Cache Data Types: Patent Eligibility

cacheAbstractVisual Memory v. NVIDIA (Fed. Cir. 2017)

In a split opinion, the Federal Circuit has sided with the patentee and reversed a the district court judgment that Visual Memory’s patent claims improperly encompass an abstract idea.  The opinion filed by Judge Stoll was joined by Judge O’Malley.  Judge Hughes wrote in dissent.

Claim 1 of asserted U.S. Patent No. 5,953,740 is directed to a “computer memory system” that includes a “main memory” and also a “cache” both connected to a bus that can then be connected to a processor.  The inventive element, is that the cache’s operation is programmable – allowing it to work efficiently with different processors.  The claim particularly requires “a programmable operational characteristic of said system determines a type of data stored by said cache.”  In the words of the court, “the memory system is configured by a computer to store a type of data in the cache memory based on the type of processor connected to the memory system.”

Claim 1. A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising:

a main memory connected to said bus; and

a cache connected to said bus;

wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

After Visual Memory sued NVIDIA, the defendant filed a R.12(b)(6) motion to dismiss for failure to state a claim. In granting that motion, the district court ruled that the patent was directed to the “abstract idea of categorical data storage” – something humans have been doing for many years.  In Alice Step 2, the court found that the cache, bus, and processor were all conventional and the claimed “programmable operational characteristics” were merely vaguely described “generic computer elements. Quoting Intellectual Ventures v. Capital One, 792 F.3d 1363, 1367 (Fed. Cir. 2015).

On appeal, the court began with a strawman conclusion that “none of the claims recite all types and all forms of categorical data storage.”  Of course, none of the Supreme Court abstract idea cases involve claims that entirely covered the scope of the stated abstract idea.

The meat of the court’s argument is also its conclusion:

As with Enfish’s self-referential table and the motion tracking system in Thales, the claims here are directed to a technological improvement: an enhanced computer memory system.

As in those cases, the court here looked to the specification to find particular technological improvements that underlay the invention.  Here, for instance “[t]he specification explains that multiple benefits flow from the ’740 patent’s improved memory system.”

Judge Hughes dissent agrees that the key inventive element is that the claims require the potential for a change in the type of data stored in cache depending upon the processor connected.  However, Judge Hughes points out that the claims do not spell out details of that process but rather “the patent lacks details about how” this so-called inventive element is actually achieved.

I disagree, therefore, with the majority that combining the black box of a “programmable operational characteristic” with conventional computer equipment constitutes a specific improvement in computer memory systems. Because the ’740 patent does not describe how to implement the “programmable operational characteristic” and requires someone else to supply the innovative programming effort, it is not properly described as directed to an improvement in computer systems.

Hughes in Dissent. The majority responds to Judge Hughes by arguing (1) the patent application includes an appendix of 200+ pages of computer code for actually implementing the process; and (2) the fact that the patent might not enable the invention is not a 101 issue – it is an enablement issue. [I leave off the third argument that was weaker.]

The decision here is obviously panel dependent, meaning that the area remains in flux and disruption.

= = = = =

200 pages of code: Neither party appeared to have any real problem with fact that the decision was on the pleadings prior to any discovery or weighing of facts at issue in the case.  However, the majority highlight the 200+ pages of computer code submitted with the application with a suggestion that those pages might include further descriptive information.  That possibility then, according to the court, should preclude a judgement on the pleadings since “all factual inferences must be drawn in favor of the non-moving party.  I think the court is onto something here, although any serious consideration of this approach must also include the higher “plausibility” requirement when making those inferences.

 

 

82 thoughts on “Cache Data Types: Patent Eligibility

  1. The first line below merely confirms the last three lines…

    Your comment is awaiting moderation.
    August 21, 2017 at 6:42 am
    Similar to as noted last weekend with two threads that displayed editorial control to shape the narrative within the comments section, here are a few comments still blocked (a general reminder regarding “neutral” forum protections for editors: if comments based on patent law view are blocked, the thread is no longer free of editorial viewpoint control, and certain web protections are lost):
    To Malcolm at 7:
    August 18, 2017 at 7:55 am
    It’s a total pile of cr @p and not defensible by anyone with self-respect.
    You have zero room to be making such statements.
    Satiating your own ego with the trite (and ancient) scripts of yours that flood nearly every thread shows a lack of respect (self or otherwise).
    THAT young”get away with” for 11 plus years with the plainly non-objectively applied editorial controls (you EASILY having by far the most posts removed for being offensive or simply not germane to patent law – or even intellectual property law – more than all others combined) and yet you appear to have NO “quantity limit” as witnessed by post counts on the newer threads.
    Of course, this won’t stop you from attempting your number one meme.
    While critical thinking is left in the clouds of dust you constantly kick up, and desired narratives render the concept of dialogue is sacrificed to the “desired narrative,” perceptions (notably beyond any editorial control) are reinforced.
    And that’s not a good thing for “America’s leading patent law source.”
    [and]
    August 18, 2017 at 8:00 am
    Lol, damm auto correct;
    “That young” => “That you”
    …and let me add that you even repeat, more than once, posts that have been pulled for being offensive; clearly you think that ‘rules’ magically don’t apply to you (that ego thing of yours, no doubt).
    To Malcolm at 5.2.2:
    August 18, 2017 at 8:08 am
    Those “reams” are THE broken scoreboard that is the issue that so many are trying to tell YOU about.
    Your number one meme of Accuse Others (YOU are not grasping the basics) is what is going on.
    You may have Court giving you a desired Ends, but THE issue is that the Means to that End is NOT in accord with those very same basics that you Accuse Others Of not grasping.
    To Malcolm at 4.2.1.1.2:
    August 18, 2017 at 9:52 am
    stultifying.
    To BlutoBlutarsky at 4.2.2.2:
    August 17, 2017 at 11:19 am
    As Prof. Crouch has coined the term:
    Vast Middle Ground.
    I have (yet again recently) invited Ned to provide his understanding of the Crouch-coined term, but he has gone silent on that point.
    [and]
    August 18, 2017 at 8:15 am
    Another comment (not matching a desired narrative) put into editorial limbo….
    To Daniel Walker Cole at 4.3.2.1:
    August 17, 2017 at 7:20 am
    Bah,
    That “use your real name and out yourself” line is pure
    C
    R
    P
    Stick to the substantive law issues, DWC.
    To JCD at 4.3.2.2:
    August 17, 2017 at 7:21 am
    His personal ego is the ONLY thing that matters to him.
    11 years of his blight is evidence of that.
    To AAA JJ at 2.1.1.3:
    August 16, 2017 at 4:16 pm
    Because it does not fit his own pet hobby horse of “objective physical structure.”
    Note as well that I laid out for him (once upon a time) a similar thinking exercise of using “objective physical structure” in the form of a disc with pits and grooves (or light absorbing and light reflecting zones) that may be laid out in (human unreadable) many tens or hundreds of pages form that would meet his hobby horse, and yet he would nevertheless continue his whining about “logic” patents (whatever that means).
    To Daniel Walker Cole at 2.1.2:
    August 17, 2017 at 7:31 am
    No I know it isn’t worth my time to read any more of your comments
    DWC,
    Clearly you are new here, and will come to learn about some of the sAme ones here that are NOT interested in anything other than their own drive-by monologues.
    Once upon a time not so long ago, the blog, being concerned with “ecosystem” (under the name of promoting dialogue) experimented with a DISQUS system. That system provided (under a suitable level of protecting identity) a capability of viewing ALL comments by a keyed in poster, thus, showing things like “short script” or excessive (and typically baseless) ad hominem.
    When this featured was publicized, two things happened. Led by Malcolm (MM), several of the typically anti-patent usual posters opted for a maximum privacy setting that disallowed the ability to see congregated posts. When this was pointed out, and some reasonable explanation asked for the move to such a setting, NO viable explanation was given.
    The second thing that happened was that the editors (for some unexplained reason) dropped the DISQUS system entirely.
    You may realize (sooner, rather than later, given your interest in Con Law) that there is an ACTIVE attempt to shape the narrative in the comment section here.
    (for example, THIS post may not see the light of day).
    I do hope that you persevere through the editorial obstacles.

