Step one: Find the Gist (Do not Construe)

In Blue Spike v. Google, the patentee has asked the Supreme Court to further elucidate its test for eligibility under Mayo, Alice, and Myriad with the following three questions presented.

  1. May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”?
  2. May a district court properly assess patentability under § 101 prior to authoritatively construing the patent’s claims?
  3. May a district court adjudicating a motion for judgment on the pleadings on § 101 patentability grounds properly consider questions of patent enablement under 35 U.S.C. § 112?

We have an interesting case here where the district court expressly stated its approach to Mayo/Alice Step 1 is to distill the claimed invention to its “gist” and ask whether that gist is an abstract idea.

In its lawsuit against Google, Blue Spike asserted five related patents: U.S. Patent Nos. 7,346,472 (the “’472 Patent”), 7,660, 700 (the “’700 Patent”), 7,949,494 (the “’494 Patent”), 8,214,175 (the “’175 Patent”), and 8,712,728 (the “’728 Patent”).  Looking at asserted claim 1 of the ‘472 patent as an example: the claim requires comparing a query signal with a reference signal.  The process involves creating an “abstract” (essentially a hash or digital fingerprint) of each signal that uses “perceptual qualities” of each signal, and then comparing those abstracts.

The district court dismissed the case on the pleadings – holding that the asserted claims were all invalid as a matter of law for effectively encompassing an abstract idea.  On appeal, the Federal Circuit affirmed without opinion.

In its decision, the district court expressly “distill[ed] the gist of the claim[s]” and found that the gist of the claims is to “model, on a computer, ‘the highly effective ability of humans to identify and recognize a signal’ [using a method that] mirrors the manner in which the human mind undertakes the same task.” (quoting the patent specification).   Essentially, the court found, all of the claims are directed to the abstract idea – “the idea of comparing one thing to another.”  Moving on from there, the court recognized the computer implementation, but found no inventive concept in that implementation.  The patentee argues here that the court erred in its gist analysis, and compounded that error by failing to construe the claims prior to the gisting process:

[M]any trial courts have adopted the practice of reducing patent claims to a highly general “gist,” then assessing that gist to determine whether it is so abstract as to be unpatentable. Because distillation to a “gist” inherently abstracts from a patent’s specific claims, this approach builds in a bias towards invalidity. . . . Deciding eligibility before claim construction exacerbates the tendency noted above to ignore a patent’s specific claims and over-generalize its “gist.”

The petition also spends substantial time discussing the Federal Circuit’s new status quo of issuing a substantial number of no-opinion judgments under Rule 36:

[T]he Federal Circuit appears unwilling to shoulder the responsibility for clarifying the Alice/Mayo analysis. That court’s use of summary Rule 36 affirmances seems to be both commonplace and increasing. This is particularly true in cases concerning patentable subject matter under § 101. One recent report identified a dozen Federal Circuit appeals raising this issue decided by Rule 36 affirmances in 2016 alone. . . . [P]recedential opinions in § 101 cases are important not just for trial courts reviewing issued patents, but also for the PTO’s examiners who must determine whether to issue patents in the first place. When the Federal Circuit fails to write a written opinion, it fails to provide the USPTO with necessary examples to use in granting patent applications.

In this particular case, the R.36 judgment is not a law violation (since the case arose from the district court rather than the PTO) but should also not be an excuse for failing to properly resolve the case – certainly the issues raised are not resolved and there is need for explanatory precedent.

[Blue Spike Petition (April 6 2017)]

 

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.

149 thoughts on “Step one: Find the Gist (Do not Construe)

  1. Let’s put this front and center and see if Ned will keep running away.

    Tell me Ned (for the first time, although asked of you numerous times), what is the difference between statutory law and common law.

    Tell me Ned, (for the first time, although asked of you numerous times), what does the Constitution say as to which branch of the government has the authority to write patent law (said patent law thus being necessarily statutory law).

    And this is something that you are admitting to “appreciate what the Supreme Court did“…?

    Tell me Ned, (for the first time, although asked of you numerous times), what does your actual state attorney oath say as to the law that you are sworn to uphold? Hint: that oath does not place one branch above the other two, does not allow that one branch to run roughshod over the Constitution itself.

    Appreciating what amounts to treason (and how else would you classify the subjugation of the proper designations of authority of the Constitution), does not speak well of your view of our laws, our system of laws, and the Rule of Law.

    1. The common law is the law of the people. Statutory law is also law made by the people but through their representatives with the consent of the King or president.

      Statutory law is deemed to incorporate common law and operate according to common law principles unless the lawmaker is clear when it is not. Statutory law tends to create new laws as opposed to overruling common law.

      The courts follow both common law and statutory law and try to reconcile them rather than find them in conflict. At times, when statutory law is in conflict with common law, courts find the statutory law unconstitutional as violating fundamental principles of liberty or privacy.

      I recall that Lord Coke had struggles himself about the primacy of common law or statutory law. But as we have seen over the centuries, they coexist peacefully except when the legislature does something truly and fundamentally and radically different from the common law, such as strip patent owners of fundamental rights.

      1. Now then take the difference as to the laws and place that difference in context to patent law and the U.S. Constitution as to which branch has been allocated authority to write that law.

        I notice that you reflect on a limitation of the legislative branch, but more importantly to the point here fail to reflect on the limitation of the judicial branch.

        As you can only be too well aware that such is the focal point, your choice of “not seeing” that focal point and instead wanting to move the focal point to a different place can only be termed obfuscatory.

        Why is it then that you cannot bring yourself to reflect on the validity of what I say?

        1. The judges are present to assure orderly procedure and that the rule of law be affirmed. But the trial of facts had to be to a jury – this is a fundamental right that all Germanic peoples had from ancient times. It was the point of the Magna Carta to preserve these rights.

          Now when a judges deciding on the law of a particular case, the common law applies unless changed by statute. But the presumption is that the change has to be clear otherwise it is to be assumed that the legislation was enacted with the view of the common law in place. Thus when patents provide exclusive rights, the common law remedy was damages. Thus legislation did not have to enact a remedy for violations of exclusive rights. Furthermore, when the validity of a property right is challenged since that the owner may lose it, the common law provided for a trial by jury with respect to disputed facts.

          Stripping the owners of property of their fundamental rights to a trial by jury that the people have had since ancient times is plainly unconstitutional in my view.

      2. …and Ned, your obfuscation of why statutory law would be deemed unconstitutional is simply false. You impliedly hold that all common law trumps statutory law, unless the statutory law is explicit as to the particular common law being displaced.

        That is just not how it works with the patent law, which from its constitutional start is what this country decided upon at its onset.

      3. Ned – but what about international law? I had understood that the US had a “monist” constitution, in that legal provisions of international agreements that have been properly ratified by the US government are directly binding on national courts.

        Is that correct? If so, then there is an elephant in the room here that is called TRIPS. It is just a shame that the US courts, including the Supreme Court, have so far been doing their level best to ignore that rather important elephant.

        1. International treaties that the US enters into are NOT typically self-enacting into US law (witness the great span of years for some elements of the Berne convention).

        2. Confused, they are not self enacting unless the treaty themselves provides otherwise, in which case, Congress by ratifying also enacts.

          1. Ned, thanks for clarifying. However, that does not really answer my question: Congress approved GATT (which includes TRIPS) on 1 December 1994. This surely means that the US courts are bound by the provisions of TRIPS, does it not?

            1. Confused,

              I believe that GATT/TRIPS was NOT approved in total, and that what was approved by Congress in its law making (turning the treaty into a US functional law) was limited to what Congress included in its own bill.

              And yes, to the extent that provisions were enacted by Congress, the courts would be so bound. But to be a bit “cheeky,” when has that type of binding stopped the Court (and then by natural flowdown, the courts) from merely trying to achieve their own desired Ends?

              1. Well, I cannot find the bill ratifying GATT, so it is hard to comment. However, it is possible to make one very pertinent observation: to my knowledge, the US courts have NEVER taken the provisions of TRIPS into account, nor even analysed the extent to which those provisions may (or may not) have an effect under US law… which is a pretty astonishing omission, you have to admit.

                Does this mean that there really are no guarantees whatsoever that the US is honouring its obligations under TRIPS? If so, then that would be rather ironic. It could also lead to some interesting cases at the WTO’s dispute resolution body.

                Perhaps it is time for someone to tell SCOTUS that their decisions really ought to take account of the broader (international) context before deciding whether or not it is safe to embark on the kind of “judicial activism” that we have seen from them on section 101?

                1. Confused,

                  I am not sure that there is a “single bill ratifying GATT.”

                  Outside of my direct knowledge, and not having the bandwidth to confirm, I will share only that I think that you will not have such a bill. Instead what you may have are one or more bills enacting provisions that were in the GATT agreement proper.

                  Sometimes Congress will enact by simple “ratification,” but I do not think that such was the case with any of the international IP treaties.

