Abstract Ideas: The Turnstile Keeps Spinning

by Dennis Crouch

Smart Sys. Innovations v. Chicago Transit Authority (Fed. Cir. 2017)

In a split opinion, the Federal Circuit has affirmed the district court’s judgment on the pleadings – R. 12(c) – that the asserted claims of SSI’s four patents are invalid under Section 101 for claiming an abstract idea.  U.S. Patent Nos. 7,566,003, 7,568,617, 8,505,816, and 8,662,390. (Claim 14 of the ‘003 patent – covering a method for validating entry to a city bus or train – is reproduced below).

The baseline for eligibility analysis is the two-step Alice test:

A patent claim falls outside § 101 where (1) it is “directed to” a patent-ineligible concept, i.e., a law of nature, natural phenomenon, or abstract idea, and (2) if so, the particular elements of the claim, considered “both individually and ‘as an ordered combination,’” do not add enough to “‘transform the nature of the claim’ into a patent-eligible application.”

Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (quoting Alice).

The patents here are are directed to a method for collecting fares – without dedicated fare-cards, paper tickets, or tokens.  Instead, the system uses credit/debit cards.   After “stripping” the patent claims from their technical jargon and obtuse syntax, the District Court ruled that the patents “really only cover an abstract concept [of] paying for a subway or bus ride with a credit card.”

On appeal, the Federal Circuit affirmed – holding that these steps were – as a whole – directed toward an abstract idea:

The Asserted Claims are not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes. Rather, the claims are directed to the collection, storage, and recognition of data. We have determined that claims directed to the collection, storage, and recognition of data are not [sic] directed to an abstract idea.

Note here the suggestion from the court that “a new type of bankcard, turnstile, or database” could be patent eligible.  Here, the limitation to the field of mass-transit did not help the patentee: “merely limiting the field of use . . . does not render the claims any less abstract.” Quoting Affinity Labs.  In thinking through the step one, the majority looked toward the Alice focus on whether the claims are “directed to” an abstract idea.  According to the court – that question is separate and distinct from the “thrust,” “heart,” or “focus” of the invention.

According to the majority, Alice Step 2 is also easily met – because the tech-focused aspects of the claims are simply directed to the use of a general purpose computer and thus “offer no inventive concept that transforms them into patent-eligible subject matter.”  In the process of reaching this result, the court distinguished both Diehr and DDR Holdings:

  • Diehr does not apply when, as here, the claims at issue use generic computer components “in which to carry out the abstract idea.”
  • DDR Holdings does not apply when, as here, the asserted claims do not “attempt to solve a challenge particular to the Internet.”

Finally, the majority considered several ‘other arguments’ regarding eligibility:

  • No preemption: Although one purpose of the abstract-idea exception is to limit preemption, the test itself does not actually consider preemption.  Thus, once the abstract idea analysis is completed “preemption concerns are … moot” Ariosa.
  • Transformation:  Although the machine-or-transformation test “can provide a useful clue to the second step of the Alice framework” it does not overwhelm the primary search for an ‘inventive concept.’ Quoting Ultramercial.

Thus, the claims were all affirmed to be invalid and thus not enforceable.

The majority opinion was penned by Judge Wallach and joined by Judge Reyna.  Judge Linn filed an opinion dissenting in part. Judge Linn argues that the “gist” analysis by the Federal Circuit is improper:

The majority commits the same error as the district court in engaging in a reductionist exercise of ignoring the limitations of the claims in question and, at least with respect to the ’003 and ’617 patents, in failing to appreciate that the abstract idea exception—if it is to be applied at all—must be applied narrowly, consistent with its genesis. . . . All three nonstatutory exceptions are intended to foreclose only those claims that preempt and thereby preclude or inhibit human ingenuity with regard to basic building blocks of scientific or technological activity. They are intended to be read narrowly.

As the Supreme Court has done in its 101 analysis, Judge Linn linked his work back to cases such as Le Roy, Mackay, and Funk Bros. The language of those cases focus on “fundamental truths” and “hitherto unknown phenomenon of nature.”  In Benson and Alice, the court also explained “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”

For Judge Linn, a method of charging a bank-card at a bus-turnstile does not fit into those expansive definitions.

