Will the Supreme Court react to a Business Method Patent Held Valid?

by Dennis Crouch

In Amdocs v. Openet Telecom, a Federal Circuit panel reversed the lower court’s ineligibility finding over a vigorous dissent.  Judges Plager and Newman versus Judge Reyna.  Claim 1 of the disputed business-software patent is shown below.

1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising: computer code for receiving from a first source a first network accounting record; computer code for correlating the first network accounting record with accounting information available from a second source; and computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

U.S. Patent No. 7,631,065.

Although the Federal Circuit walked through its Alice/Mayo analysis, I expect that a more infringer-friendly panel would have almost certainly sided with the district court. Now, Openet has petitioned the Supreme Court for writ of certiorari – arguing that the Federal Circuit improperly reached beyond the clearly overbroad claims when making its decision.

Question presented:

Whether the Federal Circuit erred by looking beyond the claims to the patent specification to assess patent eligibility?

The case here is interesting. Rather than pushing back against Alice and Mayo as many patent attorney suggest, the petitioner here argues that the Federal Circuit is subverting those cases to find claims eligible when they clearly are not.  It is possible that the Supreme Court could simply issue a one-line opinion: “Vacated, see Alice/Mayo.”   I would look for several amicus briefs on each side of this one.

The unfortunate aspect of this case for most patentees is that it is another business method case — business method patents are unlikely to see friendly eyes from the Supreme Court.

[Petition][Federal Circuit Opinion]

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.

102 thoughts on “Will the Supreme Court react to a Business Method Patent Held Valid?

  1. Once again, I am reminded of the court’s reprimand to Young Mozart in the film Amadeus. When asked for its opinion on Mozart’s masterpiece it agonizes for ages, then hesitantly declares its concluded view: “Too many notes”.

    Why reminded? Because this time around, the court is uncertain as to how much detail there needs to be in the claim, in order to jump the 101 eligibility hurdle.

    All three judges are agreed, that there is something in the complete score, the specification, that one could discern as an inventive concept. But they differ on the claim, Reyna declaring of it “Not enough notes”.

    I find this approach deeply unsatisfying, both as a test of eligibility and as a touchstone for those called upon to advise clients what subject matter is eligible and what is not.

    Further, I regret the trend of 101 jurisprudence, to fix “inventive” as something other than the antonym of “obvious”. No good will come of it, mark my words.

    1. A point upon which we may find accord, MaxDrei.

      You, me, and the Congress that rebuked our Supreme Court with the Act of 1952.

    2. The court made a point of stating: “Importantly, these components are arrayed in a distributed architecture that minimizes the impact on network and system resources. Id. at 3:56–65. Through this distributed architecture, the system minimizes network impact by collecting and processing data close to its source. Id. The system includes distributed data gathering, filtering, and enhancements that enable load distribution. Id. at 4:33–42. This allows data to reside close to the information sources, thereby reducing congestion in network bottlenecks, while still allowing data to be accessible from a central location. Id. at 4:35–39. Each patent explains that this is an advantage over prior art systems that stored information in one location, which made it difficult to keep up with massive record flows from the network devices and which required huge databases. See, e.g., id. at 4:39–42.

      The court finishes its analysis stating: “Similar to the other examined claims in the patents at issue, representative claim 1 recites a series of limitations that, when considered individually and as an ordered combination, provide an inventive concept sufficient to confer eligibility. While the components and functionality necessarily involved in the ’797 patent (e.g., ISMs, gatherers, network devices, collection, aggregation, and enhancement) may be generic at first blush, an examination of the claim in light of the written description reveals that many of these components and functionalities are in fact neither generic nor conventional individually or in ordered combination. Instead, they describe a specific, unconventional technological solution, narrowly drawn to withstand preemption concerns, to a technological problem.”

      It appears to me that the technological solution of “do it in a distributed architecture” could just as easily been equated to “do it in a mobile telephone system” of TLI, which in turn was equated to “do it on a generic computer.”

      If using a distributed architecture was in fact a well-known conventional solution to the problem of network congestion, then merely limiting the concept of enhancing an accounting data record with supplemental information from a second source to this technical environment should have been found ineligible, IMO.

      If, however, the specification (and plaintiff’s counsel) did not (or would not) admit that using a distributed architecture to reduce network congestion was conventional in 1997, then the court had the opening to do like it did in Bascom and enhance the inventive concept to something that was “sufficiently more.”

      1. AIGC, If the claims included the objective system architecture as what was being improved, the claims would have passed 101.

        The problem is that the claims were not limited to such a system, but merely called for doing something old — updating a record.

        1. Ned, I agree that claiming the structure of an improved system architecture would pass 101.

          You mentioned below in 9.1.3.2.1.1.1 that inventing a more efficient way of processing data would improve the computer because it takes less time to do the same thing. I assume we can agree that claiming such a new way of processing data should pass 101 as well.

          There is a curve ball in this case since the court had undertaken a claim construction from an earlier proceeding in which the term “enhance” was construed to mean to apply a number of field enhancements in a distributed fashion close to the source of network information.

          I assume that reading in this additional language from the spec into the claim allowed the court to characterize the step of “enhancing” as a more efficient way to process data (supplement a data record with information from a second source).

          My problem is that, even with this narrowing claim construction, the claims still merely call for doing something old or abstract (updating an accounting record with supplemental information from a second source) using known or conventional computer processing techniques (in a distributed fashion close to the source of network information).