      4. And might I note, anon, I neatly tied your emphasis that patents are property in the constitutional argument we advance the Supreme Court today about whether we have a right to a trial by jury in patent revocation actions. The reason we have a right to a trial by jury in the first place is because of the ancient traditions of the German people carried in England by the Anglo-Saxons that were affirmed in the Magna Carta. Those traditions said that one’s life, liberty or property could not be deprived without due process of law and that meant that disputed facts had to be tried to a jury.

        1. More on the origin of the jury trial. It apparently was in use from the earliest days of the Saxon’s in England. But it was also in use by the Normans from their days as vikings.

          “I can not help feeling persuaded that the rise of the jury system may be traced as a gradual and natural sequence from the modes of trial in use amongst the Anglo-Saxons and Anglo-Normans, — that is, both before and after the Conquest….”

          WILLIAM FORSYTH, “HISTORY OF TRIAL BY JURY”
          link to constitution.org

    2. Remember, folks: this is the same “anon” who advocated using mailroom staff to screen registered mail so attorneys could avoid learning about relevant prior art.

      1. Yay – taking that old snippet out of context yet again, eh Malcolm?

        You have to reach that deep into your bag of dissemblings?

        Maybe try to say something on point here, instead of dust kicking goal post moving ad hominem…

        It’s been 11 years – perhaps you should try something honest for a change.

        1. What, pray tell, is the “correct context”, in your non-credible opinion? Remember, before you dissemble all over your shorts: I’ve got the thread archived.

            1. The “context” here is you sitting astride your white pony and blathering about “attorney oaths” that other people are “sworn to uphold” while you instruct the mail room clerks to screen registered letters so you can remain blissfully ignorant of the contents of those letters.

              Fun times. Shall I pull the archives for everyone, Mr. Ethics?

              1. The context is you trying to kick up dust while the point about which I stress the duty of an attorney (you know, WHY that point is being discussed) is attempted to be covered with your dust.

                And sure, provide your link. That way we all can see that you are not putting that prior discussion in context as that prior discussion spanned more than one thread and you are likely only pointing to one comment out of context of the several-thread discussion.

                By all means, point out (again) your own dissembling.

                11 years of the same old same old.

    3. “Appreciating what amounts to treason (and how else would you classify the subjugation of the proper designations of authority of the Constitution)”

      I’m 100% sure that such is not “treason” lol. In this instance it might push the upper boundary of “some everyday bs going on in the court system that basically nobody cares about”.

      1. Reply stuck in the mod’s 6 – “treason” is a term of art, and has definite legal elements to which I make reference to.

        Not to say, given its dire penalty, that your questioning is out of place – it is not out of place.

    4. I’m interested in what “common law” connotes. Why? Because the world knows two systems of law, designated, respectively, English “common law” and Roman civil law. Jurisdictions like Canada and Louisiana understand this.

      Of course, within an English law jurisdiction, the difference between statute law and judge-made law is fundamental and inherent. Therefore, asking a qualified US attorney at law (and not rhetorically) whether he understands “the difference” strikes me as less than polite.

      1. MaxDrei,

        Your concern for “politeness” is noted, as well as your lack of concern for the abundant postings that generates the question asked.

        Please kindly stuff your PC with someone who may care and place the PC above the content.

        Thank you.

      2. I have been taking a day-and-a-half holiday from keeping up with postings on this blog, or posting myself.

        But, by coincidence, particularly over the past few hours, I was thinking about the relationship between common law and statute law, both in the UK now, and in the 18th century, and how this would apply in the different constitutional situation in the US.

        (And I need to tread with care: I am conscious of venturing onto hot ground here.)

        (I also acknowledge here that, in a discussion with Anon some weeks ago, I did not take proper account of the implications of the Exceptions Clause in the US Constitution. I do not pretend to be an expert.)

        It seems to me, and I also seem to recall US Supreme Court cases saying the same, that any common law in the US not based on statute must be part of state law. The argument is that, following Independence, the individual states would be sovereign, and the inheritance of common law and equity would therefore combine with the acts of the state legislature to constitute state law. The jurisdiction of the Federal government would derive from the ratification of the Constitution by the states. It would seem to follow from this that rights under patent law and copyright law derive from statute.

        Maybe if, say, a citizen of Massachusetts were oppressed by a monopoly granted on the importation of tea, then, assuming the principles of Sir Edward Coke are valid in those circumstances, that citizen could possibly seek to have that monopoly declared illegal and void under Massachusetts state law as being contrary to the ancient common law. (I hasten to add that I know nothing about Massachusetts state law.)

        But, it would seem that rights under Federal patent law, as under Federal copyright law, must derive from Federal statutes.

        One case I came across in the old American texts was Tyler v. Tuel (SCOTUS, 1810). A deed was executed which purported to transfer title to a patent, except in four counties of Vermont, and SCOTUS decreed that, because the deed did not transfer all rights under the patent, title to the patent did not transfer, and therefore the intended assignees did not gain title, and therefore had no standing to sue for infringement. This case of course was not taken under the current law. But cases like this surely show patent rights being considered at the time to be property rights.

        If patentee sued an alleged infringer, the defendant could seek to prove invalidity. Thus proceedings in Federal courts regarding damages for past infringement or invalidity were actions in common law. On the other hand, injunctions and accounting of profits were granted by courts sitting in equity.

        Now move back to England. If letters patent had received the Great Seal, the king’s officials did not have the power to vary the grant. Indeed, in 1802, the Lord Chancellor, Lord Eldon, said that he did not have the power to change the terms of the patent once the patent received the Great Seal. But patents were long legal documents which incorporated provisions under which, for example, they could be voided by the Privy Council. Thus if the Privy Council were convinced that the patent was invalid, they could void it without the necessity of a jury trial, because their power to do so was included in the terms of the patent grant. (The fact that they ceased exercising this power in the mid 18th century would not have taken away their power of voiding patents that included the provisions allowing for this.)

        And the terms of letters patent could be amended by act of Parliament. There were lots and lots of acts of Parliament at the end of the 18th century impinging on property rights and common-law rights: acts for the building of canals and roads; enclosure acts etc.
        (Reflect on the Takings Clause in the Fifth Amendment of the US Constitution.) Note that in the UK the sovereign was the King-in-Parliament (or Queen-in-Parliament). Accordingly Parliament was sovereign legislative authority, and thus,in particular, Parliament (not the King acting on his own authority without the consent of Parliament) had the authority to vary the terms of patent grants. Patentees accordingly applied to Parliament to get the terms of their patents varied or extended.

        This would transfer, in the US context, to a legal setup in which Congress had the power to pass acts to vary patent grants. One such act would be the Act for the Relief of Oliver Evans (1808). There were later instances of acts of Congress extending patent grants in the later 18th century, and some of the early patent exhaustion cases arose on account of such extensions of patent grants.

        Questions?

        1. For patents granted after the AIA act, given that the rights of patentees derive from that act, are the provisions for post grant review also incoporated within the patent grant? (An analogous situation might be a contract for employment for a given number of years that would provide for a review after, say, one year to ensure satisfactory performance before confirmation of employment for the full term of the contract.)

        2. Can an act like the AIA act vary the terms of all patent grants dating from before the passage of the act?

        3. If an executive agency (such as the USPTO) conducts an enquiry into the validity of a patent, and determine that the patent is invalid, what, if any, are the implications under the US Constitution is the patent is annulled? Does a patent deemed to be invalid but nevertheless not actually annulled have any value?

        (Of course, usual disclaimer: I am not a lawyer, and certainly not a constitutional lawyer.)

        1. Regarding the continuation of existing laws in the states of the USA, see for example the Massachusetts Constitution, Chapter VI, Article VI:

          link to malegislature.gov

          “All the laws which have heretofore been adopted, used and approved in the Province, Colony or State of Massachusetts Bay, and usually practiced on in the courts of law, shall still remain and be in full force, until altered or repealed by the legislature; such parts only excepted as are repugnant to the rights and liberties contained in this constitution.”

          Thus any rights under common common law prior to Independence would have carried over into state law unless and until amended or deemed to be repugnant to the constitution.

          1. There is an important concept for you to add to your list concerning US law: federal preemption of state law.

            You may note (as I have indicated to Ned), that patent law is expressly such an item, being specifically articulated so in the Constitution.

        2. Distant, from Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 18 (1829):

          It is obvious to the careful inquirer, that many of the provisions of our patent act are derived from the principles and practice which have prevailed in the construction of that of England. It is doubtless true, as has been suggested at the bar, that where English statutes, such for instance, as the statute of frauds, and the statute of limitations; have been adopted into our own legislation; the known and settled construction of those statutes by courts of law, has been considered as silently incorporated into the acts, or has been received with all the weight of authority. Strictly speaking, that is not the case in respect to the English statute of monopolies; which contains an exception on which the grants of patents for inventions have issued in that country. The language of that clause of the statute is not, as we shall presently see, identical with ours; but the construction of it adopted by the English courts, and the principles and practice which have long regulated the grants of their patents, as they must have been known and are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it.

          link to scholar.google.com

          1. See also this from Fessenden (1810) (linked to elsewhere on this page). The following footnote is to be found on pages 41 and 42:

            “To those who may object that the privileges of patentees in the United States, being derived solely from our own statutes, the laws and decisions of foreign nations on this subject, have no validity in the United States, I would reply in the sentiments, and nearly the words of Sir William Jones, expressed in his excellent treatise on the Law of Bailments. In questions of law, no cause can be assigned why we should not shorten our labors by resorting, occasionally, to the wisdom of foreign Jurists, many of whom were the most sagacious of men; what is good sense in one age or country, must, all circumstances remaining, be good sense in another; and pure unsophisticated reason is the same in Italy, England and the United States: in the mind of a Papinian, a Blackstone, A Marshall, or a Washington.”