  2. A computer memory system with a cache, wherein a programmable operational characteristic of said system determines a type of data stored by said cache.

    This is the alleged “invention”, with the excess verbiage deleted.

    It’s a total pile of cr @p and not defensible by anyone with self-respect.

    But self-respect is something the patent bar is woefully short of these days. We’ll leave the details for another time.

    1. The “logic” was the improvement over the prior art as long as it results in a tangible and useful improvement in the operation of a computer.

      Sounds familiar.

      Good times are back!

      1. a tangible and useful improvement

        LOL — is there any other kind of improvement?

        The “logic” was the improvement over the prior art

        Nothing in the claim describes a structural change in the prior art object that improves the prior art object.

        It’s junk. Exactly what is gained by defending it?

        1. the court’s reasoning shows that the pendulum is swinging :-D. Better take up yoga.

        2. Nothing in the claim describes a structural change in the prior art object that improves the prior art object.

          Sounds like you want to use the inherency doctrine…

          Why do you not just use it then?

    2. a programmable operational characteristic

      Scrivener’s Delight.

      Yum.

  3. Agree 100% Ned, both opinions are correct.

    That’s why an “abstract idea” exception is completely unworkable. As the other character in Alice said:

    “I don’t know what you mean by ‘glory,’ ” Alice said.
    Humpty Dumpty smiled contemptuously. “Of course you don’t—till I tell you. I meant ‘there’s a nice knock-down argument for you!’ ”
    “But ‘glory’ doesn’t mean ‘a nice knock-down argument’,” Alice objected.
    “When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”
    “The question is,” said Alice, “whether you can make words mean so many different things.”
    “The question is,” said Humpty Dumpty, “which is to be master—that’s all.”

    this is exactly where we are, in Wonderland with Humpty Dumpty as Master

  4. Mark Summerfield makes some interesting points below that are worth addressing, if only to obtain some clarity. As an initial matter, let’s acknowledge that overcoming 101 (or 112) by providing exemplary code when one is relying on the functionality performed by the code to overcome the prior art is an old concept that has been harshly attacked here for many many years.

    Mark writes: This is not a “software patent”. The code in question is a CDL (Circuit Description Language) representation of a hardware implementation of the memory system.

    I’m going to set aside the obvious (and more general) questions raised by these two sentences and ask a couple of less obvious ones: is there is any indication whatsoever in the specification that this code is (1) new or (2) whether it describes instructions for performing a logical data processing task (note the lack of jargon in my questions).

    What, exactly, this implies in terms of the structures disclosed, and/or their equivalents, as well as what this means for any analysis under 112 might well require expert evidence.

    Or it could be determined by simply asking the party — with the threat of sanctions looming over it — the questions I just asked. Or the judge could ask the patentee “is the claim limited the code recited in the spec, yes or no”? Or the answers might simply be admitted in the spec, which is very often the case. It is possible to accomplish a great deal without expert testimony but it requires that parties be forced to be honest and not play games at the early stages of the case.

    It is certainly not something that I could imagine being appropriate for judgment on the pleadings.

    You need to imagine harder, as I pointed out above.

    CDL, as I understand it, is a netlist-based language. It is therefore essentially equivalent to a circuit diagram.

    Why submit 200 pages of code when you can submit a circuit diagram? At the very least, it would seem like a waste of excess page fees.

    Had this instead been represented as dozens of pages of transistor-level circuit diagrams, would you be so ready to insist that the claim should (somehow) “recite” the circuits?

    I was crystal clear about what was required: “if code is relied on to save the claim, then the claim needs to recite the code (or otherwise be limited to the code).” If one circuit had been provided and that circuit was relied upon by the patentee to overcome a 101 rejection, then of course the claim must be limited to that particular circuit. How can this possibly be avoided? My preferred “compromise”, for the record, would be that if you don’t expressly recite the code (by reference, typically), then the claim is d.o.a. My non-compromise position — the best result — is to get “code” out of the patent system entirely because it never belonged in the system and the PTO has no way of examining it.

    The question of what to do when the spec discloses a dozen or a dozen thousand unrecited drawings of “circuits” to support some claimed “functionality” gets right to the core of the problem with logic patents (including the kind of logic patents at issue here). If, in fact, applicants want to claim a genus of structures they need to grow up and do it the way that practitioners in the grown up arts have been doing it since forever: you identify the objective physical property shared by the genus and you use your words to describe that objective physical property in the claim. Logic patentees will respond by whining about how difficult that is. Yes, it’s difficult! Welcome to the grown up world where stuff is hard and you need to have some expertise in science and writing and the law.

    This claim is junk and this decision is junk.

    1. Your “addressing” of the points is shallow and nigh meaningless, Malcolm.

      It is nice that you attempted to be polite, but you are going to have to have more than a thin veneer for your scripts.

    2. All of the questions you raise are 102 or 103 issues. If things are NEW is not a 101 issue. Why is that so hard for the anti patent people to understand? Claims are written broadly so they cover as much as they can – they are not written specifically to the actual embodiment of an invention. THIS is how grown up patent lawyers do things. Our job is to get as much coverage for our clients as possible – as it is our clients who are making new things and improving the world.