          Like the claims in Alice, where the Court had to deal with a stipulation that some methods steps required a computer, here the CAFC had a construction that the claims necessarily required a distributed architecture. I see no rationale for treating the claims here differently since the purported technological improvement results only from a (generic) distributed architecture, which was read in but not recited in the claims (just like Alice’s generic computer in its method claim).

          1. Ned, I agree that claiming the structure of an improved system architecture would pass 101.

            Sorry to break it to you, but the Supreme Court does not agree with you.

            Something about the “Gist/Abstract” sword comes to mind 😉 .

    3. Max, “inventive” application means “new (or improved) machine, manufacture, composition, etc.”

      1. Ned,

        You are conflating and leaving out WHY Congress acted in 1952 to remove the common law authority previously granted to the judicial branch to set the meaning of the word “invention.”

        We’ve been over this.

        1. anon, we did go over “this.” Congress simply did not do what you say it did, and so ruled the Supreme Court in Graham.

          1. and so ruled the Supreme Court in Graham.

            YOU were the one once that produced a reference warning of the danger of taking DICTA as a new law, and Graham‘s “finger’s in the wax nose of 101” was the WORST type of dicta possible.

            Sorry, but the Court does NOT have that type of power.

  2. In Deener, all the machines were old. The only thing new was the combination of steps for the process to process grain.

    Again, the game being played is the anti-patentist are generating abstractions that have no meaning in the context of technology, science, and patent law.

      1. Let’s be absolutely clear about this: the “alt right” has no monopoly on being anti-PC.

        The article seems to make the matter into some type of binary view. It is just not so.

        Being anti-PC is merely being pro-think-for-yourself. Many of the “alt-right” do not meet this aspect of being anti-PC, and tend to be merely anti-anything-Left.

        There is a H U G E difference.

        1. “Let’s be absolutely clear about this: the “alt right” has no monopoly on being anti-PC.”

          For sure.

          “The article seems to make the matter into some type of binary view”

          That’s because that’s what lefties do, “you’re either with us or agin us, there is no middle ground”. And that is because currently lefties are not moderates, they want to artificially try to make people equal, or at least more equal, at great cost if necessary. That’s part of “cultural marxism”, artificial equality. And whitey has traditionally bowed to their demands / emotional manipulations, so they’re all emboldened to spend spend spend away.

          “Being anti-PC is merely being pro-think-for-yourself.”

          Only a white cis hetero patriarch (of either gender and of any ethnicity) has the priv of being able to see it that way though. The people outside the white cis hetero patriarchy (either by choice or not) tend to be vulnerable to the rhetoric of lefties telling them that their lot in life is tots mcgots whitey’s fault. Whereas if you just “think for yourself” you can comfortably still live a comfy white cis hetero patriarch life (in what passes for a “society” that remains), however there are quite a lot of people that will not get to comfortably still live a comfy white cis hetero patriarch life if they “think for themselves” and arrive at any thoughts that differ very much from the lefty handout/entitlement agin whitey based view. If you understand what I’m saying.

          In other words, if you think for yourself and differ from leftism on a topic then you, and those you know, probably don’t lose much. If someone that is not white cis hetero patriarchial does so they, or those they know, may lose some or even much.

          “Many of the “alt-right” do not meet this aspect of being anti-PC, and tend to be merely anti-anything-Left.”

          Mmmmm, idk about that, I don’t even know what you mean. The actual alt right are all about white identity, and to that end, white interests. Their “thinking for themselves”, based on info provided unto them (rightly or wrongly) leads them to believe that they like to consider themselves as white and that white interests broadly affect them and other white people.

          Let’s be clear though anon, what we’re witnessing in real life is near certainly the shifting of the overton window. Which is a fascinating phenom.

          1. Serious question for 6 and “anon”: have either gotten laid in the past ten years?

            I mean by a real peson, not by a blow-up doll or some virtual anime thing.

            1. MM pulls the “code pink” lefty card, as it’s called, for the tenth time. MM bruh nobody cares about your insinuation, and I’ve been over and over the large extent of my own hedonism in the last few years. We’re too busy magain’ while you’re busy crying and wearing a pu ssy hat.

              1. We’re too busy magain’

                Yes, we all know that sitting in mom’s basement with your face pressed up to the p u k e funnel takes up most of your precious time. All I’m saying is that you’ve got a whiff of the Steve Miller about you. It’s strong. Is that a winning formula, you think?

            2. If that is your “serious” question, then I have one for Prof. Crouch:

              How is not nearly everything that Malcolm posts not offensive to you?

              Like 90% of what he posts has nothing to do with patent law, is patently offensive being riddled with ad hominem and precious nothing else beyond a short and tired script, or both.

              At least with the “attempt at civility” with the DISQUS system, one could see all of Malcolm’s posts co-located and literally see the mountain of
              C
              R
              P
              that he engages in.

              But the pretending of wanting one thing while the actions say the opposite can only create perceptions that do not reflect well on you.

              And eliminating this post under some “don’t talk about meta” – while letting Malcolm run rampant does not help you either. I am surely not the only one in the patent blogosphere who sees the disjoint between professions of “offense” and actions towards what is easily this site’s single largest source of blight.

              1. How is not nearly everything that Malcolm posts not offensive to you?

                Says the guy with whose face is stained brown from sniffing up 6 and NWPA’s oh-so-civilized behinds.