            Moving on the subject matter, on pages 58 and 59 of Fessenden (1810):

            “The words ‘any manner of new manufactures’ in the statute of Jac 1. as understood and explained in British Courts of Justice, (which will appear fully as we proceed in this work,) are co-extensive in signification with the words ‘new or useful art, machine, manufacture, or composition of matter,’ made use of in our statute. British authorities, therefore, so far as circumstances are similar, and the reason of the cases remains the same, will be pertinent for determining what kinds of new invented things may be the legal subjects of patent monopolies.”

            1. That sure was not a legislator (or drafter of OUR Constitution) that said that, DP.

              Thus, that carries no actual legal weight. Further, it only invites the mis-apprehension of what is “good sense” and quite in fact is disrespectful of the notion that sovereigns may very well choose differently on any number of items for any number of reasons.

              The invitation to the “one world order” law applies everywhere is thus declined.

        3. You will note that Story constantly referred to the common law in his patent cases riding circuit, include the general principle that a patent that claimed more than it had described was void. This goes back to such cases as Darcy v. Allen, I believe.

        4. Further, the UK patents issued with a consent for the Privy Council jurisdiction to revoke the patent for inconvenience, not for invalidity. The Privy Council recognized in 1753 that their attempt to decided validity, based as it was on evidence and which required a jury trial, conflicted as a constitutional matter with the jurisdiction of the common law courts to decide validity. That is why they stopped deciding validity entirely. They never really had the authority.

          1. Conflicted with what Ned?

            You use the word “Constitutional,” but clearly – given the date of 1753 – you are not talking about the US Constitution.

          2. Commenting some of the points made in this thread, on the basis of my own understanding.

            From the boilerplate text used in letters patent for inventions in England into the 19th century:

            “Provided always, and these our letters patent are and shall be upon this condition, that if at any time during the said term hereby granted, it shall be made appear to us, our heirs or successors, or any six or more of our or their privy council, that this our grant is contrary to law, or prejudicial, or inconvenient to our subjects in general, or that the said invention is not a new invention as to the public use and exercise thereof in that said part of our united kingdom […], or not invented and found out by the said A. B. as aforesaid, then upon signification or declaration thereof to be made by us, our heirs or successors, under our of their signet or privy seal, or by the lords and others of our or their privy council, or any six or more of them under their hands, these our letters patent shall forthwith cease, determine and be utterly void to all intents and purposes, any thing herein before contained to the contrary thereof, in any wise notwithstanding.”

            These words seem to provide for the patent to be annulled by the Privy Council if it is invalid. Of course the Privy Council might well decide that questions of invalidity should be tried in courts of law, enabling disputes over factual matters to be tried to a jury, but the words of the patent grant surely show that the Privy Council retained jurisdiction to annul the patent, even though they did not exercise it after 1753.

            ===

            I would also point out that the wording of the Statute of Monopolies did not guarantee that the validity of a patent of invention could only be tried at common law. Article 2 of that statute declared that monopolies in restraint of trade are illegal and that they could only be tried in courts of common law. (The legislative intent was surely to ensure that the ruling King or Queen could not grant an illegal monopoly and preserve it from invalidation through the common law courts by moving it to a more pliable court.) Article 6 however declared that patents of invention satisfying the requirements of that article were outside the scope of the general declaration of Article 2. But of course a corollary of this is that the provision in Article 2 requiring trial only in common law courts was also inapplicable to patents of invention.

            Next I would note that, where a grant of letters patent reserves the right to revoke the grant, or specifies conditions under which the grant is rendered “utterly void to all intents and purposes” it would be surprising if such provisos were ineffectual. In particular, the letters patent for the appointment of governors general of Canada, Australia and New Zealand reserve the right of the crown to revoke the grant, and web searches show that such letters patent have been revoked from time to time to allow for new grants.

            In any case such questions regarding the limitations of the royal prerogative are surely questions for a specialist in constitutional law in the relevant constitutional monarchies. It is difficult to see how they would be relevant to the very different constitutional framework of the USA.

            In England, and subsequently the UK, from 1689 onwards, parliamentary sovereignty has applied. Accordingly no court can strike down an act of Parliament that has received the Royal assent, and no parliament can legislate to bind a future parliament. (The last time a bill was refused assent in the UK was in 1708.) Thus in particular, nothing in the medieval common law or the Statute of Monopolies would prevent an 18th century parliament legislating in any manner it wished in order to regulate patents.

            ===

            I read recently, in an authoritative source that in medieval England, the Courts of Common Pleas, King’s Bench and Exchequer developed the law, from the time of Henry II, by strict adherence to stare decisis. But they developed common procedures and precedents to ensure uniformity, and it was for this reason that the body of law they developed was called “Common Law”. Parliaments from the time of Edward I passed statutes modifying and codifying the common law, but the origins of common law predate statute law.

            My understanding is that, in a common law system, where courts adhere fairly strictly to stare decisis, as SCOTUS aims to do, the binding effects of their interpretation of statutes creates new “common-law” doctrines such as the doctrine of patent exhaustion. The mechanism whereby such law is created is the same as that which created the original common law of medieval England.

            1. Distant, well appreciated that.

              Now, could parliament simply revoke and issued patent for invention for any reason whatsoever, and with no compensation to the patent owner?

              Does the UK government pay patent owners for use of their inventions?

              1. I believe a Parliament could pass an act to the effect that, for example, all patent rights would be null and void three years from the date of enactment, with no compensation to patent holders. Maybe it would breach a gazillion international treaties. And maybe the UK Supreme Court might consider whether the act is compatible with the European Convention on Human Rights and, if not, issue a declaration of incompatibility. But my understanding is that Parliament is sovereign…

                Maybe you took it to be axiomatic that the essence of a property right is the right to exclude? With regard to real property in England and Wales, consider the introduction of the right to roam, aka the Countryside and Rights of Way Act 2000. Some old webpages and newspaper articles:

                link to naturenet.net

                Quoting from this webpage:

                “There are no provisions for compensation to landowners whose land becomes the subject to the right of access, but under certain circumstances, compensation my be payable for other reasons. If it is necessary to create new public rights of way to reach areas of open access, or if damage is sustained to any person in the exercise of powers conferred by the Act, there may be an entitlement to some compensation.”

                See also

                link to theguardian.com

                Moving on to 2008, with regard to a coastal footpath:

                link to telegraph.co.uk

                1. Distant, you make a very good point that Parliament is now sovereign as opposed to the King. The Magna Carta was signed by the king in order to prevent deprivations of life and liberty and property without due process, and that included a right to a trial in the common law court and to a jury.

                  Over the years, various sovereigns had to reaffirm commitment to the essentials of the Magna Carta. One Coke was developing his idea of the rule of law, I believe he was relying heavily on the ideas of the Magna Carta and that the courts were superior to the sovereign at least in terms of providing a buffer between acts of the sovereign in the deprivation of life liberty or property.

                  Now you substitute in for the king, Parliament, and what you have: Unchecked power, if the sovereign can deprive individuals of life, liberty and property without due process.

                  While the parliament can provide for law, I would say that Parliament cannot violate the Constitution of England which includes the Magna Carta. Thus I would suggest that Englishmen cannot be deprived of life, liberty or property without due process even by Parliament.

                  Do you agree with this?

            2. Ned,

              Can you tie your question about the UK back into the US law discussion?

              I am not sure that any answer to your question will have any bearing for our law.

              1. There is the small matter of Constitutional rights under the Fifth Amendment and the Seventh Amendment of the US Constitution. To understand their context, and in particular to understand the implications of the Seventh Amendment for patent law under the “historical test”, it might be relevant to consider matters related to UK law. And if a USPTO brief makes assertions regarding English law relevant to Seventh Amendment rights that are demonstrably false…

                1. Thanks DP,

                  However, as your discussion amply illustrates, “getting stuck in the past” without regard to sovereign differences is as equally as “demonstrably false” as anything else coming from the discussion.

                  (sorry for being harsh – just no way – or reason – to sugar coat that)

                  That being said, comparative legal analysis may help one become a better critical thinker, but truthfully, if one is “bent” on obtaining a certain End view of things, then NO amount of comparative legal analysis is going to help. Instead, what you might see is a LOT MORE WEEDS from someone who is only too willing to advocate a position regardless of what history may say otherwise.