      Just like in biochem, where I do most of my work, the kind of decisions you want will massively remove the inclination not only of people to do innovation but more importantly the inclination of venture capitalists to give money to support it. I turn away new biochem inventions all the time as it just isn’t worth the money to attempt to patent them now – which means they disappear as without a patent no one is going to do the hard work of turning it into a real product.

      Congress needs to add capitalism back to our patent law.

      1. If things are NEW is not a 101 issue.

        I broadly agree with the point you are making in your response, so I do not want to sound too harsh, but does it not seem strange to assert that a statutory section that begins “whoever invents or discovers any new and useful…” should be understood not to be concerned with the question of whether something is new? It is right there in the statutory text.

        1. Pardon Potential (re)Post

          It is a reference point only – the writings of Congress are not always the most pristine, and new is indeed defined (and regulated) in other sections.

          You should know this Greg.

          1. [T]he writings of Congress are not always the most pristine…

            True, but what of it?

            Once the statutory text is passed by both houses and signed by the president, it is the law, whether it is artfully drafted or not. You can quibble that §101 ought not to concern itself with questions of “new,” but the actual §101 that is actually in force plainly does concern itself with questions of what is new. It is right there is black-&-white.

            1. No Greg – as I indicated, that “new” in 101 is expressly and actually addressed in a different section.

              Point blank is that there are NO WORDS in 101 delineating what – or any – treatment of the word “new” in 101, and one does not get to be so pedantic as you are attempting to be when it is beyond clear that Congress acted to address “new” in a different section.

              In case you were wondering, that is what the following part of 101 signifies:

              subject to the conditions and requirements of this title.

              Yes, THAT TOO is there in black and white.

              1. You respond to me as if I were somehow ignorant of the existence of §102 and the requirements that it brings to the analysis. I assure you that I (1) am aware of §102 and (2) acknowledge its relevance to the determination of newness.

                Still and all, Congress put the word “new” into §101, and we are supposed to read the code so as to avoid surplusage. If you really think that “new” has nothing to do with the §101 analysis, then you (at least partially) misunderstand §101.

                “subject to the conditions and requirements of this title[…]” is there in black and white.

                Yes, I agree that those words are found in §101. Those words also do some work in the §101 analysis.

                The two clauses are not mutually exclusive. One can give effect to the words “invents or discovers any new and useful” and to the words “subject to the conditions and requirements of this title.”

                1. Never said that they were mutually exclusive, and in fact, I said the opposite.

                  You want something that is just not there and not meant to be there.

                  101 has two components:
                  1) statutory categories, and
                  2) utility (the right type of utility, vis a vis the Useful Arts.

                  It makes zero sense to try to pack in “something more” to the mere presence of the word.

      2. If things are NEW is not a 101 issue.

        Depends on what the “things” are. If the only new “things” are abstract limitations (e.g., recitations of content or the meaning of data, or the legal status of some other thing), then there is certainly a 101 issue there.

        And that’s just one example, but enough to show that your statement is false.

        It’s kind of bizarre that after 10+ years of laying this out there for you guys and reams of decisions supporting exactly what I’m telling you, you still can’t grasp the basics.

        Really really bizarre.

    3. Largely agree.

      What we know is that specification itself described no code, algorithm or method for achieving the claimed result. If it did, the claim should be construed to cover that algorithm or method and equivalents — nothing more.

      But, the Supreme demands more. It wants the claims themselves be limited to the invention so that the DOE operates off the claims, not the corresponding structure. Claiming a result claims all possible equivalents and is quite inconsistent with what the Supreme Court requires of claims.

    4. My apologies for the ‘jargon’. You spend so much time and effort here expressing your informed opinions on software patents that I assumed you had more than a passing familiarity with digital technologies, and would therefore understand what I was talking about. It seems I was mistaken.

      So let me say it once more. Whatever issues there may be with the breadth of the claim, this is not a software patent. The invention here, on a reading of the specification and claims through the eyes of the relevant skilled person, is digital hardware. Specifically (although the claims refer to ‘a computer memory system’) the invention is said to be a new and improved form of cache controller. Cache controllers are integrated circuits that work in conjunction with microprocessors and memory devices in an effort to optimise memory access speed.

      The 200+ pages of ‘code’ filed with the application (specifically, 263 frames of microfiche) is not something that is executed by the microprocessor. It is a hardware description language, which means that it is a text-based description of circuit elements (such as transistors, resistors, and connecting conductors) that can be interpreted by a CAD software package (in this case a product called Synopsis) in order to perform functions such as simulating the operation of the circuit, or generating a circuit layout that can be used to fabricate the end product.

      A ‘netlist’ refers to a listing of elements making up a circuit (which electrical engineers might call a ‘network’, just to confuse laypersons who think of ‘networks’ as being something to do with the Internet). So each line in a netlist might define a circuit component, and its connections to other component in the network (i.e. circuit).

      A 200+ page netlist would thus define a circuit with thousands of components, probably mostly transistors given that this is an integrated circuit design.

      To address your questions, (1) whether or not the circuit described by the netlist, and around which the claims are drawn, is ‘new’ is a 102/103 question, so I am not sure how this is relevant to the current discussion; and (2) no, the ‘code’ does not describe instructions for performing a logical data processing task, it describes an actual hardware implementation of a cache controller embodying the claimed invention.

      The question of whether full disclosure of this one implementation entitles the inventors to a broad, functionally-defined claim such as claim 1 is a legitimate one. But, in this case, it is not one that can be answered by pointing at ‘code’ and then bringing all the usual anti-software-patent arguments to bear. Because, as the relevant skilled person immediately recognises, this patent specification describes and claims hardware. Yes, it claims that hardware functionally and, yes, that might be a problem (though whether under 101, 102/103 or 112 is less clear). But, I say again, I do not see how that could be determined on the pleadings, without benefit of claim construction and expert evidence.

  5. This case illustrates the essential truth that Supreme Court was using “abstract” in Bilski and Alice (also Benson and Flook) to state that math and business methods and the like are not within the four classes.

    But because they chose to use the term abstract to describe the legal problem with those claims, they also invoked O’Reilly v. Morse, which is all about claiming principles in the abstract – breath – where the claim does not include any inventive means or methods for carrying into effect the idea.

    Thus we have the odd situation where both the majority and the dissent are correct. The claims are directed technical improvements in computer systems and therefore are within the four classes. However they are stated at such a level of abstraction they cover all implementations, not just the disclosed implementations (apparently none) and not just the attached code and equivalents.