                Please keep the laughs coming, “anon.”

        2. “anon”: Being anti-PC is merely being pro-think-for-yourself.

          LOL

          Because if you think Perznt Mango Hairball is a r@ cist mi s0gyinist bttwipe and you aren’t afraid to say so, you can’t possibly be thinking for yourself.

          But filling your di@pers in public on a patent bl 0g worrying about “ivory towerism” and “commies,” well, that’s the height of bravery.

          So it goes in “anon”s world. He’s a very serious person! Very deep.

          1. Your poker tell of “so serious does not hide the fact that you are attempting to do that “everyone who does not agree with me is in one bucket” thing again.

            Oh wait, even 6 mentioned that: [“The article seems to make the matter into some type of binary view”] – “That’s because that’s what lefties do, ‘you’re either with us or agin us, there is no middle ground’.

          2. on a patent bl 0g

            I do hope that you realize that there is a difference between discussing things that affect patents – “on a patent bl og” and the incessant simply political whining that you engage in (which draws such comments as the immediate ones).

            The points that i present that you merely want to denigrate ARE things directly affecting patents. Your own political rants – not so. This has ZERO to do with any notion of “afraid to say” or not. ZERO. That you think yourself somehow brave for ranting under a pseudonym on a patent blog is a rather sad commentary on you. That you so rant all the while YOU are this blog’s own version of Trump is…

            well…

            stultifying.

        3. Many of the “alt-right” … tend to be merely anti-anything-Left.

          But “anon” — in stark contrast — shares many views with the left! Sure he does. He just prefers to publicly obsess over “ivory towerism” and “commies” and “political correctness” because … reasons. He’s a very deep and serious person!

          1. Where does this “shares many views with the left” come in and why would such be anything but a non sequitur?

            Maybe try less ad hominem (you clearly aiming at the speaker) and focus on the merits of the item presented.

            I know that such would need you to break your 11 year habit, but at least try.

    1. In Deener, all the machines were old.

      In any composition (another statutory class of eligibility), all of the constituent subatomic particles are old. As is the “law of nature” manner of how any configurations of those subatomic particles (as well as those of the larger configurations of groupings of those subatomic particles), and yet those preaching an anti-software view – if their ‘logic’ were to be extended – would nullify an entire ‘nother statutory category on its face.

      Therein, the Big Box meme is a slap in the face of the anti-software folks. Some (Malcolm in particular), have a difficult time grasping this, and think that the meme is a support for software patenting. Other, like Ned, somehow think that only a new manner of how software is functionally related would be patent eligible (which would be analogous to requiring any new composition to be put together through some new and improved “natural law.”

      It is no surprise then that the sAmeones (and not just merely someone) refuse to understand that software is a machine component and manufacture (as that term is understood in patent law).

      Once basic principles and facts of the art are put on the table and treated in an inte11ectually honest manner, most all of the anti-software arguments crumble to dust.

      1. the Big Box meme is a slap in the face of the anti-software folks

        This “meme” (LOL) is more like a running joke at your own expense but, hey, knock yourself out with it! After all, you’ve had such remarkable success with your “memes”, after all. Victory after victory at the Supreme Court …

        1. more like a running joke at your own expense

          LOL – you persist in not grasping this and want to turn this around as a joke on me… Ah yes, Malcolm’c number one meme of Accuse Others…

          Victory after victory at the Supreme Court …

          Non sequitur at best. Maybe you should pay attention to why the scoreboard is broken instead of mindlessly referencing a broken scoreboard.

  3. Ned,

    Held in moderation (the anti-actual-dialogue-blocking-automatic-moderation)…

    To your post at 14.1.1 (Listen anon, it is that simple. Truly.”, I responded:
    Truly not.
    You have yet to pass the Grand Hall experiment, and you constantly omit a key fact that to “just use” a computer with a new program you first MUST reconfigure that computer TO “just use” the new program.
    I would also add a reminder that you have not addressed this counterpoint and tht you continue to attempt to use a machine “magically” that has not been changed with a machine component called software. Further, I would add that your attempted reliance on Hotel Security (based solely on the incorrect use of that case by Justice Stevens in his attempt to wipe out actual words of Congress in the Bilski case) has been critically panned by both Prof. Crouch and another poster, David Stein, who took the time to detail, point by point, case by case, just how off your attempt has been.

    To your post at 9.1.3.2.1.1.1, I replied:
    The new program is like the old program from the point of view of the computer.
    Except of course that it is not (otherwise the old program would DO what the new program does, and you would be able to re-establish your hard drive with your Britney Spears CD).
    in much the same way since the first stored program computer was invented in 1946
    That is most definitely NOT the meaning required in the exceptions to the judicial doctrine of printed matter, Ned.
    You are falling to the Big Box of Protons, Neutrons, and Electrons fallacy.

    I would add that your Big Box fallacy is that you are attempting to discount “any improvement thereof” by making ALL improvements by way of software unpatentable because of the mode of improvement (“software”). There is ZERO basis in patent law for this action, and in fact would be directly analogous to attempting to discount “any improvement thereof” by making ALL improvements by way of hardware unpatentable because of that different mode of improvement (“hardware”)

    These are NOT new points. These are merely points that you have attempted to NOT answer (repeatedly) and in the sense of an Internet shout-down, you stick your fingers in your ears and chant your same spiel without the decency of replying to the valid counterpoints presented to you.