                2. Please pardon the potential double post….

                  Thanks DP,

                  However, as your discussion amply illustrates, “getting stuck in the past” without regard to sovereign differences is as equally as “demonstrably false” as anything else coming from the discussion.

                  (sorry for being harsh – just no way – or reason – to sugar coat that)

                  That being said, comparative legal analysis may help one become a better critical thinker, but truthfully, if one is “bent” on obtaining a certain End view of things, then NO amount of comparative legal analysis is going to help. Instead, what you might see is a LOT MORE WEEDS from someone who is only too willing to advocate a position regardless of what history may say otherwise.

                3. Well Distant, the USPTO brief did suggest that because scire facias actions were filed in Chancery that for that reason alone there was no right to a jury trial in England for patent revocation actions. Obviously, the statement is widely misleading.

            3. where courts adhere fairly strictly to stare decisis, as SCOTUS aims to do,

              Perhaps you have not been paying attention to the complaints here in the US from the (impossible to align) discordant Supreme Court decisions that exhibit judicial law writing from the bench, particularly concerning the non-shared statutory law section of 101.

              May I also remind you of this little concept traditionally held dear in US legal circles called separation of powers…? It comes into play especially in situations in which our Constitution was explicit about which branch of the government has which authority to create (or write) law; and another reminder that this does not mean that one branch cannot share its authority, but that any such sharing is (rightfully) scrutinized and needs to be properly kept within its bounds.

              Finally, let me share that the Act of 1952 set bounds in regards to what was previously a single paragraph of patent law, removing the ability of the judicial branch to use common law to set the meaning of “invention,” and in its place, Congress opted to create section 103.

              1. But anon, Congress has no power to legislate out of existence constitutional rights. But that is what they did in removing validity from the courts and placing it in the PTO where there is no independent Article III judge, nor right of access to a jury.

                1. Ned,
                  You are talking passed Anon’s point. You are both correct. He is addressing SCOTUS’ overreach on Section 101 and you are addressing Congress’ overreach on the AIA’s IPR statute. And BTW, Congress did not “remove” validity from the courts – they allowed non Article III tribunals to also do what should be left exclusively to Article III courts, in what you and I believe is a violation of the Seventh Amendment of our Constitution.

                  It is only in this context – interpreting our Constitution – that we should look to the laws of England as they were as of 1790, including English common law. This is because it is relevant only to fully understand the scope of the issues to be tried in a jury trial as understood by our Founders in 1790. This mere interpretive tool does not mean, however, that common law should govern or control our patent law in any way. I think that is what Anon was trying to say.

                2. Ron, if the PTAB cancels a claim, there is nothing left to litigate in a court. Thus, the right to a trial to a jury is in fact removed.

                  Regarding 101, the Supremes say only that they are interpreting 101 to be consistent with the common law rule.

                3. Not sure where to place these loose ends.

                  It did occur to me that US Federal courts would need to construe terms like make, use and vend, and access to some body of common law must surely be necessary for this. But it would seem that this was provided for by Congress in enacting the Judiciary Act of 1789. Each of the states would have its own corpus of common law, so Federal courts are to use the law of the state of the district court where the case is brought. It is not clear, on reading that act, what happens with regard to SCOTUS’s original jurisdiction, but cases taken under that jurisdiction must be as rare as hens’ teeth. But, with regard to appellate jurisdiction, it appears that Federal courts apply statutes of Congress supplemented by bodies of law prescribed by acts of Congress.

                  ===

                  Whatever the position in the US with regard to the Seventh Amendment, in England and Wales it seems that civil cases in common law were increasingly tried without a jury from 1846 onwards. Thus there is no right to trial by jury in suits at common law within that jurisdiction.

                4. Regarding 101, the Supremes say only that they are interpreting 101 to be consistent with the common law rule.

                  Please provide a citation to this, Ned – on its face, this is nothing but pure nonsense given that patent law is purely (in the US) statutory law and does not have any such “common law rule.”

                5. Ned, how is “validity” a constitutional right?

                  You are being a bit far too loose just when you need to be a little more tight with your phrasing.

                  I noticed the same “looseness” edging into the historical conversations that you are having with DP.

                6. that common law should govern or control our patent law in any way. I think that is what Anon was trying to say.

                  Absolutely correct Ron – Ned has a rather bad habit of playing far too loose with legal concepts. He will dive in with a boatload of details, perhaps hoping to overwhelm the person he is giving the details to, and then make up something completely out of the air and try to pretend that the massive amount of details ‘quite naturally’ carries his made-up law.

                  That trick does not work with those of us that actually know the law and its history.

          1. Ned,

            DP alludes to this difference already.

            He further ties this difference into the difference between

            statutory law
            (at the Federal level with US Patent law being an item with strict Constitutional allocation of authority to the US Federal legislative branch), and

            common law
            (which he denotes as not resolving to the Federal level apparatchik, but instead to the States, and in context of patent law is thus preempted by that very same Constitutional allocation of authority).

            The use then of common law by the judicial branch in writing patent law should be viewed as ultra vires and a violation of the separation of powers unless Congress shares its powers.

            Congress sharing its powers has been a perfectly legal “move” in the past (and current, and into the future), but such sharing does carry with it particular Constitutional safeguards.

            These are points that I have previously many times now made note of in our discussions.

            1. Anon, obviously Dennis still is blocking my post regarding the common law.

              The common law is the law of the people. It is expressed in their jury verdicts and by their common law judges.

              Judges decide the rule of law based on the particular case before them and no more. The rule of law they adopt is based upon the common experience of the people together with precedent.

              Common law judges have no authority to bind the future by ruling beyond the facts of the case. That authority, to provide general rules, is the province of the sovereign, which is, in the United States, embodied in the legislature and the president. Both are elected by the people and therefore represent people. Therefore the acts of the legislature are acts of the people themselves.

              In history, we have had many instances where invaders have occupied territories were the fundamental laws of the two people’s are different. Allowing people to be judged by their own laws is a form of recognition of common-law.

              Recall at the time of King John and the Magna Carta, most of the high nobles were French-speaking Norman’s, while most of the lower nobles and of course the commons were of Anglo-Saxon dissent. It may have been more to the Magna Carta than simply asking that the sovereign not rule arbitrarily.

              1. For example, it was my understanding from ancient Germany that a man’s life liberty or property could not be taken from him except to a trial by jury. It was the effort of the barons and the people that have the King respect these ancient rights that formed the basis for the Magna Carta.

                1. Look at where the Saxons and Angles lived circa 100.

                  link to en.wikipedia.org

                  They lived in what is now Denmark and the home of the Vikings circa 800.

                  There is little wonder that the two ancient peoples had the same traditions.

  2. Something for the weekend? Day job beckons.

    Part of the story is here from page 270 onwards:

    link to books.google.ie

    Reports of Cases Argued and Determined in the Circuit Court for the United States for the First Circuit [1839-1845].

    Associate Justice Joseph Story, riding circuit.

    First a short case at, Stone v. Sprague, Newport, Rhode Island, June Term, 1840.(at p.270),

    Then a longer caseWyeth v. Stone Boston, Massachusetts, October Term, 1840 (at p.273).

    Essentially taking principles developed in English patent law, discussed in the standard treatises and reports of cases, and introducing the principles that principles are not patentable into US Federal law. Here “principles” explicitly include “abstract ideas”, as you can see from Stone v. Sprague.

    Then onwards to Le Roy v. Tatham (SCOTUS 1852) and O’Reilly v. Morse etc.

    1. Be careful of Story, “principles,” and concepts that were altered by the Act of 1952 (in particular, the response of Congress to the judicial “restraint” on “principles” in the form of process).

      Story is someone known to have a too strict view (Ned has certainly adopted that view) as regards the statutory categories for eligibility, and had the (now clearly mistaken) view that only the “hard goods” categories were legitimate.

      Our Congress explicitly said “No” to this view.

        1. Let’s try again:

          Perhaps a “public comment” to the effect of:

          Multiple comments apparently do not fit the desired narrative and have been locked down….

          Could be made when actual dialogue is so unceremoniously cut short…

        2. Since it seems like some comments are now “breaking free,” let’s try this one:

          I am more than sure that Rich was aware of both who Story was, and of the views that Story held that Congress was changing.

          The better question is when are you going to give full faith and credit to the changes made (by Congress) in the Act of 1952?

    2. For the particular attention of Ned Heller

      See the following link to Google books:

      link to books.google.com

      William P. Mason, Reports of Cases Argued and Determined in the Circuit Court of the United States for the First Circuit, Volume I.

      The following case might interest you, but I don’t see it listed in the Table of Authorities in the MCM v. Hewlett-Packard certiorari brief.

      Stearns v. Barrett, page 153 [166 of the PDF].

      More fully,

      Abner Stearns in Error v. William Barrett, Massachusetts, October Term, 2016.

      Quoting from the syllabus:

      “The proceedings under the 10th section of the Patent Act of 21st of February, 1793, cb. 11, are in the nature of a scire facias at the common law, to repeal a patent.