    Put another way, if a claim is too broad, it may fail Alice step two even if it passes Alice step one. Therefore, even if the claim is directed to one of the four classes, it may still lack an “inventive application.” Thus, one can conclude that failure of Alice step one is not sufficient to declare to claim ineligible because it may still pass Alice step two. But if it fails Alice step two, the claim is ineligible even if it passes Alice step one.

    1. Windmill ho on business methods (again)

    2. Is a claim that recites a fastener invalid or ineligible under 101 because the claim isn’t limited to a rivet? The term fastener is an abstraction.

      Otherwise, what is your definition of “too broad”? Sounds like you are conflating written description with eligibility. If a claim term is an abstraction, construe it under 112(f) and give it any support you can find in the spec or knowledge in the art for that term. If no suppport the claim is invalid.

      1. The term fastener is an abstraction.

        All “terms” are abstractions.

        But the answer to your question, of course, is “it depends on the claim.” The presence of the term “fastener” isn’t going to be per se fatal to a claim that also properly describes a novel structure in objective structural terms. This is true for the same reasons that a claim which recites a “computing device” isn’t going to be per se fatal to the claim.

        1. This isn’t the position set forth by Ned and it isn’t responsive in the context of what is being discussed. What is being discussed is the position that a vague or abstract term or phrase in a claim that purports to cover all known components of that abstract term are indicative of ineligibility. Ned’s complaint is that these abstract concepts or terms in the claim mean that the claim is necessarily ineligible.

          Finally, methods don’t require objective, novel structure to be eligible. See McRO, BASCOM, Amdocs, etc. where claims were eligible despite lacking tangibility or objective, novel structure.

          I realize that you don’t agree with the holdings in these cases, but they are indisputably controlling.

          1. Bluto, I think you misunderstand the point I make because you are not distinguishing between old and new elements or the purported invention being claimed.

            1. Ah yes, Ned and his importing of “Point of Novelty” in the 101 sense….

          2. BB This isn’t the position set forth by Ned and it isn’t responsive in the context of what is being discussed.

            You asked a question and I answered it directly.

            What is being discussed is the position that a vague or abstract term or phrase in a claim that purports to cover all known components of that abstract term are indicative of ineligibility.

            And the answer is that it depends on the claim and the “components” being described by that term. Yes, it’s nuanced! Grow up and learn to live with that, or get out of the business.

            methods don’t require objective, novel structure to be eligible.

            This isn’t a method claim, Mr. “Stay on the Topic.” Method claims certainly do have different requirements than composition claims. Specifically, methods that do not result in any new physical change to matter (or a physical change to matter achieved by a new means) are going to raise eligibility issues because they are likely abstractions (e.g., methods of “securing an account” and other such silliness). Don’t believe this? Just assert your junk against me or my clients and watch what happens. [shrugs]

            See McRO, BASCOM, Amdocs, etc. where claims were eligible

            Not worth the paper they were printed on. You’ll find out in due course. Most people are already aware of this. The exceptions? Desperate “innovators” and the desperate patent attorneys who prop them up. Please ask me to tell you about some of the other characteristics of these people. I’ve been watching them for a long, long time.

            I realize that you don’t agree with the holdings in these cases, but they are indisputably controlling.

            LOL Let’s see what the Supreme Court says. All it takes is one competent attorny and a non-compromised client and POOF buh-bye logic patents. Those junk self-serving utterly nonsensical opinions are wiped off the map in the blink of an eye. Everybody knows this. That’s why the maximalists are forced to behave like the worst shills on cable TV. You can never win an honest debate about the issue. Ever. And you never have.

        2. …and yet again, the advancing of the fallacy of “objective physical structure” as if that OPTIONAL claim format simply must be something other than optional…

        3. MM, correct. That is my position.

        4. All “terms” are abstractions.

          I am suddenly reminded of leaky things….

          😉

      2. Bluto, “the claim recites” is not even close to “the claim is directed to.”

        I have long tried to educate people here to the distinction. When claiming old elements, broad functional claiming is quite permissible in my view — the claim term should be construed to cover the disclosed means and every known equivalent or substitute.

        1. What exactly is “directed to” meaning then?

          Has not Congress spoken as to what exact entity gets to determine what an invention is “directed to?” (hint: yes, and it is NOT the Court).

        2. 35 USC 112(f) allows for every part of a claim to be stated in terms of function. There is no limitation in the statute or any case law that restricts the use of MPF to only situations where one is claiming old elements.

          No wonder people ignore your attempts to educate them on this fallacious distinction.

    3. Interesting comment. Would love to see Fed. Cir. or Supreme Court have to address that issue. It certainly is in accord with the analysis I frequently see where step one is considered in passing if at all.

      The problem, though, is that if you want to try to construe the test in some sort of coherent way (good luck), then the steps have to be related to one another. Almost any claim can be distilled down to an abstract idea. If step one alleges that a claim is directed to such a distilled abstract idea, then step two gives you the chance to show that the claim includes limitations that ensure that the claim is not at risk of monopolizing or pre-empting that abstract idea.

      One major issue is that although pre-emption is in theory the foundation for the abstract idea judicial exception, often “the test” is now used without any concern for, or discussion regarding, pre-emption. A test that may be a useful framework in the context of Morse is being misapplied in cases in which there are no pre-emption concerns. In some cases, this is considered acceptable because it is a convenient judicial shortcut for claims that are believed to not be worth patenting.

      The problem, however, is that this same reasoning can then be applied to bar claims that should be patent eligible, and subsequent actors may not realize, or may not care, that the previous decisions were based on a wink-wink understanding that the claims did not deserve to be patented. Shortcuts create problems. Claims that are obvious or lack an adequate written description should be tanked on those grounds, not on the naked conclusion that a claim lacks an “inventive concept” or that recitation in the claim represents “conventional” functionality.

      1. This same type of amorphous standard used to be applied in the context of 103 with the “flash of genius” type of tests established by SCOTUS:

        Found this interesting. Sounds a lot like the climate we are in today. I’m sure the patent-minimalists of the day loved the flash of genius test too:

        “It is clear that the time has arrived when legislative enactments must be forthcoming which will restore the patent law to a sound position. The current judicial trend, visible from many signposts, is toward the elimination of patents as a factor in American economic life. The question of what is to be considered a patentable invention is but one of a number of questions to be con- sidered as is indicated by the “Report of the National Patent Planning Commission” (XXV J.P.O.S. 455) and by the Committee Report to the Patent Law Associations of the United States, entitled “Program for the Develop- ment of American Patent Law and its Administration” (XXVI J.P.O.S. 104). Whether or not a “uniform test or standard” for determining patentability, as recom- mended ‘by the Commission, is possible or practical is doubtful. There is no doubt, however, but that the “flash of genius” should not be that test or standard. A statute which does no more than eradicate this cancerous mis- conception and which leaves to courts of original juris- diction the determination of each case upon its merits will he a real step forward.”

        link to calteches.library.caltech.edu

      2. pre-emption is in theory the foundation for the abstract idea judicial exception, often “the test” is now used without any concern for, or discussion regarding, pre-emption

        That’s not true at all. You just don’t understand “pre-emption.”