    Such is inte11ectually dishonest – and you should be well aware of that.

  4. Ned >>as data is neither a machine, manufacture or composition and the machine is old

    This is just offense. You should be sanctioned Ned.

    Merits. Deener is a process for processing grain. Data in and of itself does not need to be patentable for a machine or process that processes data to be patent eligible.

    What a joke the discussion on this matter is. Our brain is all about processing data, but somehow a machine that processing data is not eligible? Ridiculous.

    Processing data takes time, space, and energy. The conversation of information is one of the most important laws in physics (if not the most important.)

    Reyna is a Google selected judge who admitted he knew nothing about technology or patent law just a few years ago. What a joke he is. Criminal that a person who is unqualified to be a judge at the CAFC would be appointed by Google.

  5. I read through the petition for awhile and had to stop. Trying to apply Morse to cases like this is a real problem.

    What is claimed is manipulating data on a computer using known techniques. Now that cannot be patentable subject matter as data is neither a machine, manufacture or composition and the machine is old.

    A machine that manipulates data might be eligible, but an existing data processing machine that only does what it did before, varying only the data, is not made new (or improved) by the particular data.

    Why can’t we make the analysis that simple?

    Hotel Security.

    1. That simple?

      Not likely.

      House/Morse and “it’s already in there” fallacies abound in your (over-)simplifying attempts Ned.

      Grand Hall Experiment.

      1. Listen anon, it is that simple. Truly.

        1. Really? How is that Ned? You are a clever person that has found a way to try to sell this with abstractions.

          But, you have to deal with the underlying reality.

          Processing data takes time, energy, and space. You have to address that issue.

          What you said Ned is irrelevant. I could write the same thing you said about any subject area including processing grain under Deener.

    2. You should be sanctioned for writing this stuff Ned.

  6. I expect that a more infringer-friendly panel…..

    Imagine this in other contexts…

    I expect that a more murder-friendly panel…

    I expect that a more embezzler -friendly panel…

    I expect that a more thief -friendly panel…

    I expect that a more tax evasion -friendly panel…

    Are there really infringer-friendly CAFC judges? Highly, highly doubtful.

    1. Are there really infringer-friendly CAFC judges? Highly, highly doubtful.

      You are woefully out of touch.

    2. I think so. You can find them if you just Google infringer-friendly CAFC judges.

    3. Are there really infringer-friendly CAFC judges?

      Of course! They’re all infringer friendly. They sit around in a Star Chamber and plot about how to eliminate the patent system entirely because it’s the Most Important Thing Ever. Patents, after all, are the only possible way to regulate corporate greed. Everybody knows this!

      Anyways, the judges sit around in the Star Chamber drinking the best iced tea — just the best, I mean really really great great iced tea — and everything is paid for by Google, Facebook, Apple, and the company that makes those spinning toys that burn your kid’s face. And they’re really devious so they disguise their plan by picking a few judges to pretend that they are pro-patent just to throw the d 0gs off the scent. That’s why you see these oddball cases and dissents every so often.

      I can’t believe that everyone doesn’t know this already. You are so woefully out of touch! Also, these judges are basically ter r0r ists who make Benedict Arnold look trustworthy. They should be impeached and then spend a month in jail for each time they suggested that software wasn’t patentable. Also Mark Lemley and Arti Rai are going to have a baby and when it grows up the merged Google-Apple company is going to install her as President and make it illegal to talk about patents. Again, if you don’t know this already you haven’t been reading Gene’s blog which is totally not fake news like this one.

      1. which is totally not fake news like this one.

        Lulz.

      2. “Anyways, the judges sit around in the Star Chamber drinking the best iced tea — just the best, I mean really really great great iced tea”

        They actually do have a very nice little cafeteria in their building. It probably does have great great iced tea.

    4. Well, there are panels that bend over backwards to “interpret” 101 to invalidate allowed claims, making up restrictions in the statute that simply aren’t there in order to arrive an an infringer friendly decision.

      How would you characterized them?

      1. How would you characterized them?

        Public servants.

        1. Your view of “public” does not match what Les is describing.

          But you already knew that, eh?

    5. haha, good point.

    6. I’m reluctant to respond to what looks like a non-serious comment, but yes, and there’s nothing necessarily wrong with that.

      Any appellate court is going to have some amount of panel-dependency. If, for example, you’re doing a criminal appeal in any of the other 12 U.S. courts of appeals, you’ll probably understand that some judges are more willing to rule against prosecutors and police than others (call them “defense-friendly” or “prosecution-friendly” or whatever, if you prefer), and the names of the judges on your panel will often affect your optimism about the outcome. Or if you prefer, look that the Supreme Court’s docket (setting aside selection bias issues): some Justices are more skeptical than others of various types of claims.

      On the Federal Circuit, some judges are more willing to invalidate patents than others. It doesn’t necessarily mean that any of them are biased or nefarious. If you put any group of 12 people on the Federal Circuit, after a while they’d all start to show some tendencies, and some would look instinctively more pro- or anti-patent than others (or more or less “accused-infringer-friendly” if you prefer). All else being equal, if I were the patentee in a Federal Circuit appeal, there are certain judges I’d prefer to see on my panel and certain judges I’d prefer not to see.