      “Upon a judgment rendered on such a suit, error lies to the Circuit Court.

      “A verdict, which is repugnant or uncertain in a material point. is void.

      “The refusal of a Court to amend a verdict is not matter, which can be assigned for error.

      “Upon a trial under the general issue, under the 10th section of the Patent Act, the burden of proof, that the patent was obtained surreptitiously or upon false suggestion, lies on the plaintiff.

      “If a patent has been obtained by the plaintiff, upon the defendant’s refusal to submit to an arbitration, according to the provisions of the 9th section of the Patent Act, and the defendant subsequently obtain a patent for the same invention, this is not conclusive proof, that the latter was obtained surreptitiously or upon false suggestion.”

      1. Thanks, but this case is essentially the same as ex parte Wood & Brundage, 22 U.S. 603, 6 L. Ed. 171, 32 S. Ct. 589 (1824), which I did cite.

    3. Next stop, same source as 13.2, i.e., William Mason’s First Circuit law reports, volume 1, that I linked to.

      The case is Lowell v. Lewis (Massachussets, May Term 1817). The case is apparently best known for Justice Story’s statement, in his summing-up to the Jury, that, in order to be useful, “all that the law requires is, that the invention should not be frivolous or injurious to the well-being, good policy, or sound morals of society. The word “useful” therefore, is incorporated into the act in contradistinction to mischievous or immoral. For instance, a new invention to poison people, or to promote debauchery, or to facilitate private assassination, is not a patentable invention.” (see page 186) [page 198 of the PDF].

      But later on on the summing up, something more relevant to “section 101” of Title 35, beginning at “page 187” (presumably the 2nd edition using the page numbers of the 1st in the margin) [page 199 of the PDF]:

      “The next question is, whether Mr. Perkins’s pump be a new invention. In the present improved state of mechanics, this is often a point of intrinsic difficulty. It has been often decided, that a patent cannot be legally obtained for a mere philosophical or abstract theory; it can only be for such a theory reduced to practice in a particular structure or combination of parts. In short, the patent must be for a specific machine, substantially new in its structure and mode of operation, and not merely changed in form, or in the proportion of its parts.”

    4. Now onto Stone v. Sprague (Newport, Rhode Island, June Term, 1840), also decided by Justice Story.

      [I am guessing that, at some point, I will find my postings “awaiting moderation”, but at that point I will probably continue commenting in the hope that any such comments will eventually appear. This particular comment may contain a lot of quotation from the judgment. We start at page 270 of the printed text, which is 283 of the PDF.]

      “At the trial it appeared, that the patent was dated on the 30th of April, 1829, and the specification was as follows. ‘Be it known that I, Amasa Stone, of &c. have invented a new and useful improvement in looms not known or used before my discovery, which consists in the communication of motion from the reed to the yard beam, and in the connexion of the one with the other, which is produced and described as follows.‘ Then follows a minute description of the particular machinery. The specification then concluded as follows, after setting forth the advantages of the invention; ‘I claim as my invention the connexion of the reed with the yarn beam, and the communication of the motion from the one to the other, which may be done as above specified.’

      “Several points were made at the trial, upon which a good deal of evidence was offered. The defendants contended (1.) That the invention was known before, (2.) that the loom used by them was not identical with the invention and machinery used by the plaintiff; but was a substantially different invention. (3.) That the patent was in fact a patent for an abstract principle, or all modes, by which motion could be communicated from the reed to the yarn beam, and the connexion of the one with the other, and not merely for the particular mode of communication specified in the machenery described in the specification; and that it was therefore void. On the other hand the plaintiff contended; (1.) That he was the first and original inventor. (2) that the machines used by the defendants were substantially the same invention as his, and an infringement of it. (3.) That the patent, if it embraced all modes of communication of motion from the reed to the yarn beam and in the connexion of the one to the other, (as the plaintiff insisted it did) was still good and maintainable in point of law. (4.) That if the specification did not justify this interpretation of the plaintiff’s claim, it was still good and clearly supported the claim to the particular machinery described in the specification, which the defendants had patented, and his patent had been infringed by the defendants.”

      [Decided for the defendants in the lower court on a point of law, and appealed to the circuit court, where it came before Justice Joseph Story, riding circuit, and Judge John Pitman. We continue at the circuit court, page 272 of the text and 285 of the PDF.]

      “STORY, J. Upon the question of the true interpretation of the specification the Court entertains some doubt. But, on the whole, ut res valeat, quam pereat,, we decide, that although the language is not without some ambiguity, the true interpretation of it is, that the patentee limits his invention to the specific machinery and mode of communication of the motion from the reel to the yarn beam, set forth, and specially described in the specification. We hold this opinion the more readily, because we are of opinion, that if it be construed to include all other modes of communication of motion from the reed to the yarn beam, and for the connexion of the one to the other generally, it is utterly void, as being an attempt to maintain a patent for an abstract principle, or for all possible and probable modes whatsoever of such communication, although they may be invented by others, and substantially differ from the mode described by the plaintiff in his specification. A man might just as well claim a title to all possible or practicable modes of communicating motion from a steam-engine to a steamboat, although he had invented but one mode; or, indeed, of communicating motion from any one thing to all or any other things, simply because he had invented one mode of communicating motion from one machine to another in a particular case. This is our decided opinion; and if the counsel are dissatisfied, it will be easy to take the case by a bill of exceptions to the Supreme Court.”

      “Verdict for defendants; and a bill of exceptions was taken by the plaintiff accordingly.”

    5. The case Stone v. Sprague (Justice Story, 1840) was taken from the book linked to at 13.

      Now for some more finds.

      I queried Google for the answer to the following question (though not in these exact words):

      What on earth is a “water tabby”?

      I did not get a clear answer, but, by way of compensation, Google gave me links to a few early American patent texts. Here is one of them.

      Thomas Fessenden, An Essay on the Law of Patents for New Inventions (1810).

      link to books.google.com

      One of the cases there is Whitney v. Carter, specifically Eli Whitney v. Isaiah Carter, Judge Johnson, in a Circuit Court for the District of Georgia, December Term, 1807. The case was for infringement of a patent on a cotton gin.

      [The case starts at page 123 of the book. On page 125]

      “Mr. Noel, of counsel for the plaintiff, […] He defined the term principle, as applied to the mechanic arts, to mean the elements and rudiments of those arts, or in other words, the first grounds and rule for them. That for a mere principle a patent cannot be obtained. That neither the elements nor the manner of combining them, nor even the effect produced can be the subject of a patent, and that it can only be obtained for the application of this effect, to some new and useful purpose.”

      [On page 131]

      Judge Johnson “agreed with the plaintiff’s counsel that the legal title to a patent consists not in a principle merely, but in an application of a principle, whether previously in existence or not, to some new and useful purpose”.

    6. Another American book:

      Willard Phillips, The Inventor’s Guide (Boston, New York, 1837):

      link to books.google.ie

      Chapter VII has long discussions on “Kinds of Subject Matter Patentable. 2. Manufacture. 3. Method. 4. Process. 5. Principle. 6. Application of a Principle. 7. Effect, Result Product, 8. Art, Scientific Theory, Abstract Proposition, Reduction to Practice.” etc.

      Moving to Chapter VII, Section 8 (page 123) we read as follows:

      “A mere scientific theory or abstract proposition, is not patentable. The act of Congress, in describing the subjects of patents, uses the term art, which, if taken in its broadest sense, is, like all the others we have been considering, much too comprehensive, but it serves very well to show what is not a proper subject of monopoly, in contrast with science. A science is not the subject of a patent, and for the same reason, a mere theory, scientific axiom, or principle, or abstract proposition, or truth is not so. All the abstract philosophical truths that have been discovered, are free from the patent laws, as are the general powers and qualities of matter. The claim of the inventor arises only on the practical application of a theory, or abstract truth, or elementary property, in some art, process or method, which he has invented and put in practice, or some machine or apparatus, or composition of matter, which he has actually made.”

      Later, on page 124:

      “‘The thing to be patented,” says Mr. Justice Story, “is not a mere elementary principle, or intellectual discovery, but a principle put into practice, and applied to some art, machine, manufacture, or composition of matter'”. This is the doctrine of all the cases.

      […]

      [page 126.]

      “In a more recent case in England, on an invention of carriage-wheels, by which the load was made to bear on the top of the circumference of the wheel, instead of the centre, Mr. Justice Paterson said that the patentee was entitled to a patent for the suspension principle carried into effect in the particular way described by the patentee.

      “The patent being for an invention that is described in it, it is not only requisite that the invention should be reduced to practice, but it must be reduced to practice in the way, and produce the effect specified.”

      ===

      To sum up, every early 19th century essay, treatise, companion etc. on patents of invention, in England and America, that I have so far found, has llengthy discussion of principles (which are not patentable) and inventions which may reduce such a principle to practice in some art, machine, manufacture or composition of matter. The “judicial exceptions” did not spring, fully armed, from the head of Justice Douglas, when he wrote the opinion in Funk Brothers in 1948.