        All that “pre-emption” means in the context of 101 is that ineligible subject matter is protected by the claim in some prior art context (or all contexts — that would be complete pre-emption).

        It’s not a difficult concept at all. But you do have to have a certain level of intelligence and certain willingness to understand the issues before you wade into the water. Keep learning!

        1. preemption is a 102 or 103 issue and has no place in a 101 analysis. The fact the supreme court brought it into 101 was one of the major mistakes and misunderstandings of law it introduced. I also love how the antipatent forces do not use a full name. If you believe what you post have the courage to put your full name to it – as I do.

        2. To begin, which part of the quote do you feel is “not true at all”?

          I feel like it’s clearly true that “pre-emption is in theory the foundation for the abstract idea judicial exception.”

          I also feel like it’s clearly true that “often ‘the test’ is now used without any concern for, or discussion regarding, pre-emption.”

          Which one of these things is “not true at all”? I mean, I guess maybe you could argue that the latter isn’t true if you are just focused on litigation matters, but I still think pre-emption is often glossed over.
          Moreover, rejections coming out of the patent office frequently show no concern for pre-emption, omit any discussion of the issue, and are often even dismissive of it when it is raised.

          With that out of the way, I thank you good sir for your heartfelt concern that I am not intelligent enough to understand pre-emption.

          However, I would offer as a rejoinder that the relevant inquiry is not your own personal preferred interpretation of the term within your preferred framework for 101 analysis, but rather the Supreme Court’s views as set forth in its opinions. This is because it was the Supreme Court’s articulation of pre-emption as its basis for the judicial exception that I was referencing and discussing.

          The Supreme Court’s use of the term pre-emption arises in the context of its repeated statements that it believes that 101 “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice, slip op. at 5.

          Rather explicitly, the Court has “described the concern that drives this exclusionary principle as one of pre-emption.” Id.

          More specifically, the Court has made clear that the entire justification for the judicial exception rests on the premise that “‘[m]onopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it,’ thereby thwarting the primary object of the patent laws.” Alice, slip op. at 6 (citing Mayo, slip op. at 2).

          (Aside: As you sometimes seem to suggest that there is no such thing as a software innovation, logically it would seem to follow that under your world view there might not even be any need to be concerned with impeding innovation in software, thus rendering the abstract idea exception moot with respect to software.)

          If, on the other hand, you do believe it’s possible to have innovation in software, then you are still left with the reality that claims to software innovations only fall under the judicial exception to the extent that they risk pre-empting use of an abstract idea.

          Specifically, the Court has made clear that claims that claim the building blocks of human ingenuity and “would risk disproportionately tying up the use of [an] underlying [abstract] idea[] … are therefore ineligible for patent protection”, while those that “pose no comparable risk of pre-emption … therefore remain
          eligible for the monopoly granted under our patent laws.” Alice, slip op. at 6 (citing Mayo, slip op. at 20; 3-4).

          This is why I commented that it is concerning that section 101 analysis seems to frequently omit any consideration or discussion of pre-emption. It isn’t enough to just allege that a claim involves an abstract concept and identify that abstract concept. The Court has made explicitly clear that “an invention is not rendered ineligible for patent simply because it involves an abstract concept.” Alice, slip op. at 6. This is because “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Alice, slip op. at 6 (citing Mayo, slip op. at 2).

          It is with this in mind that the Court has warned that “too broad an interpretation of this exclusionary principle could eviscerate
          patent law” (Mayo, slip op. at 2) and that “we tread carefully in construing this exclusionary principle lest it swallow all of patent law” (Alice, slip op. at 6 (citing Mayo, slip op. at 2)).

          It seems abundantly clear that a judicial exception that the Court has explicitly warned against applying too broadly should only be applied when the concern that drives the judicial exception applies. The Court has made clear that pre-emption is the concern that drives this judicial exception.

          The Court has further made clear that claims that “pose no comparable risk of pre-emption … therefore remain
          eligible for the monopoly granted under our patent laws.” Alice, slip op. at 6 (citing Mayo, slip op. at 20; 3-4). Although the two part Mayo framework may at times be a useful proxy for this query, the reality still remains that if there is no risk of pre-emption, then there is no basis for applying the judicial exception.

          Thus, I remain concerned that the Mayo test is so often used without any discussion of pre-emption. I am even more concerned when discussion of pre-emption is dismissed as superfluous to the analysis. As the Supreme Court has made clear that the entire basis for the judicial exception is pre-emption, application of the judicial exception to claims which “pose no comparable risk of pre-emption” would seem to just be a naked disregard for section 101 as written without any justification.

          Contra your suggestion, I personally believe that this stuff is incredibly difficult to make sense of. To some extent that is because it isn’t always consistent. These are complicated issues that various actors have tried to grapple with over the years. It may be a necessary legal fiction to pretend that it is all consistent and coherent, but that doesn’t make it so. We are all still left to wade through the comments and holdings that we have and try to divine where the law stands.

          Some posters on here make an honest attempt to do that. Others prefer to comment on what they think the law should be, whether for policy reasons or other reasons. Any of these approaches can be valuable and represent valuable comments, but I don’t think it’s very productive to pretend that there is a right answer. Sometimes your posts come across as suggesting that there is such a right answer, and everyone who doesn’t get it is either not smart enough or biased by some hidden agenda.

          If there’s one thing interacting with patent examiners has taught me it’s that just because I don’t understand another party’s position doesn’t mean they don’t have a point. And you do have some solid points at times. But frequently you seem to express your views in a way that doesn’t make people very inclined to listen.

          I make errors. We all do. To the extent that I’m missing something, or misconstruing something, I’m always happy to hear it. But it might be nice if you would extend me the same benefit of the doubt I extend you, and try to explain where you think I’m mistaken, rather than simply telling me that I’m not intelligent enough to understand.

          Cheers!

          1. This is why I commented that it is concerning that section 101 analysis seems to frequently omit any consideration or discussion of pre-emption.

            You made that comment because you are dishonest or you are uninformed. It’s simply a false statement. And I don’t have a problem calling you out and insulting you because you need to be insulted and you deserve to be insulted. Don’t like it? Grow up. Learn. Stop reading horsecarp on blogs that are nothing but echo chambers for your own horsecarp.