  7. One way to break down the eligibility issue is to march through the claim steps:

    1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising: computer code for receiving from a first source a first network accounting record;

    Okay, that’s ancient and nothing more than a necessary first step. “Wherein the method takes place in the universe”. Whatever.

    computer code for correlating the first network accounting record with accounting information available from a second source

    “Correlating” is an ineligible abstraction. Any information can be correlated with any other information. There’s nothing there. So where’s the meat?

    using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

    “Using” X to “enhance” Y. This is handwaving ba l0ney in the most absurd terms. Was there an invention somewhere in this application? Maybe (but I doubt it). In any event, it’s not a court’s job or the PTO’s job to read limitations into a meaningless word salad.

    Might as well just claim “A method, wherein the method is non-obvious, wherein the method is described somewhere in the specification, and wherein the method achieves enhancement of data.”

    Is that an eligible claim?

    1. MM, thanks for copying the claim. I haven’t looked at the constructions of the information content limitations, but the general operation described seems typical of any database system.

      One has tables linked by a field. Linking and correlating seem the same.

      Once the two tables are linked, information from the one can be copied to the other, or a third table can be produced combining fields from both.

      This seems old as the hills.

      Now, exclude from the 102/103 analysis printed matter — the meaning of the symbols, and what is left?

      1. what is left…?

        How about not conflating 102/103 and having a proper analysis of 101 (as in, are the T W O aspects of 101 met: is the invention in at least one of the statutory categories, and is the utility of the invention in the Useful Arts)?

        That – apparently – is a H U G E “what is left.”

  8. This case is bizarre. The app won an interference against patent no. 6405251 and the examiners subsequently allowed it without any comment on the substance of the invention.

    1. Ed, two possible reasons, neither good:
      (1) Examiner wanted to just get such a long-pending application off his or her docket ASAP to avoid getting “dinged,” and/or
      (2) Examiner wrongly assumes claim validity was considered by the PTAB in the interference. [It could have been, but is not unless one party knows enough to know they are going to loose on “invention” date priority and files a motion to attack validity of subject claims in the interference motion period, or does not need to attack validity if it got a license.]

      1. Third possible reason:

        Examiner conducted a full search and consideration of the application, and found only US Pat 6405251.

        1. Given that, by my count, 58 documents were made of record, my money is on the third possible reason.

          1. And there were also 56 non-patent references on the face of the patent. [Obviously all cited by the applicant, since no examiner ever cites that many references.]
            I’m sure the examiner had no difficulty in carefully reading all 114 citations in their typical 6.5 hours of search time, and then doing an [unrewarded] second prior art search after the interference. After all, as anon and others insist, an applicant is entitled to a multi-thousand dollar prior art search from the US PTO even if they only pay a few hundred dollars for it.

            1. After all, as anon and others insist, an applicant is entitled to a multi-thousand dollar prior art search from the US PTO even if they only pay a few hundred dollars for it.

              Getting your jollies by mischaracterizing what I have had to say on the matter, Paul?

              Find that simply
              Unbelievable,

              pal

  9. A more interesting question in this case is whether or not the claims at issue, which were copied from another patent in a successful interference, would (a) render that other patent relevant for claim construction of the word “correlating” and (b) cause the patent to be invalid for failing to support a context based interpretation of the word (since “correlating” was copied in from another case and possibly not supported in exactly the same way). Very interesting prosecution history here.

    1. Yes, especially in view of Ex parte Smart, Appeal No. 2009-015036, application 10/818,920 (03 January 2011), the first published Board decision on an appeal dealing with the Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 91 USPQ2d 1161 (Fed. Cir. 2009) claim construction doctrine for copied claims. Smart expanded the Agilent doctrine into ex parte, pre-interference, prosecution. The Agilent doctrine requires that, during an interference proceeding, claims that have been copied from the target case be construed based upon the disclosure of the target case for purposes of determining whether the copier has written description support, instead of being construed based upon the disclosure of the copier. [Never made clear sense to me, but who cares.]
      Also of course a party may be also be stuck with claim interpretation arguments it made in the interference.

      1. The Agilent doctrine requires that, during an interference proceeding, claims that have been copied from the target case be construed based upon the disclosure of the target case for purposes of determining whether the copier has written description support, instead of being construed based upon the disclosure of the copier. [Never made clear sense to me, but who cares.]

        Paul, I think the reasoning is that if you construe the copied claims based on the disclosure of the copier, you tilt the odds in favor of finding written description support for the copied claims in the copier’s disclosure. The doctrine, in contrast, stands for the proposition that if you are copying claims from another patent/application, then you are necessarily “copying the construction” of those claims as well.

        May need more coffee.

        1. That makes sense to me for an interference “count” but how under 112 for an actual patent claim?

  10. While I can see that the claim should probably fail 101 subject matter eligibility under Alice/Mayo, why hasn’t 102 anticipation / 103 obviousness been thrown in as well? Looking at the claim on its face, couldn’t the litigants have found at least some killer prior art on the claimed subject matter? Even a basic accounting textbook would seem to render the claim invalid.

    1. Well, why would anyone in the prior art have need to enhance an accounting record obtained from a first source? Why not just demand the needed information from the first source or make due with the information available from the first source? The Examiner allowed the claim. Clearly, the Examiner found it worth. That’s not an easy hurdle.

      1. Les, re “why would anyone in the prior art have need to enhance an accounting record obtained from a first source?”
        Enron, Global Crossing, Ponzi schemes, any Russian company, etc, etc, etc.