Judge Linn’s opinion recognizes that his concern directly stems from the Supreme Court’s approach in Alice and Mayo.  He writes: “The problem with this test, however, is that it is indeterminate and often leads to arbitrary results.”  His solution is that the two part test should not be “applied in a legal vacuum divorced from its genesis” and the three exceptions should be treated consistently. Patents should not be struck down simply because they “seemingly fail the Supreme Court’s test.” Rather, the focus should be on whether the patents “attempt to appropriate a basic building block of scientific or technological work.”

The solution for Judge Linn: Focus on the language of the claims and each limitation when determining whether a claim is directed to an abstract idea – “a basic building block of scientific or technological activity” or instead to a “tangible application” that serves a “new and useful end.”

= = = = =

Here is Claim 14 of the ‘003 patent:

A method for validating entry into a first transit system using a bankcard terminal, the method comprising:

downloading, from a processing system associated with a set of transit systems including the first transit system, a set of bankcard records comprising, for each bankcard record in the set, an identifier of a bankcard previously registered with the processing system, and wherein the set of bankcard records identifies bankcards from a plurality of issuers;

receiving, from a bankcard reader, bankcard data comprising data from a bankcard currently presented by a holder of the bankcard, wherein the bankcard comprises one of a credit card and a debit card;

determining an identifier based on at least part of the bankcard data from the currently presented bankcard;

determining whether the currently presented bankcard is contained in the set of bankcard records;

verifying the currently presented bankcard with a bankcard verification system, if the bankcard was not contained in the set of bankcard records; and

denying access, if the act of verifying the currently presented bankcard with the bankcard verification system results in a determination of an invalid bankcard.

129 thoughts on “Abstract Ideas: The Turnstile Keeps Spinning

  1. I wonder why the patent owner did not make an argument that the Ariosa holding DOES evaluate preemption. The Ariosa wording “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent ineligible subject matter” is often cited by examiners out-of-context from the rest of that paragraph which explains that preemption IS the basis for the judicial exceptions. The out-of-context interpretation is that preemption need not even be addressed. However, the preceding paragraph in Ariosa explains that preemption is present because the claims recite only steps necessary for any application of cffDNA, thereby effectively preempting any use of cffDNA.

  2. Malcolm:

    Let me know when you’re ready to have a serious discussion about 101, Greg. It’s been years and you’re still sniffing “anon”s b-h0le. C’mon. You can do better.

    And its not like this is something new….

    Great job Prof.

  3. “Although the machine-or-transformation test “can provide a useful clue to the second step of the Alice framework” it does not overwhelm the primary search for an ‘inventive concept.’ Quoting Ultramercial.”

    What is the difference between an inventive concept and an abstract idea?

    Is it that an inventive concept is new?

    Ah, so once again, it isn’t new (even thought the PTO said it was) so therefore, it is abstract.

    1. Les, “inventive concept” mean whether the claims cover a new or improved manufacture (broadly, the four classes). Come directly out of Nielson.

      1. Ned,

        Please stop the clearly incorrect view of the Act of 1952.

        1. Anon, since 102 has remained in its present form since 1793, I have no idea how you can even begin to believe that Congress effected any change in the law in 1952. True, they substituted “process” for “Art.” But they did not intend to change the law, but only to recognize that the case is typically referred to processes and not to Arts.

          1. Ned – simply not so.

            I have shown you time and again – even drawing your attention to 35 USC 100 and the Cornell website for background to 35 USC 103.

            You disappear consistently when these counterpoints are presented to you.

            1. anon, 100 and 103 are not 101.

              When one is looking for an inventive step, one is looking for a new or improved “manufacture.” One of the four classes.

              Whether something is obvious over the prior art is irrelevant. 100 changed nothing about 101.

              1. Ned,

                No one ever said that 100 and 103 are 101.

                They do however come into play when explaining the Act of 1952 because they are intertwined with that Act and explain why words of a former single paragraph no longer are a direct carry back TO that former single paragraph.

                You continue to attempt to treat “process” as less than its own FULL statutory category by attempting to tie it to a hardgoods category. 350USC 100 comes into play – as I have repeatedly explained to you – as it shows “process” to NOT be so limited as a handmaiden to the hardgoods categories.