            Discussion of pre-emption is frequent because desperate junk peddlers always bring up the lack of “total pre-emption” by their claim to argue eligibility and the district courts and the CAFC always remind them that is not how “pre-emption” is dealt with in the 101 analysis.

            The concern with “tying up building blocks” does not translate into a test wherein “if your claim doesn’t tie up all the fundamental building blocks then it’s eligible.” The issue is whether any ineligible subject matter is protected by the claim in any context. Then you’ve got a 101 problem. The policy underlying this fact is that if you start allowing people to claim the little pieces in every context then (wait for it ….) the fundamental building blocks get tied up in patents.

            Get it? This really isn’t that hard.

            Oh, and logic is one of the fundamental building blocks.

            This is the Supreme Court winning argument right here. All it takes is a competent attorney and a non-compromised client and logic patents go POOF bye bye.

            I make errors. We all do. To the extent that I’m missing something, or misconstruing something, I’m always happy to hear it.

            LOL Yes, I’ve heard this before. Yes, you are dishonest.

            1. Nothing here besides Malcolm saying (in a much more long winded manner): “because I say so.”

              “Logic patents”

              How is that copyright project coming along?

            2. I asked a very simple question. Specifically, I asked which part of my comment that you quoted and alleged is “not true at all” do you feel is “not true at all”?

              As noted previously, I feel like it’s clearly true that “pre-emption is in theory the foundation for the abstract idea judicial exception”, and similarly feel like it’s clearly true that “often ‘the test’ is now used without any concern for, or discussion regarding, pre-emption.”

              I asked you, quite simply, which one of these things is “not true at all”?

              Rather than answer, you dissemble by tilting at a strawman windmill that you built yourself, and then throw out libelous comments about how I’m dishonest.

              There is a legitimate and difficult discussion to be had about the proper scope and contours of the judicial exception to 101 eligibility. It is becoming increasingly clear that you have little desire to participate in that discussion.

              Cheers!

              1. JCD,

                As is well known here, you alight upon Malcolm’s standard operating procedure.

                His Accuse Others Of That Which Malcolm Does IS his number one meme – and comments noting instances of the behavior with a shortened acronym were so numerous that the acronym itself was banned and added to the editorial filter list of George Carlin like “swear” words.

                Never mind that the offending comments to which the moniker attaches were left unchecked.

                On the last “let’s have a good ecosystem” thread, evidence was provided that this is exactly how Malcolm has been for eleven years.

                On top of that, for some reason, Malcolm appears to have a substantially higher “count” limit on posts per thread per day.

                What perception do these facts create for you?

      3. My point is fairly simple: if the idea of the claim is directed to technology, presumably passing step 1, it may still fail step 2 because it is claimed at the level of an idea, an abstraction.

        Rubber-Tip Pencil is what I have in mind here. No doubt a pencil with a rubber eraser would be a patentable invention — a new manufacture, but the claim did not claim any structure but simply the idea that a piece of rubber could be used on the head of a pencil. Everything in the claim that was structure was old and well known.

        1. “Claimed at the level of an idea”

          Now, I know that that phrase has been around for awhile, but what exactly does that mean?

          After all, ALL claims are ARE words on a piece of paper, and as such, ARE merely ideas (along the lines of “This Is Not a Pipe” by Magritte).

  6. “wherein a programmable operational characteristic of said system determines a type of data stored by said cache.”

    “wherein a programmable operational characteristic of said system determines a type of FUNCTION PERFORMED by said PROCESSOR”

    Absolutely no difference, and yet the current Alice nonsense tries to suggest the latter is “abstract” because Judges believe hardware “processor” is conventional, but not being familiar with hardware “cache” have not pigeonholed it yet into 101 oblivion. The current state of 101 jurisprudence is a pathetic irreconcilable mess that experienced practitioners know is a joke, but can’t laugh about because it was imposed by clueless jurists above them that they still have to pretend to respect. Its like watching little Anthony in the Twilight zone Cornfield episode take a dump in the living room, and the adults have to pretend its really a rose.

    1. JNG, I sense your pain and understand your confusion. The Supreme Court is using words in a way contrary to their ordinary meaning. But I try to make sense of today’s ruling by the Federal Circuit in the post above at number four. Take a look.

      There is no doubt that a processor is within the four classes and that the claim as a whole in this case is largely directed to improvements in computer technology – but claimed at the level of an idea. When one is claiming an idea, simply including a number of conventional elements is not sufficient. One has to include in the claim not just the idea of doing something, but the means or methods of doing it – or refer, as in § 112(f), to the corresponding structure or method described in the specification.

      At least according to Judge Hughes, both the claims and the specification fails to delineate any specific method for carrying out the idea. But as pointed out by Dennis and the court itself, the specification does attach computer code that arguably could provide one of ordinary skill a specific way of implementing the invention. But the law does not allow one to claim beyond equivalents of the means disclosed. The claim in this case does.

      1. JNG, I sense your pain

        LOL

        My heart bleeds for JNG, the multi-millionaire. Poor widdle b@ by attorney. If only he could get a zillion dollars for every patent he cranks out the world would be such a better place. Why such resistance to his brilliance?

        Must be “jealousy”, right? <—- LOLOLOLOL

        1. Your attempted insertion of some type of classISM is offensive.

          There is zero tie to the merits with such ad hominem.

          For all of the “grow up” that you screech at everyone else, the best place FOR YOU to show the way is stop your number one meme of Accuse Others and stop with your baseless ad hominem.

          Try (just try) that little tactic that I shared with you previously. After you dump your feelings into a post, check to see and remove your ad hominem. If you have nothing left in the post (and aside from the trite and tired scripts), then hit the little “X” in the top right corner instead of the “post comment” box below.

          Everyone thanks you in advance.

  7. The right decision. Hughes shows again that section 101 is all about breadth. It’s like the event horizon of a black hole. Cross the horizon with broad claims and the law start to break down.

    1. Eligibility problems can arise as a result of breadth. But they can also arise when the claim is incredibly narrow.

      It’s definitely not “all about breadth”. It’s not even clear how or why anyone could possibly think that in 2017, unless it’s a banal observation that could apply to every statute (e.g., “103 is all about breadth”; “112 is all about breadth” etc).

      This much is true however: if code is relied on to save the claim, then the claim needs to recite the code (or otherwise be limited to the code). And the code presumably works on a particular operating system that must also be part of the claim (unless code that doesn’t work is sufficient — that would be a very odd result, even odder than reading the code into the claim).

      Also, Enfish’s claim was junk. There was no technological improvement there — per the CAFC, as I recall.