      2. Someone who works at SAP, Oracle or Intuit, etc. might be able to come up with a good answer to that, but it seems to me that e.g. large business enterprises would have multiple accounting records coming in from their various divisions, i.e. two or more sources, and have need to generate enhanced records on occasion, e.g. when preparing financial statements, or to reconcile records in multiple currencies. Surely one might find at least some high-end accounting software with computer code for performing the apparently broad steps set forth in the presented claim.

      3. What’s the definition of “enhance” provided for in the specification?

        1. The CAFC: We approved of the district court’s construction of “enhance” to mean “to apply a number of field enhancements in a distributed fashion.” Amdocs I, 761 F.3d at 1338–40. In so doing, we
          approved of the district court’s “reading the ‘in a distributed fashion’ and the ‘close to the source’ of network information requirements into the term ‘enhance.’” Id. at 1340. We also approved of the construction of “completing” to mean “enhance a record until all required fields have been populated.” Id.

          1. Not the answer to the question I asked.

            My question is: how was the term “enhance” defined in the specification?

            I could care less how it was “construed” in the absence of a definition because any construction of that term in that claim in the absence of a definition is nothing more than result-oriented judicial activism in its purest form.

            Also, the circularity in the construction is noted. What is a “field enhancement”? The term “field” appears nowhere in the claim. That claim states that it’s a “record” that is being “enhanced”, according to the claim.

            And lastly: that ridiculous pulled-out-of-the-hat construction doesn’t change the eligibility result. It’s still just a bunch of vaporous h 00 haw.

            1. any construction of that term in that claim in the absence of a definition is nothing more than result-oriented judicial activism in its purest form.

              You have your own little version of reality that simply does not match anyone else’s.

            2. Old lady Malcolm quips, in her best turtle voice, “the words in the claim MUST be defined [by words] in the spec.

              A gentlemen turns to the old lady, and asks, in direct and simple English, “and the words in that definition, what about them?”

              Old Lady Malcolm (unaware of the irony), mumbles back:

              It’s turtles all the way down.

              😉

            3. The definition of data enhancement is provided in column 11 of the patent specification.

              The spec states “Data enhancement comprises a number of field enhancements. A field enhancement specifies how the data obtained from the trigger of the enhancement procedure is processed before it is placed in a single field in the central database 175.”

              The spec also states “A field enhancement includes applying zero or more functions to a field before storing the field in a specified field in the central database 175.”

              There is an example of data enhancement at col. 11, lines 55-66 providing “Through an enhancement procedure the information collected from the proxy server 101 can be supplemented by the information from the DNS 102. Therefore, the name of the host is added to the data (the data record) collected from the proxy server 101.”

              Can someone please explain how supplementing a data record containing information obtained from a first existing source with information available from a second existing source is “sufficiently more” than an abstraction even if done in a distributed fashion?!?!?

              Did the panel believe that the inventor invented enhancing a data record by storing information in a field in a distributed fashion or just that the record was insufficient to show that he did not?

        2. I’ve only just begun to review the application. But the impression I get is that the invention is applied, for example, where a first information source reports on the amount of bandwidth consumed by a user and a second (actually many second sources) provide additional characterizing information, such as high quality of service data (live video), lower quality of service (video that can be buffered/delayed), lower still quality of service (web pages), lower still (email), all of which relates to different resource allocations and different billing rates. So, the enhancement is the addition of QoS information and the like.

          1. ” So, the enhancement is the addition of QoS information and the like…”

            So?

            Information in computer form is still data and data is not a machine, manufacture or a composition of matter.

            The only thing potentially eligible in these claims is some new or improved machine or machine process independent of the particular data.

            1. machine process independent of the particular data.

              unless of course – like a magic hat band, or a water pitcher, you have something called “functionally related,” eh Ned?

              Sometimes, any old data is NOT the same as any old other data.

              Try reformatting your hard drive and re-installing your operating system (just data) with a Britney Spears CD. Then tell me how that works for you.

              1. anon, software is functionally related to computers in much the same way since the first stored program computer was invented in 1946. The new program is like the old program from the point of view of the computer.

                Now, invent a more efficient way of processing data, then the computer is improved because it takes less time to do the same thing.

                But where the difference is in the meaning of the data, the computer is not improved.

                1. “Now, invent a more efficient way of processing data, then the computer is improved because it takes less time to do the same thing.”

                  Ned – if a more efficient way of doing “the same thing” is an invention, why isn’t a way of doing a new thing an invention.

                  Furthermore, if it is a more efficient way of doing something, isn’t it just semantics to say that that is the “same thing.” Its actually doing something new that happens to arrive at the same result.

            2. “Information in computer form is still data and data is not a machine, manufacture or a composition of matter. ”

              Information in computer form can be the work piece.

              Information in a computer can also be the means of configuring known components into a new machine. Not unlike the way known fasteners were used to configure lumber, cloth, rope and sheaves into the form of a flying machine.

              1. Les,

                Without taking anything away from your fine example of a flying machine (as it nicely puts into perspective the importance of configuring any list of known items), the example more directly on point to Ned’s quip about “just data” is my asking him to zero out and reformat his hard drive, and then try to use a Britney Spears CD to obtain the same machine. Since he insists that the machine is “just using” data, he should be able to use a Britney Spears CD and be just fine in obtaining his “same machine.”