                That is simple – and uncontroverted – legal error.

                1. That last senence should read:

                  That is simple – and uncontroverted – legal error on your part Ned to ignore the points presented to you.

      2. Ned,

        Please be inte11ectually honest and properly refer to section 101 as Congress actually implemented that section in the Act of 1952.

        Doing so requires you to give full meaning to both 35 USC 100 and 35 USC 103, which you have steadfastly refused to do.

        1. full meaning ]

          LOL

          Deep deep deep stuff from America’s least credible statutory constructionist.

          1. Did you have anything at all to say on the actual merits, Malcolm?

            Your sideline sniping – empty and meaningless as usual – does not even come close.

            Why not instead venture into an actual dialogue on the merits?

            Or is that too “deep” for you? Are you afraid of burning yourself like your famous admission against interests with knowing and understanding the exceptions to the judicial doctrine of printed matter on what was perhaps your last attempt all those years ago to actually engage on substantive matters…

            Your “least credible” remarks are stultifying.

  4. “The Asserted Claims are not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes. Rather, the claims are directed to the collection, storage, and recognition of data. We have determined that claims directed to the collection, storage, and recognition of data are not [sic] directed to an abstract idea.”

    Translation: We declare that the claims are not directed to something new. Therefore we declare the claims are directed to an abstract idea.

    sigh…

    1. The processes of collecting, storing and recognizing data are both abstract and old.

      If you want to a claim that protects some subset of that ineligible genera, the CAFC requires new non-obvious structure, or a new non-obvious transformation of matter or (illegally) some “new” fake structure in the form of an “algorithm.” You can’t convert an ineligible claim to an eligible one just be salting it with generic computer components that are old in the art, or by defining the “information” in some “specific” scrivened way. That doesn’t get you anywhere.

      That’s what’s going on, Les. It’s not confusing at all.

      And no the pendulum isn’t “swinging back.” It’s never going to swing back and it’s hilarious that you’d think otherwise.

  5. The invention disclosed and as described by Judge Linn is a technological solution to known problem. Linn states the claims of the ‘003 and ‘617 patents (as opposed to the ‘390 and ‘816 patents) generally claim the invention he describes. But they do not. Only one, claim 34 of the ‘003, arguably does.

    As Linn describes the disclosed invention:

    The problem is that mass transit readers are often not connected to the internet and even if they are connected to the Internet, a mass transit system cannot tolerate the delay to either verify or deny credit. According to Linn,

    “These patents [the ’003 patent and the ’617 patent] disclose the use of a bankcard reader to scan a credit or bankcard and a processor to compare the scanned data against a locally-stored “white list” of approved transit accounts. If the card owner is listed as an account-holder, access is granted without immediately having to establish network connectivity to process and charge the account, which can be done at a later time. If the card owner is not listed as an account-holder, access is denied. ”

    Now, let us compare the “disclosed” invention to the “claimed” invention(s). Both claims listed in the opinion for the ‘003 and the ‘617 end as follows:

    “verifying the currently presented bankcard with a bankcard verification system, if the bankcard was not contained in the set of bankcard records; and

    denying access, if the act of verifying the currently presented bankcard with the bankcard verification system results in a determination of an invalid bankcard.”

    These claims bear no resemblance whatsoever to the invention described by Linn. There is no “immediate” verification if the card is in the list. The claim specifically requires verification with a bankcard verification system if the card is not on the list and denial if it is. What these claims are claiming is a “black list” invention, which is a separate invention described in the specification and which has nothing to do with latency.

    I scanned the other independent claims to see if any claim granted immediate access if the card was in a white list. None do, although claim 34 of the ‘003 is close. Claim 34 was asserted.

    My recommendation:

    The patent owner should request reconsideration with respect to claim 34 of the ‘003 (and any analog in the ‘617 patent), effectively abandoning all the other claims, based on Linn’s dissent, arguing that claim 34 is directed to a technological solution to a technological problem that produces an improved payment system that can be used in mass transit applications. Such a system is an improved a machine, within 101.

    1. The problem is that mass transit readers are often not connected to the internet and even if they are connected to the Internet, a mass transit system cannot tolerate the delay to either verify or deny credit.