      1. This is not a “software patent”. The code in question is a CDL (Circuit Description Language) representation of a hardware implementation of the memory system. What, exactly, this implies in terms of the structures disclosed, and/or their equivalents, as well as what this means for any analysis under 112 might well require expert evidence. It is certainly not something that I could imagine being appropriate for judgment on the pleadings.

        CDL, as I understand it, is a netlist-based language. It is therefore essentially equivalent to a circuit diagram. Had this instead been represented as dozens of pages of transistor-level circuit diagrams, would you be so ready to insist that the claim should (somehow) “recite” the circuits?

        1. Good catch and good point.

          Dennis is spot on that enablement needs to be addressed. If enablement law was clear and workable, especially at the examination stage, then enablement concerns wouldn’t bleed into 101 so much.

          1. Enablement bleeds because that (conflation/obfuscation) is what is desired.

          2. Enablement is fine. In most electronic tech, description of the result is almost always enough for one of ordinary skill in the art to kludge together a crappy but functional system for achieving the result.

            The problem is lack of possession of all the ways of achieving that result.

            If 112(a) was applied to broad, functional software claims the way it should be, Alice never would have happened. (And a lot of patent prosecuters would’ve made a lot less money).

            1. If 112(a) was applied to broad, functional software claims the way it should be, Alice never would have happened. (And a lot of patent prosecuters would’ve made a lot less money).

              Yup.

              The maximalists have always wanted it both ways. They want us to believe that coding is some “technical” field (as opposed to writing instructions for a computer) and they also want us to believe that all you need to do is describe the function because then anybody can implement the result in an infinite number of ways and it would be oh-so-unfair to limit patentees to a subset of those ways.

            2. I think we are on the same page, but I don’t quite follow how 112(a) should have been applied to functional software claims. Could you explain?

              I think that you are getting to the core of 112(a), which is that it is a codification of conception and constructive reduction to practice. The invention claimed is not the invention conceived and reduced to practice – therefore the patent claim is invalid for over breadth.

              1. What does “constructive reduction to practice” mean to you, H2H?

                (no snark)

                1. At a high level, instead of actually reducing my invention to practice with working prototypes/samples, I describe “embodiments” of my invention with enough detail to: (i) describe what actual reduction to practice of my invention would look like, and (ii) enable one of ordinary skill in the art to practice it.

                  Over breadth is a problem under 112(b). The claims are supposed to particularly point out and distinctly claim what the inventor’s regard as the invention. So a 112(b) rejection for over breadth is essentially the the PTO telling the Applicant that they are a liar because what’s in their specification/drawings does not show the inventors were in possession of the invention claimed at the time of filing.

            3. If 112(a) was applied to broad, functional software claims the way it should be, Alice never would have happened.

              I agree with the spirit of this remark (a lot of claims that have been tanked under Alice rightly deserved to die), but I guess I take issue with the “Alice never would have happened,” because that implies that Alice was a logical result of the earlier error. It was not.

              Alice was decided on the basis of §101. This was a crummy basis on which to decide the case. The law would be much more intelligible and intuitively fair (and it is a positive social good for the law to be intelligible and intuitively fair) if Alice had been decided on §112(a). Why was it not? Why did courts (and litigants, and amici) up and down the chain decide that they would rather decide Alice on the basis of §101? That was a colossal and totally avoidable error.

              Alice (as we know it) never should have happened, and even now should be legislatively repealed, so that we can get the law back on track, where bad claims like those in Alice are tanked on written description grounds instead of subject matter eligibility.

              1. Why?

                See post 2.1.1.1.1.

                Courts and their addiction to shoving their fingers into noses of wax and all..

                1. Courts and their addiction to shoving their fingers into noses of wax and all.

                  True. As you know, I agree with you that we would do well to strip patent cases from the Supreme Court’s certiorari jurisdiction. Hopefully once the CAFC is no longer in range of the SCotUS’ fire hose, they will cease behaving like the sprayed monkeys to which you have (fairly appositely) compared them.

              2. I don’t mean to suggest that Alice itself is logical. But I think an Alice-like upheaval of the rules regarding software patents was a predictable event given the circumstances.

                I don’t know why 112(a) wasn’t brought up in Alice, or why the equivalent language wasn’t brought up in Halliburton. It is a bit astounding how historically late Lizardtech and Ariad came after the 1952 act. I suspect that the opinions of a certain pillar of the CCPA and CAFC delayed the earnest application of 112(a). (I.e., In Re Fuetterer: ‘applicant described using any X to get result Y in the spec, so claims to any X to get result Y are definitely not too broad!’)

                1. It is a bit astounding how historically late Lizardtech and Ariad came after the 1952 act.

                  I agree 100%. It is also a tad distressing how many in the profession howled (and still howl) at the Ariad decision as if it represented some pernicious expansion of the written-description requirement, when really Ariad represents perhaps the most faithful application of the original intention (see, O’Reilly v. Morse) of the written description requirement ever expounded.

                  I suspect that the opinions of a certain pillar of the CCPA and CAFC delayed the earnest application of 112(a).

                  Hm, I cannot agree with you here. Judge Rich was an eager proponent and brilliant expositor of the written description requirement (e.g., In re Ruschig, 379 F.2d 990 C.C.P.A. 1967). Meanwhile, far from clearing the way for overbroad functional claiming, In re Fuetterer, 319 F.2d 259 (C.C.P.A. 1963), if followed faithfully, would have prevented exactly the problems that you and I are both presently lamenting.

                  Judge Rich quite definitely did not just say that “the spec says ‘any X to get result Y,’ so claims to any X to get result Y are definitely not too broad!” Rather, Judge Rich said that “inorganic salt that is capable of holding a mixture” is a means-plus-function limitation. In other words, the reason why that language is not too broad is because it is limited to the four salts that were disclosed in the spec, plus “equivalents.”

                  That is exactly the right way to solve the problem of “overbroad” functional claims. You say that the functional term (even where it does not involve the magic word “means” or “step”) is limited according to the provisions of §112(f) (§112, third paragraph back then). If this approach had continued in legal effect, the whole Alice problem would never have emerged, because no one would bother to pursue a claim like the one in Alice, knowing that its functional effect would be limited to the exact algorithms (or perhaps code) disclosed in the application.

                  It is only because of later precedents creating a “strong presumption” that sixth paragraph is not invoked unless one uses the magic words “means” or “step” that Fuetterer was not able to prevent the Alice tragedy. Fuetterer was part of the solution, not part of the problem.

                2. I agree that applying 112f to all functional claims would solve the problem.

                  I did not recall Fuetterer interpreting those claims under 112-3rd, and having reread it just now, I’m not sure you’re correct.