                The fact that NO answer from him is forthcoming on this, or on any of the myriad other counter points presented to him time and again – and that he instead insists on attempting the same initial position to which the counter points have been presented – only shows that he is not being inte11ectually honest.

                Instead, what he is attempting to do – and long has attempted to do – is the internet version of “shouting down” anyone with an opposing view.

                An actual dialogue on the matter demands better.

                Civil or not, aim for a better discourse would include that which I have long attempted to impress on the editors of “America’s leading patent law source.”

            3. “So? ”

              So, I was answering the question, “what is the enhancement”.

              As to the rest of your comments, the claim in question recites a new apparatus, a new machine component: a computer readable medium carrying new sets of instructions for carrying out a new method.

              Even if all that is changed from the prior art are adaptations to handle a different kind of work piece, the apparatus is new.

              Just as an adaptation of a wheat harvester to make it a corn harvester might make a new machine…

              1. “An adaptation of a wheat harvester to make it a corn harvester” not only has to be novel and unobvious, it has to have a specification with drawings and description of the novel modifications. Not just a specification that in essence discloses only “write your own software yourself, and use it on any computer” and a claim with no meat in the bun either.

                1. Paul,

                  What is required varies by the Art unit (and at least in part by what a person having ordinary skill in that art unit may ascertain without UNDUE experimentation.

                  Are you forgetting that the “super-empowerment” that the Supreme Court provided PHOSITA in KSR goes both ways?

    2. Mark, the short answer is that the Fed. Cir. has made it highly unlikely to get an inexpensive Summary Judgement based on prior art that they will sustain on appeal. Thus requiring a full blown trial and appeal to get a decision on that basis. See 7 and 7.1 below.

      1. That is a very realistic answer. On remand, 102/103 issues can be adjudicated. But it still highlights a basic problem: Whatever one thinks of the line of Alice/Mayo case law, 101 subject matter eligibility jurisprudence is vulnerable to distortion and going too far in one direction or another when patent claims that could be invalidated on other grounds are only put under the 101 microscope, because district judges too want to dispose of cases relatively quickly and with minimal fuss.

        1. Mark: 101 subject matter eligibility jurisprudence is vulnerable to distortion and going too far in one direction or another when patent claims that could be invalidated on other grounds

          This is true of 103 and 112 as well. And both 103 and 112 were warped beyond recognition to shoehorn information processing logic and information content into the patent system where it never belonged. That’s why 101 stepped in.

          What people don’t like about eligibility is that it calls into question what was always questionable in the first place: the eligibility of computer programs.

          That’s it. The rest is just spinning, like you just did without (i’m guessing) even realizing it.

          1. What people don’t like about eligibility is that it calls into question what was always questionable in the first place: the eligibility of computer programs.

            LOL – your feelings (being projected) are noted.

            The rest is just spinning, like you just did without (i’m guessing) even realizing it.

            Ah yes, the classic Number One Malcolm Meme of Accuse Others Of That Which Malcolm Does.

            Same old script – 11 years now.

  11. While literally anything is possible with an unchecked Supreme Court (unwilling or unable to recognize impacts to separation of powers when re-writing statutory law with common law), the notion of

    It is possible that the Supreme Court could simply issue a one-line opinion: “Vacated, see Alice/Mayo.” seems TOO much given that the majority is explicitly stating that it IS “seeing” Alice/Mayo.

    There simply has to be “something more” from the Supreme Court in order to show why the majority has not really “seen” Alice/Mayo.

    (It would be humorous for the Supreme Court to so write a one-liner, only to be answered with a one-liner in reply of “the remand from the Supreme Court is understood, and upon deliberation of the expert and detailed views of the cases cited for remand, this court holds to our previous decision – see Alice/Mayo as previously explained.”

  12. This patent has priority claims way back to two 1997 provisionals and via a continuation. Would that explain why a defense attorney would still advise just litigating such broad claims [and losing] rather than promptly filing an IPR?
    [But in an IPR such previously untested application priority claims can be properly evaluated to determine the actually applicable prior art.]
    ———
    Given the recent Fed. Cir. narrowing of the scope of CBM proceedings, is this really a “business method” for a CBM? [I doubt it?]
    ——
    Even though this decision would seem unlikely to survive the Sup. Ct. taking cert, how likely are they to take another case on this subject so soon after Alice?

    1. P.S. Since the judgment “on the pleadings” was reversed here, presumably the defendant client is now stuck with paying for the rapid* expenditure of a million dollars plus for defending itself in a full blown trial on every possible validity and infringement issue? Or, quickly paying something like that amount to settle, assuming the one year time limit for filing an IPR after being sued has now expired?

      *This case being in the District Court for the Eastern District of Virginia, aka the “rocket docket.”

    2. Given the recent Fed. Cir. narrowing of the scope of CBM proceedings, is this really a “business method” for a CBM? [I doubt it?]

      Given the continuous narrowing of allowable CBM claims, one could see that, but still…the word “accounting” riddling the claims could be tough sledding to get around…

  13. The headline of this thread may just as well read:

    Will Simians climbing a step ladder in a middle of a cage and reaching for bananas hung there be firehosed?

