people should have known that.

                What you did was invest in a stock that you should have known was cooking its books. Have you see the movie The Big Short?

                1. The bubble has definitely burst. My view was that new software on a computer that improved over old processes performed by humans or by prior art machines in a novel and non-obvious way was a patent-eligible “improvement” within the meaning of the statute. I never thought the new software created a “new machine.” I never thought that mental processes could be patented.

                2. Also – your adoration of the Supreme Court is showing – let me ask (again), which branch of the US government was provided the sole authority to write patent law?

                  You remain at that half step in my three step question, Ned. This is yet again another example of you advocating from a position of KNOWN error because you continue to choose not to take those remaining two and a half steps.

    1. You think its unconventional or a solution to a computer-related problem for the sender to be identified based on a format? Try switching the middle and upper left writings on an envelope and see how that works out for you.

      Same thing with a “From” field in an email or a phone number for a text message. However does a system distinguish between a phone number that sent a message and a phone number that is referred to in the body of a message? Oh me oh my.

      It certainly doesn’t preempt all receiving, analyzing and publishing as quite a bit of that doesn’t involve identification based on format.

      McRO explicitly said that failing to preempt all of the abstract idea isn’t enough to confer eligibility.

      convert at least a second portion of the message from the first format to a second format;”

      Why are you throwing this in here? Digitech basically says that simply reconfiguring data is an abstract act (technically it said adding two datas together is abstract, but I can’t imagine shuffling the same data around is distinct from that). And even if it wasn’t, this guy didn’t invent format conversion. Format conversion is conventional.

      1. Random –

        You seem to be saying the claimed subject matter is old. If that is the case, then it can be rejected under 102 and I would have no object to that (if it is old).

        Why are they leaning on 101? Why are you supporting it?

        1. Why are they leaning on 101? Why are you supporting it?

          Whether something is conventional is relevant to the second step of the 101 analysis.

          “Analysis” (i.e. the identification) is clearly abstract. Identifying “based on a format” is just a conventional manner of performing the abstraction, so it does not produce eligibility.

          The function of 101 is to analyze what the contribution to society is. If the test could be defeated by repeating what society already knows, the test would be meaningless. It’s not a 102/103 question, it’s a question of separating the background limitations from what the advancement is.

          Again, to use the analogy I often do – a book is a technological advancement. When the invention is the book, that is eligible. In a world that already has books, a claim to a book with a story in it means the invention is either 1) the story or 2) the act of writing the story in the book. Thus a claim to a book can be eligible but a claim to a book with additional limitations (writing in it) can be ineligible, and it’s not a 102/103 question to discuss the preexistence of the book. The person who knows the book preexists but argues that his system comprising a book and a story written in the book is eligible is piggybacking on someone else’s invention to try and meet the requirements of 101 because he has invented nothing useful or tangible.

          1. “Whether something is conventional is relevant to the second step of the 101 analysis.

            “Analysis” (i.e. the identification) is clearly abstract. Identifying “based on a format” is just a conventional manner of performing the abstraction, so it does not produce eligibility.”

            You just contradicted yourself.

            Why is Identifying abstract when “mixing” in a drug manufacturing claims and “screw” in a mechanical claim is not?

            And why is identifying a sender based on message format conventional?

            1. I did not – analysis is abstract. The “based on a format” modifier is a conventional means of performing the abstraction. It is akin to say that uplift is a natural phenomena and a wing is a conventional way of achieving it.

              Are you seriously asking how “identifying” (i.e. coming to a mental conclusion that what is in front of you is or has the quality of X) is different from the physical acts of mixing or screwing? It is in your mind. It is a conclusion, not an act. One cannot perform the act of identifying, one can perform a series of acts which in a given context would allow one to conclude the identity of something. Conversely, screwing and mixing are most definitely acts.

              Identifying a sender based on message format is conventional because one can think of a multitude of examples that have been around for (in this case) centuries. A person signs their name at the bottom of a letter, and in the upper left of an envelope. Do you know how many millions of letters the US postal service has delivered which allow someone to identify the sender based on the format before computers even existed, let alone the internet, let alone this application? Do you think the US postal service is unique among message carriers? Do you think that the same thing isn’t repeated in dozens of other contexts? Again, one posited embodiment here is text messages. How is it that your phone can differentiate the number that sent the text to you from a number that you write in the body of the text message?

              1. It is in your mind. It is a conclusion, not an act. One cannot perform the act of identifying,

                Except of course when it is NOT in your mind and it IS performed.

                Anthropomorphication.

                Machines really do NOT think as the legal meaning of that term means.

                1. Except of course when it is NOT in your mind and it IS performed.

                  …. by a machine that was created to follow instructions, where the machine is following the instructions for “identifying” that you created with your mind.

                  Now keep digging, “anon.” It’s always fun to watch you get filthy.