      1. Good job Distant. This exercise should be quite rewarding to today’s modern patent attorney who has grown into a patent system where they are actually taught and rewarded for abstracting principles from their client’s inventions and then claiming those principles. But we can see from your tour of history, this practice of abstraction is as old as the hills, and has always been condemned by the courts.

        On the point about Douglas, yes it does appear that he was and still is portrayed as a boogeyman, like is replacement Stevens. G. S. Rich and his followers made it their job to ridicule Douglas and the entire Supreme Court. Today, many in the bar still view with askance the Supreme Court particularly because of the 101 cases. It may be good to understand that these cases are well founded in history, particularly in the cases written by Justice Story.

        1. Quite missing the coup de grâce of what Congress did in the Act of 1952, though.

          The guise of trying to understand the past in order to better understand the present is revealed when the “learning” conveniently stops in the past and, being stuck in the past, fails to appreciate the changes to that past that are critical to understanding the present (particularly in the cases written by Justice Story who has been shown to want to downplay what is now represented by the statutory category of “Process”).

    7. Back to the early 19th century American Essays etc. on Patent Law.

      I discovered that there were two editions of Fessenden, and both are freely available on Google books. For the first, I have already provided a link, but I plan to collect up links to those texts here (where hopefully they should in future be findable by a Google search on “Fessenden site:patentlyo.com”):

      Thomas Green Fessenden, An Essay on the Law of Patents for New Inventions (1st Edition, D. Mallory and Co., Boston, 1810):

      link to books.google.com

      Thomas Green Fessenden, An Essay on the Law of Patents for New Inventions (2nd Edition, Charles Ewer, Boston, 1822):

      link to books.google.com

      Another American author on patent law in the early 19th century was Willard Phillips. I linked to his shorter work, The Inventor’s Guide designed for inventors, but he also published, at the same time, a longer legal text (which is available on archive.org, and is in Google books, though so far I have only found web pages in some language like Arabic making it available.

      Willard Phillips, The Inventor’s Guide: Comprising the Rules, Forms and Proceedings for Securing Patents (S. Colman, Boston, 1837):

      link to books.google.com

      Willard Phillips, The Law of Patents for Inventions (American Stationary Company, Boston, 1837):

      link to archive.org

      Enjoy!

      1. More early 19th century patent law texts freely available on Google Books that I have located today.

        James B. Robb, A Collection of Patent Cases decided in the Supreme and Circuit Courts of the United States, from their Organization to the Year 1850 (Little, Brown and Co., Boston, 1854).

        Volume I:

        link to books.google.com

        Volume II:

        link to books.google.com

    8. “Principles”, as understood in the time of Story – were ‘gifts of the crown’ – monopolies. Of course, someone could disabuse me. One must be careful with the lexicography of these old cases that often cite to even older cases at English common law. The same goes for the different Courts, which had very different ways of addressing and framing issues of law, fact and relief.

      1. Really? Just a brief survey of writings from even the 1700s show that the meaning of “principles” is little changed from that era.

  3. Because SCOTUS refused to define “abstract idea,” consider the following five possible choices, each finding that the claim in a similar case just decided by the Court is directed to the abstract idea of:
    (1) creating a composite image
    (2) creating a composite image of facial feature images
    (3) creating a composite image of coded facial feature images
    (4) coding of images
    (5) coding of facial feature images

    Do Alice/Mayo/Bilski preclude any one of these single “abstract ideas” from being used as the designated “abstract idea”? I see no such preclusion. Is there any guarantee that the results after Step 2 would be identical under all five options? I see no such guarantee; for example, one can easily show inconsistent results under Options (1) and (3).

    Along the lines of carrying Option (3) even further, there is nothing in SCOTUS’ “jurisprudence” that would prevent a court from designating as the “abstract idea” a composite idea that swallows the entire claim with all its elements. Consequently, the two-step Alice test can defeat every claim from being patent-eligible:

    Step1: The claim of doing A, B, through X…by employing U through Z is drawn to an “abstract idea.”
    Step2: The remainder “considered alone or in combination” does not “amount to significantly more,” because there is nothing else left in the claim.

    I suspect that along these lines, “interested readers” can formulate a syntactic set theory proof that there exists a nonempty (large) set of well-formed claims for which there are multiple distinct, yet reasonable and permissible, choices of the “abstract idea” so that Step 2 results in contradictory conclusions as to eligibility. This would be an excellent exercise for patent law students who have the basic prerequisites including linguistics and logic. That proof will show that as a matter of law, the SCOTUS test based on “abstract idea” is sheer nonsense.

    1. Ron the problem in this case is that the result of the abstraction is a number or something digital because it is stored in a database. Thus, the process of abstraction creates a digital representation of something else.

      Surely , the presence of digital processing in the claim alone is not sufficient to hold the claim as a whole abstract, but to avoid that result, a digital process must be applied to something physical to produce a new result, otherwise the processes is purely abstract in the sense that it is all mathematical in nature.

      In the present case, the final step simply compares two digital numbers together to see if they are the same (or substantially the same), i.e., that they “match.”

      The fundamental problem with the Bilski opinion that it really did not explain why the claim in that case was abstract, and because it had confusing language about “preemption” and “notoriously old” that can only confused the issue. But as time has gone on, we have begun to understand that the problem with the Bilski kind of claims is that they are essentially manipulating abstract, meaning entirely mental, concepts.

      1. Ned,
        You are too deep in the weeds and miss my point. My point is that for decades, SCOTUS never defined the term “abstract idea.” Today, it is still an indefinite term because SCOTUS refuses to define it legally. Alice, 134 S. Ct. 2347, 2357 (2014) (“we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.”).

        So you assume too much – you assume that there is a definite legal meaning for the terms you use “result of the abstraction;” the processes is purely abstract; or “hold the claim as a whole abstract.” Your logic might be sound, but none of your explanations mean anything without a definition of the term “abstract idea.” To be sure, there are many definitions, but none have legal force unless it is enunciated by SCOTUS.

        1. In case anyone is confused: if Ron Katznelson’s patents were being protected by some allegedly “undefined term” in a judicial doctrine, then Ron could care less.

          Most patent attorneys are pretty good at recognizing what constitutes an abstract idea in the context of the US patent system. It’s not a difficult problem to avoid, at least if you’re practicing in the grown up arts.

        2. Ron, the more I think about it, the more I appreciate what the Supreme Court did. By not attempting to define why something is abstract, it allowed the lower courts to development the doctrine by reasoning from the examples held “abstract” by the Supreme Court: Benson, Bilski and now Alice.

          This “common law” approach to the development of the law is not something that we in patent law are used to, to say the least.

          1. Tell me Ned (for the first time, although asked of you numerous times), what is the difference between statutory law and common law.

            Tell me Ned, (for the first time, although asked of you numerous times), what does the Constitution say as to which branch of the government has the authority to write patent law (said patent law thus being necessarily statutory law).

            And this is something that you are admitting to “appreciate what the Supreme Court did“…?

            Tell me Ned, (for the first time, although asked of you numerous times), what does your actual state attorney oath say as to the law that you are sworn to uphold? Hint: that oath does not place one branch above the other two, does not allow that one branch to run roughshod over the Constitution itself.

            Appreciating what amounts to treason (and how else would you classify the subjugation of the proper designations of authority of the Constitution), does not speak well of your view of our laws, our system of laws, and the Rule of Law.

              1. I look forward to your answer, and do hope that it is a complete and non-misleading answer, provided with inte11ectual honesty.

                And yes, the latest version of the filter is a royal pain – I would posit that it does more harm than good to any attempt at dialogue (punishing give and take to the expense of those whose posting style is more of the monologue “hit-and-run” detritus.

              2. Well Ned, I laid out a series of three interwoven questions, and you took a half a step.

                Only two and a half more steps to go.

                (Going to the “completeness” aspect, as my post above reminds you)

        3. Well good luck Ron, in attempting to find an objective lawful standard. Abstraction and gist and ‘heart of the invention’ were all 2nd Circuit doctrines – which T. Marshall laughingly said in confirmation – I’m from the 2nd Circuit we don’t believe in patents – which is why forum shopping, much worse than now – eventually drove the reforms to create the subject matter court of the CAFC. SCOTUS is back to its old tricks – it’s resurrected to old lawless, subjective standard, that can invalidate any patent claim (since you simply find the gist or heart and ignore the claim). It’s only a matter of time before Alice un-cabinets itself from so called software patents and expands to all patent classes. What’s different this time is that big business has already opted out (the deal cut for the AIA) – via the federal trade secret act – and bio has opted out via the orange book exclusivity for approved biologics. So we have 2 new statutory schemes to protect ‘interests’.

          1. Well said.

            Surprisingly (or not, given the Windmills typically chased), our resident “historian” Ned Heller is rather mute on that topic.

      2. Ned,

        You also (rather unsurprisingly) overplay the mere clue of MoT back into some type of actual legal requirement.