      The solution to the problem described in the patent is the use of a bankcard reader to scan a credit or bankcard and a processor to compare the scanned data against a locally-stored “white list” of approved transit accounts. This solution is embodied by claim 34 is as follows:

      34. A method for validating entry, into a first transit system, using a bankcard terminal, the method comprising:

      downloading, from a processing system associated with a set of transit systems including the first transit system, a set of bankcard records comprising, for each bankcard record, an identifier of a bankcard previously registered with the processing system, and wherein the set of bankcard records identifies bankcards from a plurality of issuers;

      receiving, from a bankcard reader, bankcard data comprising data from a bankcard currently presented by a holder of the bankcard, wherein the bankcard comprises one of a credit card and a debit card;

      determining an identifier based on at least part of the bankcard data from the currently presented bankcard;

      determining whether the currently presented bankcard is contained in the set of bankcard records;

      denying access, if the currently presented bankcard is not contained in the set of bankcard records; and

      uploading, to the processing system, at least one bankcard identifier granted access to the first transit systems.

      The claim is not directed to a new transit system, bank card terminal, processing system associated with a set of transit systems, bank card, or bank card reader, which are all elements of the prior art. Rather, the claimed advance over the prior art is receiving bankcard data, determining an identifier based on the bankcard data, determining whether the bankcard is contained in a set of registered bankcards, denying access if the bankcard is not in the set, and then uploading the identifier of a bankcard when access is granted.

      The claim is directed to granting or denying access using a “white list,” which is a fundamental business practice and an abstract idea. Granting or denying access using a “white list” is an ancient practice performed by security guards with pencil and paper. Specifying a particular type of information (i.e. bankcard data) on the “white list” does not make the concept any less abstract. The claim, therefore, fails step one of the Alice/Mayo test.

      At step two, the claim requires the use of generic prior art equipment arranged in a conventional way and operating in a routine manner. Limitations regarding the type of data (bankcard data) on the whitelist, the field of use (transit system), and the conventional use of generic computing components are insufficient to constitute something significantly more that the abstract idea itself.

      The problem was not missing technology. Namely, all the technical components needed to solve the problem existed. These generic off-the-shelf components were routinely employed without modifying their structure or preexisting capabilities and without arranging them in an unconventional way. The claim fails step two Alice/Mayo test and is invalid under 101.

      1. Granting or denying access is an action – not an idea of an action, and certainly not “abstract” (as undefined as you have left that term).

        1. Moreover, the step of denying or granting access is not only an action but is also a “process,” which is enumerated as a statutory class of invention under 101.

          The 101 inquiry, however, does not stop there.

          1. Agreed that the 101 inquiry does not stop there.

            And that is at least a start of the problem.

            Congress (not the Court) has the authority allocated by the Constitution to write the statutory law that is patent law.

            Congress (not the Court) acted in the Act of 1952 to create 101 – and not just carry over certain words from a previous paragraph of law, but to change the meaning of that paragraph in direct response to the Court’s failure of its own (loaned) authority to derive a stable definition of the word “invention” through the t001 of common law development.

            Understanding not only what section 103 is, but also why section 103 came about, and why that action changed the dynamic of “wax nose mashing” is critical. Without that understanding, one might be misled by those seeking to place the Court above the Constitution, and to rewrite patent law – as written by Congress – that they simply do not like for their own current philosophical reasons.

            Remember the time prior to 1952 and instead of stability, the Court had (and has returned itself to continue to) employ[ed] nonsense (such as “Gist of the Invention” and dozens of like terms) and had turned decidedly Anti-patent (recall the self-describing phrase: “The only valid patent is one that has not yet appeared before us”). If one recalls history, one cannot so easily dismiss the impropriety of the Court (as is so often attempted by those today championing writing of patent law by the judicial branch.

            This of course was explained by one of the architects to that which Congress passed in 1952.

            These are NOT new items – merely items that have been purposefully not incorporated into the dialogue, and certainly have not been accepted as they should be by certain sAme ones that so often repeat their old scripts as if these points did not even exist.

            1. Without a legislative change to 101, courts will continue to define the exceptions. There is no chance that Congress will redefine patentable subject matter to “include anything under the sun made by man.”

              The current legislative proposals all have certain exceptions to subject matter eligibility. But, these limited exceptions still result in a filter that is too coarse and irrational.