  14. OMG – a BUSINESS METHOD patent that WASN’T held INVALID? Oh, the humanity!

  15. Reyna’s analysis is pretty spot on. As I’ve said before, Morse evidences the thinking behind the judicial exceptions, and it’s largely the “possession” question that the CAFC would call “written description” nowadays. But the reason “written description” exists is because the CAFC wandered so far off the reservation on indefiniteness and abstractness for decades and then realized they had to come back.

    *One* mechanism by which a claim can be said to be directed to abstract subject matter is to simply claim a conventional problem-causing situation (here’s some computers in a not-perfect network) and then claiming the functional result of solving the problem, without limitations to a particular means.

    Some people would call this a scope of enablement problem (since it claims all manner of achieving something, but the specification only enables a handful of them) or a written description problem (since it claims all manner of achieving something, but the applicant has only proved he posited some of them), but the manner in which it was previously taken care of is that an argument that the claim was directed to all manner of doing something was found abstract, and an argument that the claim is directed to a particular manner from the specification was indefinite because the functional language was not reasonably definite of the manner in the specification.

    But the ultimate issue is always the same – you can’t invent one way of doing something and inductively leap to claiming all ways of achieving a result, that’s what can’t be done. Reyna clearly gets that. I wouldn’t even have bothered to go as detailed as Reyna did here – the “inventiveness” of the claim is distributed processing. Distributed processing is abstract: It’s a result. There are particular schemes one could perform to achieve distributed processing with various degrees of efficiency, but a claim to the functional result doesn’t claim that.

    It’s overbroad. It’s abstract.

    1. I think this case illustrates how useless 101 analysis is, and just how important it is to migrate back to doing the actual full analysis under 102, 103, and 112.

    2. I agree that this results-sans-means analysis should be how we identify judicial exceptions, but Plager/Newman are correct that it is not currently the method used in step1/step2A.

      And I wouldn’t agree that Reyna ‘gets it’ given that he’s the one that gave us McRO.

      1. Reyna is a hot mess – as is ALL of this common law attempt to rewrite the statutory law of 101.

        Thanks to the Supreme Court, of course.

  16. Question presented: Whether the Federal Circuit erred by looking beyond the claims to the patent specification to assess patent eligibility

    The answer to this silly question is that there is no error in looking beyond the claims (e.g., into the specification) to assess *anything* having to do with eligibility or patentability.

    Sometimes, in fact, the only way to determine whether a claim is ineligible or unpatentable is to look at the specification. Why is that the the case? Because the patentee is allowed to be his own lexicographer.

    There are no magic words that instantly confer eligibility or patentability to a claim and, likewise, there are no words that — simply by appearing somewhere in a claim — automatically render the claim ineligible. At least I can’t think of any right now … 😉

    None of this changes the fact that this CAFC panel wandered way too far off the reservation in its attempt to rescue this particular junk claim from the g@ r bage bin. “Correlating” data X with data Y to “enhance” data X … how can this not be a j 0 ke? Oh wait! It’s “accounting data.” That changes everything.

    1. But cases like Amdocs, McRO, and Bascom give patent attorneys a way to sell the notion that there is a navigable path for software to somehow make it through the Alice/Mayo impasse. It will probably cost more and take a few RCEs no doubt, but they profess to know the magic words and, if you hire them, they claim to be able to wrap enough existing technology around an ineligible concept to constitute something that is “sufficiently more.”

      The USPTO does not help when it generalizes the holdings of these cases. Software and business method claims that survive are the exception not the rule and might be mistakes by panels that chose to ignore technology that was conventional at the relevant time.

      I have a hard time understanding how these cases survived. Perhaps the previous proceedings involving the patents were a factor. The claims in Bascom had been previously litigated and found valid, and there was a narrowing claim construction in Amdocs. The district court in McRO stated that the claims did not appear to be directed to an abstract idea but then went on to invalidate.

      Maybe the records were not ripe enough to invalidate the claims at the motion to dismiss stage and could have been supplemented during discovery to show that the purported inventive concepts were merely conventional applications of then existing technology.

      1. The problem is that the courts are not dealing honestly with claims that only manipulate data using conventions means.

        1. As if.

          Your view of “dealing honestly” is notably NOT.

  17. Another great aspect of this petition is that CAFC-approved claim to “A computer program product, wherein said product enhances an accounting record” (WOW OMG IT ENHANCES!) might be just the sort of claim that the Supremes need to have under their noses when looking at Congress’ reasonable efforts to establish a fair (and due process compliant) system for post grant review.

    Because this kind of junk isn’t exactly unusual. There’s hundreds of thousands of claims out there that are equally bad, just not as plainly written.

  18. The unfortunate aspect of this case for most patentees is that it is another business method case

    Most patentees do not own business patents.

    Most patentees understand perfectly well that patents like this — and opinions like the CAFC’s opinion here upholding this sort of ridiculous junk — are symptomatic of a system that is rotting from within. That’s not even taking into account the opinions of people who aren’t intimately involved in the game, which are even less kind.

    Nobody benefits from this cr @p except for a tiny tiny tiny handful of wealthy entitled well-heeled players. For everyone else — including most of our families — it’s just amounts to a tax that goes into lawyers’ pockets.

    You just went on vacation, Dennis. Maybe you need more time away from the bubble? Or maybe you need to get closer to the source of the worst nonsense so you can get a stronger whiff …

    1. Your feelings are noted.

Leave a Reply

Your email address will not be published. Required fields are marked *

 Notify me of followup comments via e-mail.

You can click here to Subscribe without commenting