      3. “Ron the problem in this case is that the result of the abstraction is a number or something digital because it is stored in a database. Thus, the process of abstraction creates a digital representation of something else.”

        Why is that a problem? That’s what the X-ray data was in Abele.

        “Surely , the presence of digital processing in the claim alone is not sufficient to hold the claim as a whole abstract, but to avoid that result, a digital process must be applied to something physical to produce a new result, otherwise the processes is purely abstract in the sense that it is all mathematical in nature.”

        1. Why does it have to be applied to something physical? Where do you see that in the statute?

        2. The claimed process here is applied to something physical, signals. Furthermore, the result is physical, a memory cell is either charged with electrons or it is not.

          1. Let is start with an example number, let us say, 7. If I store this number in a database, where numbers have been stored before, is the process new and useful?

            1. Determining whether this video is the same as a copyrighted video via an automated processes that is relatively fast and inexpensive and which can be used to prevent pirating and illegal distribution of intellectual property is.

              Why are you fixated on the issue of storing a number in a database?

                1. Let’s try again:

                  What is the weight of the space in the allowed claims to Morse?

                  You are doing that pedantic thing again, Ned.

          2. Its not.

            Determining whether this video is the same as a copyrighted video via an automated processes that is relatively fast and inexpensive and which can be used to prevent pirating and illegal distribution of intellectual property is.

              1. “Oh, and Lex, if there is a match, what next? The claim does not say.”

                What happens next is not part of the invention. What happens next is not being claimed. What happens next is insignificant post solution activity. Therefore, what happens next is not recited.

                Why is that an issue?

                I keep answering your questions. When will you answer mine?

            1. Determining whether this is the same as this via an automated processes that is relatively fast and inexpensive

              Because nobody used a computer to compare stuff before.

              Oh but wait! That video was owned by my ex-wife. This one wasn’t. So … totally different “technology.”

              LOL

              1. What is being claims is not “using a computer to do computer stuff” just as the Wright Bros did not claim: using lumber to do lumber stuff.

      4. I’d argue you don’t delve deep enough. The fundamental problem with Bilski style claims is they claim obvious inventions that are, however, nearly impossible for examiners/courts to properly 102/103 under an element-by-element examination.

        So, we have a guy who writes a 15 line claim, but the “gist” is “Playing Monopoly on an iPad”. Every element that is essentially part of monopoly (or more famously bingo) being done on a computer is really hard to parse out in the mind, so the 103 rejection looks really convoluted, but that is because the claim is convoluted! Now, SCOTUS recognizes this (both are too convoluted for them) and says, “a pox on all you scriveners” and 101 is shorthand 103. And there is no way to fix it until people write better claims.

        1. Serious (and seriously wrong) Ends justifying the Means there AiC.

          That’s not how the US Constitution dictates that things work.

    2. (1) creating a composite image
      (2) creating a composite image of facial feature images
      (3) creating a composite image of coded facial feature images
      (4) coding of images
      (5) coding of facial feature images

      Do Alice/Mayo/Bilski preclude any one of these single “abstract ideas” from being used as the designated “abstract idea”?

      Of course not.

      Is there any guarantee that the results after Step 2 would be identical under all five options?

      Of course not. It’s possible (although extremely unlikely given any of the above choices) that the claim could recite some non-obvious structure, in structural terms, that would save the claim.

      Why on earth should there be a “guarantee” of identical results after Step 2??

      1. MM @12.2:
        “It’s possible … that the claim could recite some non-obvious structure, in structural terms, that would save the claim.

        MM is confused here. This may be relevant to the analysis of the claim under Section 103 but has nothing to do with respect to eligibility under Section 101.

        Why on earth should there be a “guarantee” of identical results after Step 2??

        MM is confused here too – perhaps resort to basic logic would help? Because the two-step legal test that SCOTUS handed down is supposed to determine whether a claim meets Section 101, there can be only one result for that question at the end of the two-step legal test – either the claim meets Section 101, or it doesn’t. A legal analysis and test method for a particular claim must produce the same result if applied within the confines prescribed by SCOTUS’ legal test. Otherwise, the test prescription is meaningless and infirm. Therefore, five distinct ways for designating the “abstract idea” of the same claim, all of which following to a tee the SCOUTUS prescription, must produce the same result as to whether the claim meets Section 101 or not.

        Hence, the legal prescription (by its structure, definitions and procedures) must inherently possess case-independent characteristics that guarantees the same results when properly applied to the same claim. Without such guarantee, the prescription is sheer nonsense.

        My point is that one can construct a proof which shows that the SCOTUS legal test has no such guarantee – that one valid application of the legal test can result in a given claim meeting Section 101 while another valid application of that legal test shows that it does not.

    3. Why on earth would any competent patent attorney expect that inclusion of the word “facial” (or any content descriptor) before “data” would affect the eligibility of an otherwise ineligible data-processing claim?

      Serious question. Because some people are seriously confused, or they pretend to be. And there’s no excuse for that in 2017. Geebus cripes, people, stop pretending we were all born yesterday.

    4. Ron, that’s one of the most intelligent comments I’ve read on this blog in a long time. It’s unfortunate that the nonsensical nine lack even a minimal understanding of linguistics or logic.

    5. Splitting a claim into a ‘reasonable abstract idea’ and ‘something else’ is zero sum. The less concrete you make the idea, the more significant is the something else.

      For your theory to be true, there would have to be a claim with 2 splits:

      Split 1 has ‘a reasonable abstract idea’ and ‘a significant something more’ (valid claim)

      Split 2 moves part of the ‘something more’ into the ‘reasonable abstract idea’ in such a way that the abstract idea is still abstract. (invalid claim).

      Can you site a single example of a claim and 2 such splits? It would be a good start…

      1. There is no need to give two examples. My point is made by one example which makes every claim ineligible under 101. I just gave the single example @12, Step 1, that proves my point: designate the whole claim in its entirety as the “abstract idea” and there is nothing left in the claim other than the “abstract idea” – the claim fails to meet Section 101. The SCOTUS nonsense becomes clear as soon as one answers the following simple question: without defining the term “abstract idea,” where did SCOTUS limit the ability to designate the whole claim as the “gist” of the invention or the “abstract idea”?

      2. Let’s see if we can salvage this dialogue continuation:

        SR – Your comment of “ The less concrete you make the idea, the more significant is the something else.”

        might carry some weight if what you say were actually followed by the courts and the Office.

        It is not.

        Part of that is the fact that NOT ONLY is “abstract” undefined, but so is “significantly more.”

  4. “We have an interesting case here where the district court expressly stated its approach to Mayo/Alice Step 1 is to distill the claimed invention to its “gist” and ask whether that gist is an abstract idea.”

    #ballsout

  5. “May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”?

    Could they actually issue an Opinion along the lines of : Yes patentable subject matter under § 101 may be properly be assessed by over-generalizing patent claims to a “gist?

    Such an Opinion would be entertaining….

  6. There seems to be a recent trend of patent case certs presenting three different questions. What is the reason to think that the odds for what some have called “shotgun certs” has improved?

    1. Some have called…?

      Yours is the first that I have heard the limited number of inter-related questions called “shotgun.”

      As to the improvement in odds of being accepted, I would think that the question itself begs the answer. There is nothing anyone can do to improve the odds of being chosen at cert petition, because the choice is entirely up to the discretion of the Supreme Court.

      Anyone trying to handicap their reasoning with reasoning is paying a f00l’s game.

      1. In fact, there is a decided lack of “shotgun” here if you put a little critical thinking as to why these questions go together, Paul.

        Here is a hint: it was Congress that was explicit as to exactly whom gets to define the “invention.” And that explicit demarcation was not the judicial branch.

        So if the judicial branch is going to venture forth and re-write what Congress has written in their quest for their (the Court’s) desired Ends, 112 is certainly fair game to be put with 101.

        Similarly, if claims with terms as specifically chosen to define the invention as properly demarcated by Congress are to have any meaning at all, then when the Court can take it at that initial step of dismissing a suit and destroying the property be declaring “not eligible,” then the second question must surely be fair game. How can you declare “something” not eligible when you have not even bothered to figure out what that “something” actually is? Even under the Supreme Court’s “Gist/Abstract” sword; if you are not going to bother to completely and authoritatively construe the claims, how the H are you going to go about to see if there is “something more”…?

  7. Asserted claim 1 of the ‘472 patent:

    1. A method for monitoring and analyzing at least one signal comprising:

    receiving at least one reference signal to be monitored;

    creating an abstract of said at least one reference signal wherein the step of creating an abstract of said at least one reference signal comprises:

    inputting the reference signal to a processor;

    creating an abstract of the reference signal using perceptual qualities of the reference signal such that the abstract retains a perceptual relationship to the reference signal from which it is derived;

    storing the abstract of said at least one reference signal in a reference database;

    receiving at least one query signal to be analyzed;

    creating an abstract of said at least one query signal wherein the step of creating an abstract of said at least one query signal comprises:

    inputting the at least one query signal to the processor;

    creating an abstract of the at least one query signal using perceptual qualities of the at least one query signal such that the abstract retains a perceptual relationship to the at least one query signal from which it is derived; and

    comparing the abstract of said at least one query signal to the abstract of said at least one reference signal to determine if the abstract of said at least one query signal matches the abstract of said at feast one reference signal.