              Once you concede that “process” in 101 does not mean all processes (e.g. purely mental processes), then you need to either define a clear rule for the exceptions or decide whether there is an exception on a case-by-case basis.

              Waiting for Congress to replace the Supreme Court’s abstract test with a workable rule is a pipe dream. I think the Alice/Mayo test is here to stay.

              1. Courts continuing to do what is wrong does not make it right.

                Your opinion as to “too coarse and irrational” – without more, is merely an opinion, and one that does not carry any weight in this discussion.

                Mental process – pure mental process does NOT fall out based on the category aspect of 101 – it falls out based on the OTHER portion of 101: utility as belonging to the useful arts.

                NO ONE (outside of Malcolm and Malcolm”s strawman) has EVER indicated that pure mental processes are 101 eligible.

                The Supreme’s “Gist/Abstract” sword is itself unworkable – it is a pipe dream to believe that it is here to stay precisely because of cases like this thread that show that some jurists are beginning to realize just how unworkable and NOT sustainable that view is.

          2. Granting access is an eligible “process”?

            Wow. Never underestimate how low the maximalists will go. LOL

        2. Granting or denying access is … certainly not “abstract”

          LOL

          I just denied you access. Did you feel the earth moving under your feet.

          Just did it again. And again. And again. And again. And again. And again. And again. So much access denial!

          And totally not ‘abstract’ according to “anon.” He’s very serious! Very deep. Very thoughtful. He just knows stuff.

          1. A mindless post – much chatter signifying nothing.

            So typical of you Malcolm.

      2. “Arranged in a conventional way” really has no place under the law of 101.

        Don’t buy into the conflation.

        1. “Arranged in a conventional way” really has no place under the law of 101.

          In fact, it’s essential for any subject matter filter to have any functionality at all.

          Anyone who claims otherwise is a L I A R or is so lacking in intelligence that he/she should never get near a patent system. You’re basically a walking malpractice claim at this point, “anon.” Maybe you should stick to your mail room duties?

          LOLOLOL

          1. In fact, it’s essential for any subject matter filter to have any functionality at all.

            LOL – your feelings on “subject matter filter” are noted.

            But hey, maybe do more than just share your feelings and call that “sharing” an explanation….

            Nah, won’t happen – that would mean that YOU would have to be “deep” (or something).

      3. AIGC — are you trying to pull our collective legs? Claim 34 directed to an improvement to internet communications, not to some fundamental economic practice. The internet is a machine.

        Whether the claim is obvious is a separate question.

        1. The purported technological problem was that a mass transit system cannot tolerate the delay to either verify or deny credit.

          The solution was not improving the speed of the Internet or card reader or processing system to reduce latency. Rather, the solution was a work around using existing technology by doing a quick “white list” check and then processing the payment later over the Internet.

          There was no structural modification or improvement to any of the machines in claim 34.

          Using a “white list” for entry and charging a bank card at a later, more convenient time fall under the abstract idea exception.

          Once the inventor came up with the idea of using the white list and charging the bank card later, there really was no “technological” problem since there were existing technological tools to conventionally perform every necessary step (e.g., downloading, receiving data, identifying, comparing data) of the described solution.

          1. AIGC, 101 is concerned with whether the claim is directed to a new or improved “manufacture,” not whether the differences are obvious. Certainly the problem of latency is not limited to credit card transactions, but to any access service that requires a fast response and cannot get one using conventional techniques.

        2. The internet is a machine.

          It’s a very ancient machine whose sole purpose is to communicate information.

          A ball point pen is a machine, too, by the way.

          1. I know of no one who would honestly say that a ball point pen is not patent eligible.

            When you draw the distinction to 101 arguments, your own rants betray themselves Malcolm.

      4. Granting or denying access using a “white list” is an ancient practice performed by security guards with pencil and paper.
        |
        But Greg DeLassus wants to pay with his credit card when he forgets to keep his transit pass up to date so we need to stick our heads in the sand and grant more junk patents. Patents solve everything! If there’s a problem in society, it’s almost always due to the lack of a patent on the solution to the problem because if there’s a patent then someone can make money and nothing else matters. This is Greg’s theory of the universe and he’s a very serious person! A real deep thinker.