                2. by a machine

                  Bingo. You can stop right there.
                  Anthropomorphication – machines do not think.

                  Also, try arguing the proper patent doctrine of inherency.

                  .

                  that you created with your mind.

                  LOL – “created WITH” and “SOLELY in the mind” are two very different things.

                  ALL engineering is created WITH.

                  ALL

                  Your attempted argument simply proves too much.
                  Your view necessarily negates all patents, except for, perhaps, the purely accidental discoveries that involve NO mental effort.

                  So (once again) move the goal post back – the item being discussed is not where you want the discussion to take place. You move the item back into some type of “totally in the mind” and want to rest your Zombie “mental steps” argument there, but doing so you are no longer talking about the actual item under discussion.

                  Love how you tell me to keep digging (again) while YOU clutch the shovel (again).

                  As others have noted – here I am, holding your nose and kicking your @$$ once again.

        1. 102/103 issues are inherent to and necessarily addressed when evaluating most contemporary claims that present 101 issues.

          And we all know why this is the case.

          Dennis knows it. Jason knows it. Even that ethics guy knows it.

          Everybody knows it. Only some of us have the maturity to be honest about it.

          [shrugs]

          1. Contemporary 101?

            Is that in comparison to the 101 that Congress actually wrote?

            Just because you appear to recognize that the Court has rewritten 101 and conflated OTHER sections of law (specifically differentiated by Congress in the Act of 1952) does not in any way lessen the fact that the Court is a broken scoreboard.

            Quite in fact, the use by you of the word “contemporary” illustrates that the Court has over stepped their bounds and have violated the separation of powers doctrine with their attempt to reach their desired Ends and wield policy setting writing to get a meaning that is different than what Congress wrote.

            That’s a bug – not a feature.

      2. The claim does not recite how to technically improve format conversion. No doubt this was considered a conventional appendage at step two.

        During oral arguments, the panel typically walks through the representative element by element, per Mayo, to call out what the inventor did not invent. They get it by admission and/or from the specification. (You’re not claiming you invented X, are you? The spec states that this was known, right?)

        Anything not invented is usually considered to be generic, routine and/or conventional. The inventor is given credit for a “good idea” but nevertheless an abstract one. Appending anything conventional to the good abstract idea is not enough and all claims fall. This is just how things are done now, and what is allowed/required under the current state of the law.

  5. DC: Of import here for the abstract idea finding is that the claim simply uses generic computer technology rather than … designing particularized components.

    Note that this is true of every “processor with software configured to do this” style claim, which is 99.99% of all “do it on a computer claims.”

    improving-upon the technology

    Software doesn’t “improve upon the technology” of a programmable computer. The programmable computer is the technology. It was designed to be programmed, directly or indirectly, by a human for the purpose of processing data using logic.

    Its decision is not quite correct, the Federal Circuit does not find abstract ideas simply because a claim involves “data collection, analysis, and publication.”

    Indeed, the statement is sloppy. But if the only difference between the prior art and the claim is the type of data collected (i.e., the content), and/or the logic used to analyze the data, and/or the manner in which the logic-processed data is stored or communicated (e.g., layout), then you’re almost surely looking at a claim directed to an abstract idea which will not (or should not) be rescuable by any amount of scrivening.

    Analytically, the decision adds further weight to the theory that steps 1 and 2 are closely linked and are highly likely to correlate with one another.

    Of course this has always been the case. If you’ve got non-obvious structure in your claim or a non-obvious physical transformation then the attempt to identify the abstraction will inevitably look like desperate flailing except in the Sequenom-style case where the recited “non-obvious” physicality is naturally occuring and the claim recites in addition only generalized prior art detection methods.

    1. The programmable computer is the technology. It was designed to be programmed, directly or indirectly, by a human for the purpose of processing data using logic.

      Your House fallacy is showing.

    2. –If the only difference between the prior art and the claim is the type of gears used (i.e., the components), and/or the arrangement used to assemble the gears, and/or the output shaft connects to the final drive or transfers power (e.g., output), then you’re almost surely looking at a claim directed to an abstract idea which will not (or should not) be rescuable by any amount of scrivening.–

      Nonsense

        1. Nice total retreat to ad hominem with zero substance for a reply.

          Criminy, you cannot even manage to have a dialogue with Les…

  6. I wonder if this claim could have been saved by being specific about the format of the message and how authenticating using a specific format was more reliable, efficient, or whatever than the prior art method. However none of was in the claim, nor was there anything in the claim about the second format. Both formats are generically described and seem to cover any formats. The breath is so broad as to be addressed to an abstract idea as opposed to any specific invention.

    One can see instantly that the aggressiveness of the patent attorney in protecting his client ended up in providing him no protection at all.