    This is pure g@rbage pretty much no matter how you slice it.

    The irony of complaining about “abstracting” in the course of a legal analysis when the claim at issue is expressly about “abstracting” for the purposes of making a comparison (woweezowee!) is noted. That’s some chutzpah right there.

    1. MM, good point. Also, the “abstract” has to be a number or something digital because it is stored in a database.

      Now the details of how one creates an abstract of a signal using “perceptual qualities” might might be patentable subject matter provided that it required some physical activity or circuitry rather than simply providing a mathematical relationship between signal elements.

    2. That is indeed a pretty long claim without really saying very much. It could be claimed more succinctly as follows, “comparing an abstract made from perceptual qualities of least one reference signal to an abstract made from perceptual qualities of at least one query signal”

      I think part of the problem here (in this particular claim, I haven’t looked at the others) is there is little context. it’s not really clear from the claim how these signals are generated nor what “perceptual qualities” really are. There is also no “result” from this claim, it is just claiming a mathematical operation. I think if this claim was framed in a more “technical” manner with more context, it shouldn’t have a problem passing 101 muster.

      I still say 103 is the better method for disposing of these claims. There is no way this claim (to a mathematical operation) should survive 103.

      1. I think if this claim was framed in a more “technical” manner with more context, it shouldn’t have a problem passing 101 muster.

        Nope. Not how it works.

        Google can afford good lawyers. Good lawyers don’t get fooled by scrivening games. Incompetent lawyers get fooled, and so do judges who aren’t keeping up. But that’s about it.

        I still say 103 is the better method for disposing of these claims.

        What difference does it make?

        1. “Good lawyers don’t get fooled by scrivening games.”

          Don’t agree. if the claim included a technical (and non-obvious) process for how the “perceptual qualities” are extracted from the reference signal, and a post-operative step that doesn’t end with a mere “comparing” then this should pass muster. This isn’t a “scrivening game.” It’s putting more meat into the claim (in a similar sense that you might amend a claim to overcome a 103 rejection) to remove it from the “abstract idea” umbrella. But I know this doesn’t matter to you because you think every claim involving computer software in ineligible. In any case, the claim is also probably invalid under Williamson as a “means for” claim without the proper support in the spec. I’m not losing sleep over the holding here, only the path therein.

          “What difference does it make?”

          Yuuuuuge difference (sorry, I still think that’s funny). Claims are being shot down under 101 that the Supremes wouldn’t have intended to shoot down by Alice. Look at McRo. the patent owner had to do a freaking CAFC appeal because the District court improperly shot down the claims. I (think) I told you a long time ago that McRo would be a great case for the supremes to take up, because they will uphold it.

          I don’t know what you do, but have you ever directly worked with inventors before the USPTO? Working with good people on good inventions might change your perspective on summarily denying whole categories of inventions.

    3. How… How did this get allowed under 102/103? I would think RADAR/SONAR from ww2 would infringe that claim. i.e. the ping signal detecting nothing is the reference signal and you only notice objects based on their comparison to the null reference signal response.

      1. That is the question everyone asks in every major section 101 case. It should be clear to all that modern 101 jurisprudence is simply a reaction to a few decades of intentional obfuscation in scrivening.

  8. I give this cert petition a 0.0004% chance of success (basically, the clerk could accidentally stamp it with the wrong stamp after the justices vote to deny cert). They are not interested in revisiting 101.

    1. They sure in heck aren’t going to revisit it with these junky claims and this record.

      I assume the deadline for filing cert to overturn McWrong has passed …?

  9. The “inventor” (LOL): Because distillation to a “gist” inherently abstracts from a patent’s specific claims, this approach builds in a bias towards invalidity. . . .

    No, it doesn’t.

    Wiping away patent attorney scrivening that is designed to deceive and then summarizing the patent claim in plain English doesn’t “build in a bias towards invalidity.” It just exposes the junk for what it is. That’s not to say that this exercise can’t be performed incompetently. But in most cases it’s pretty easy for a reasonable patent attorney to see through the dust cloud, especially if one becomes familiar with the latest hottest “tricks” (also easy to do). Then the question is “what’s left”? If the answer is: old hardware “configured” (by virtue of instructions) to carry out the overly-scrivened ineligible junk, then you’re toast. This is not a difficult analysis.

    Remember, folks: every information processing method is highly suspect under 101. as is every information processing machine distinguished from the prior art in terms of the information processing method it is “configured” to carry out. That’s a feature, not a bug, of the patent system.

    The big problem right now is not the CAFC’s failure to “clarify” Mayo/Alice but the the CAFC’s eager willingness to undermine those cases by creating a seemingly endless list of “exceptions” based on little more than its fondness for the “app” that is being hustled.

    1. This needed to be pulled from “moderation”:

      Same old same old from Malcolm…

      Here, let’s look at his disdain for “comfigured” (and noting yet again any hint of the proper patent doctrine of inherency for his “what’s left = old hardware”).

      Three resistors.

      Configuration 1) those three resistors in series.

      Configuration 2) those (same “old machinery”) resistors in parallel.

      Malcolm’s use of quotes for configuration shows both his disdain and his dissembling as to a particular mode of innovation that he merely feels is not “patent worthy” in his self-anointed role of “guardian of the patent fields of rye.”

      It’s funny how “configured” really does matter and how Malcolm’s attempt to denigrate the term reveals his “Big Box of Protons, Neutrons, and Electrons” “logic.”

  10. the district court … found that the gist of the claims is to “model, on a computer,

    ‘the highly effective ability of humans to identify and recognize a signal’ [using a method that] mirrors the manner in which the human mind undertakes the same task.”

    quoting the patent specification).

    And the hubbub here is that the district court used the word “gist” which the worst attorneys who ever lived have somehow seized on as a “bad” word?

    LOL

    Desperate much?

  11. Dennis Crouch: The process involves creating an “abstract” (essentially a hash or digital fingerprint)

    Dennis is gisting! Dennis gisting! OMG! OMG!

  12. [T]he Federal Circuit appears unwilling to shoulder the responsibility for clarifying the Alice/Mayo analysis.

    The last thing the patent maximalists want is clarity.

    The analysis is incredibly straightforward. It’s the inevitable result of that analysis that the maximalists can’t handle. Hence, the “confusion.”

    Once all of this “do logic” “on a computer” junk is expunged from the system, the farcical aspects of the system will diminish.

    And the world will stop turning and we’ll all become like the Amish. <– actual talking point used by the maximalists LOL

    1. “Once all of this “do logic” “on a computer” junk is expunged from the system, the farcical aspects of the system will diminish.”

      Please identify one patent, of any type, that isn’t, in your view “junk.”

      1. Les, I’ve said before: there are thousands and thousands of perfectly fine patents out there. I see them all the time. They describe,new compositions of matter or new articles distinguished from the prior art in structural terms.

        If you like, you can go ahead and pick any such patent and perform your woeful version of the Mayo/Alice test on it. You’ve done it already a zillion times with the “airplane patent.” The silliness doesn’t impress anybody. And I’ll remind you again that the Supreme Court was aware of people like you when it wrote Mayo/Alice. The Court warned the world about you.

        Claims that relate to information processing and logic “on a computer” are DIFFERENT. They are suspect. They are second class. They don’t belong in the system. You can disagree with the last statement but there is no doubt about the first three.

        1. …and yet again the fallacy of Malcolm and his attempt to change an optional claim format into somehow being more than a mere option.

        2. “I’ve said before: there are thousands and thousands of perfectly fine patents out there. I see them all the time. They describe,new compositions of matter or new articles distinguished from the prior art in structural terms.”

          …. and yet you are unable to identify just one.

        3. “Claims that relate to information processing and logic “on a computer” are DIFFERENT. They are suspect. They are second class. They don’t belong in the system.”

          Processes are not second class. They are even listed first in the statute.

          Here it is in case you overlooked it:

          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.

          You can disagree with the statute but, there is no doubt that is what it says.

  13. The patentee argues here that the court erred in its gist analysis,

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

    There was an error here, to be sure. But it happened long before this case ever went to trial.

    1. LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

      What are you, 12?

      1. Les,
        MM is a true troll. I commend Denise for not banning him but I don’t think anyone should dignify his tantrums.

        1. While not banning him, the “measures” put into place to “make a better ecosystem” are an absolute fai1ure, and as far as I can tell do more to limit dialogue than they do to promote dialogue.

          But then again, perhaps developed dialogue is NOT the desired narrative here…

    2. Trevor Noah said something on his show that you have to either do, ‘hahahahahaaha” or LOL, but if you do LOLOLOLOLOL, then you are basically typing, “laughing out loud out loud out loud out loud…”

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