                  He does mention in his discussion of the functionality rejection that “the use of such functional statements as here appear is specifically sanctioned by the third paragraph”.

                  Later, discussing “undue breadth”, he does not mention the disclosed embodiments, and characterizes the ineventor’s claim as “any inorganic salt capable of…”.

                  As his discussion of breadth doesn’t invoke 112-3rd, I don’t think that those claims were interpreted as MPF. Instead, he was using 112-3rd to justify functional claiming at large.

                3. I did not recall Fuetterer interpreting those claims under 112-3rd, and having reread it just now, I’m not sure you’re correct.

                  Lord knows that I have been wrong before, so it could be that I am wrong here, but I do not think so. I see three lines of textual evidence in the opinion text that Judge Rich is invoking §112(3) as the reason why these claims are allowable.

                  (1) 319 F.2d at 264

                  we are also unable to agree with the solicitor when he states that “the last paragraph of 35 U.S.C. § 112 is by its very language limited to claimed combinations involving mechanical structures or apparatus and methods.” The word “combination” in this paragraph includes “not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim.” P. J. Federico, Commentary on the New Patent Act, 35 U.S.C.A. Vol. 1, p. 25 (1954). We agree with that statement in the commentary, which is fully supported by the legislative history.

                  If Judge Rich is not relying on §112(3) to save this claim, why bother mentioning that §112(3) is not restricted to mechanical elements? This point would be wholly irrelevant if Judge Rich were not interpreting the disputed limitation as §112(3) limitation.

                  (2) 319 F.2d at 265

                  Inasmuch as… the use of such functional statements as here appear is specifically sanctioned by the third paragraph of 35 U. S.C. § 112; and… no objection has been made to the sufficiency of appellant’s invention description to support in nonfunctional terms the functional statements made in the claims, we reverse the rejection of the instant claims as functional.

                  Notice that Judge Rich explicitly invokes §112(3) as part of why he is reversing the rejection. Notice also, that before he can get around to reversing, he must also observe that no one has alleged that the spec lacks the necessary structural support for a §112(3) claim. Once again, why bother to mention these points if he were not interpreting “inorganic salt that is capable of holding a mixture” as a §112(3) limitation?

                  (3) Id.

                  It is clear that the instant claims do not comprehend a class of inorganic salts of any greater breadth than is comprehended by the invention description.

                  This line comes with a footnote, that refers us to another footnote that quotes the portion of the spec that lists the four disclosed salts.

                  Do you know why his claims do not extend to a class of inorganic salts that is any broader than his invention description? Because Judge Rich is reading this limitation as a §112(3) limitation, which is—by definition—no broader than that which is disclosed by the text to a person of ordinary skill.

                  If you will permit me to make so bold as to offer a comment on your skepticism, I would submit that the reason why you doubt that Judge Rich is treating this limitation as a §112(3) limitation, it is because you are approaching this 1963 case through the lens of 1990s and 2000s case law. Nowadays, most of us reading “inorganic salt that is capable of holding a mixture” would say “hey, it says ‘inorganic salt,’ not ‘means’ or ‘component’ or some other such nonce word, so clearly this cannot be a sixth paragraph claim element.” Judge Rich, however, was writing this case in the days before Lighting World Inc. v. Birchwood Lighting Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004) crystalized the “strong” presumption against finding that a claim invokes §112(6) unless the claim uses certain magic words. Rather, Judge Rich was working in a world in which people still understood the original intent of §112(3), and applied it in all situations in which it was intended, instead of a few narrow circumstances in which magic words are used.

          3. Hokie2Hoya, enablement is not the only issue. One has to actually describe enough examples to claim a genus covering the range. If one simply describes a blank box and the results it achieves with programming but not the programming even in an algorithmic form, then one has not described the invention, only the desired result.

            Moreover, merely describing an algorithm does not entitle one to claim the result it achieves because such a claim covers all algorithm achieving the result.

            1. I think I see your basic analysis. But over breadth is a 112(a) issue since that is where conception/reduction to practice were codified in the ’52 Act. The invention claimed is not the invention conceived of and constructively reduced to practice by the patent disclosure.

              This is an examination issue, without any workable way for examiners to address it.

              1. H, please explain a little bit more about 112(a) and its relationship to conception/reduction to practice.

                FYI, 112(a) is a requirement introduced by crown in 1711. The directive was that every patent have a specification describing the invention and enabling those of ordinary skill in the art to make it and use it. Later, Lord Mansfield really put some teeth into the requirement – invalidating patents for insufficient specification. To Mansfield, the disclosure was quid pro quo for the grant.

                This requirement carried over into our very first patent statutes and remains today.

                1. Ned, , 112 sets forth the requirements for a filing/priority date. The touchstones historically being “invention” and that being “conception” and “reduction to practice.” Filing the application is now constructive reduction to practice if the conditions of 112 are met. Look at the Enzo decision, the question answered wasn’t whether the public got enough value out of the disclosure or a quid pro quo was reached (though there was some dicta), the question was whether the inventor was actually in possession of the invention at the time of filing. An inventor is only entitled to a priority date /’date of invention for her invention

            2. Algorithms aren’t structures and they have no structure that is meaningful in the context of our patent system. You are dancing on the head of a pin and it looks very very silly.

              1. Your view of what is and what is not structured as that term is used in the legal context is in error.

        2. “Had this instead been represented as dozens of pages of transistor-level circuit diagrams, would you be so ready to insist that the claim should (somehow) ‘recite’ the circuits?”

          Note that Malcolm did not answer your question, moved the goal posts, and then kicked up a bunch of dust.

      2. Ah ha! So you don’t like Enfish – thus you want to make all computer patents ineligible ok then. No I know it isn’t worth my time to read any more of your comments – good to know. We operate on incredibly different philosophical starting points. I beleive those who invent knew things deserve money, fame and protection. You obviously do not. Thus, we will never agree. Further discussion between us is moot.

  8. I agree with the majority that the claims are patent-eligible.

    I agree with the dissent that the claims are not patent-eligible.

    This is easy to do since the principle in play has no meaningfully limiting principle. “Alice” really should be called “the patent litigator full employment and relief act of 2014.”

    1. Three words: Void for Vagueness.

      Yes, the concept DOES apply to laws beyond criminal law….

      1. Anon, does it apply to judicially created laws as well? If not, it certainly should.

        1. According to the Supreme Court, they are NOT creating law (merely interpreting law already created).

          If they ever get to the point of admitting what they are doing, Void for Vagueness is not the only Constitutional infirmity that they would be facing.

          But yes, to answer your question, a law written by the judiciary can be Void for Vagueness.

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