    1. Anon, this case should be a lesson to you in particular and that abstracting an invention to a the level of a principle is now likely to lead your clients to disaster. What the law entitles one to do is to claim the specific invention that you describe, and allows you to rely on the doctrine of equivalents for insubstantial substitutions, etc.

      1. Levels of abstraction: there are more than two rungs on a ladder.

        You want me to learn a lesson that I already know and one that does not impact ANY of my positions on these boards.

        1. anon and Ned

          Just thinking out loud here. I’d appreciate your feedback.

          Drafting Psychologically

          Claiming in a framework of cascading broad independent claim through successively narrower dependent claims is legally proper and would “work” for a rational infallible system of review.. but the more I think about it the more I believe that the claims (as well as the spec) need to be, not only technically and legally sound, but purposefully written and arranged “psychologically”. Thus things like “first impressions”, “gisting”, and technical aspect “implying”, are now important i.e. subjectivity MUST be injected at a higher level because of the level of subjectivity of review.

          Technically, independent claim series order does not matter… but psychologically, an examiner or court will likely read claims in order, and first impressions matter, esp, now when the 101 test essentially tells the adjudicator to first, get an impression.

          Thus, claim 1 should be system claim which gives as its first impression something technical, nothing close to a “principle” (as the “concept” in the reader’s mind may hold it…), and the description should introduce a heavily system based embodiment first.

          Technically, dependent claims are supposed to be read as on an equal status to an independent claim… i.e. it should be on equal footing with independent claims of the same scope. Psychologically, since a dependent claim is written to further define, narrow, particularize the concepts of a broad claim they are seen as merely modifying the general concept rather than introducing a separate one. Michelangelo’s sculpture David in its complete glory, described as a final whole versus described in a cascading narrowing set of concepts starting from a generic block of stone, are psychologically different even though they are not objectively different.

          Thus, include extra independent claims custom written with narrower scope to get at a whole which does not invoke the psychological specter of the “principle”. Put narrower independent claims earlier in the listing of claims.

          The actual invention, the broadest distillation of that which is useful, new, unobvious, etc. and which was created by the inventor, that which you actually believe the inventor deserves a monopoly in and for, should be presented absolutely last in the spec. It should be an integration or induction of the more narrower embodiments, but clearly grounded in them (and advocated as well as possible given the absence of prior art which will later be cited). This should be “set up” by a background which paints the prior art and general abstraction together… i.e. identifying the abstract principle as the general known problem in background sets you up to describe the specific non-abstract technical combination which addresses it. You then describe the specific non-abstract technical combination in abstract conceptual terms… but in a clear manner to enable “psychologically” that you are not describing an abstraction but abstracting (defining) a class of concretes.

          The claim which “most” “looks like” an “abstraction” (according to the psychology and understanding of the unknown adjudicator) , and which may be expressed as a method claim, should be the one you know is technically valid but will likely get the worst treatment… and you should include it in the claim listing at the very last… and maybe should not even have any dependent claims.

          Again, appreciate any comments you may have.

          1. My first impression (and I will give your comment a deeper read) is that all that you are advocating is the very thing that the Supreme Court in their anti-patent musings lay as a criticism:

            scrivening

            Never mind that
            a) scrivening is what we are paid to do, and
            b) the Court themselves constantly engage in scrivening – and do a FAR worse job at it.

            1. Never mind that
              a) scrivening is what we are paid to do

              Scrivening is what *some* patent attorneys are paid to do. I could name them so we could point and laugh but they already know who they are. Worst. Attorneys. Ever.

              1. You clearly do not even understand your professed job.

                It’s no wonder – given the very apparent level of cognitive dissonance that you have.

            1. When you assert, pick the narrowest independent or dependent claim that is infringed as the representative claim. They only look at one for the whole family.

          2. My second impression is that what you are doing is a sort of post facto reconstruction “psychologically.”

            One of the difficulties in this job of ours of scrvivening is that what we pen today must stand the onslaught of 20+ years of ebb and flow from the political (and politicized) world.

            Being nuanced about claims is one thing. Being nuanced about the specification is quite another.

            Patent profanity is very real. And that too, changes over time. Any “really good” ideas today may bring about a “what were they thinking” tomorrow.

            That being said, there is no “one right way” to write an application (psychologically or otherwise).

            In part, this is because the legal document (and that is at heart what a patent specification is), may serve a spectrum of client needs. Needs that while perhaps not mutually exclusive, may dictate choices during the lifetime of the legal instrument.

    2. Ned to my mind you have never expressed a more valuable thought than where you write above that too much aggression in prep and pros results in no enforceable rights at all. Among those instructing me in recent years from the USA are some who urge more “aggression” on my part. It is not a coincidence that their drafting style can leave prosecutors at the EPO with no effective fallback positions that correspond to the contribution which the invention has made within the ambit of the useful arts. Result: a totally unnecessary total loss to the client of an otherwise obtainable useful scope of protection in Europe.

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