    2. In part, the issues identified by Ned highlight a recurring problem with the examination of logic patents: computer-implemented “innovations” alleged to “overcome problems” associated with improving the efficiency and accuracy of large scale data analysis but which — on the face of the claims — cover singular operations that are laughable in their simplicity. Not only does this recurring issue expose the farcical nature of logic claiming, in general, but it also illustrates the incompetence of the office when it examines these claims.

      Using this case as a specific example, one can see that the claims cover a single transaction. Here’s a number, match it to a list, then “grant access” depending on what is found. Oh, there’s a computer involved. Give us a break, please.

      It’s not a problem unique to logic claims, to be sure, but logic claims seem to be highly susceptible to this particular claim failure. Moreover, logic patent owners repeatedly and glibly ignore the scope of their claims and make grand pronouncements about alleged improvements at the other end of the school (millions of transactions in microseconds! humanly impossible! <— as if computers were invented yesterday and nobody knew what to do with them).

      1. MM, yes, cut to the chase, just identifying the problem suggests the obvious solution, which is what the inventor claimed as his “invention.”

    3. Ned:

      Please be true to the statutory language.

      35USC112 (b) states that “the specification shall conclude with one or more claims … claiming the subject matter which the inventor … regards as the invention.”

      Thus without a claim, there is no invention.
      Once there is an invention, then 35USC112 (a) states what must also be in the specification regarding the invention.

      [This is why we were all taught at the beginning to write the claims first.]

      And, as I have pointed out before, each claim is an invention.

      1. John, inventions are disclosed in the specification and claimed in the claims. Without a disclosure there is no invention that can be claimed.

        1. Since you brought it up, the original claims are part of the specification. 112(b).

  6. I found the statement,

    “nor do the claims provide a method for processing data that improves existing technological processes”

    interesting.

    1. David, see post 13. Claim 34 of the ‘004 patent IS directed to an improved technological process.

  7. If you think 101 is bad for the patent system…or the fact that “Patent Troll” is in the general vernacular….how do you think this looks to the outside observer?

    link to slate.com

    Hint: it don’t look like the backbone of American innovation, that’s for sure….

    1. You got something against supercomputers, Martin? Why do you h@ te technology? 😉

      Too bad the Amish don’t have sovereign immunity. That would allow for an even more interesting development.

    2. Regrettably, we have not yet had a case presented to a court where the soundness of tribal sovereign immunity as a defense to patent validity challenge is actually an issue of litigation. I am eager to see such a case get to judgment, because right now the whole strategy looks attractive merely because it is untested, and its flaws have not yet had an opportunity to be exposed. This idea of sheltering under a tribe’s sovereign immunity can fail in at least three different ways, and I will be shocked if at least one of those three does not prove this strategy to be a castle built on clouds. This is a flash in the pan, a legal novelty that will disappear as quickly as it sprung up.

      1. I am curious, Greg.

        What are those three ways?

        1. (1) Obviously sovereign immunity cannot be used to protect a claim from challenge in court once it has been asserted in a court. That is to say, once the patent-owning-sovereign shows up in court to assert the patent, the sovereign waives immunity, such that the validity of the patent is contestable. Therefore, the only shield that the patentee can hope to obtain by this assign-to-a-tribe (ATAT) strategy is to avoid DJ or IPR actions. However, all of the basis for supposing that sovereign immunity protects one from IPRs come from cases involving state universities, whose sovereign immunity is based in XI amendment, and therefore not waivable by Congress. Tribal immunity, however, stands on very different constitutional footing, and is waivable by Congress. Given that the PTAB has already found the IPR statutes sufficiently clear to waive the doctrine of assignor estoppel, it is entirely possible that the PTAB could likewise find that the statutory text is sufficiently clear to waive tribal sovereign immunity. In other words, the patentee could discover—to their detriment—that tribes are not immune from IPR challenge, even though state universities are.

          (2) All of the ATAT attempts so far have involved patents that are involved in litigation, where the patentee is attempting to avoid a parallel IPR attack. In the same way that part of what it is to be a fradulent conveyance is to be a conveyance that occurs in near temporal proximity to a bankruptcy filing, a court might well decide that such assignments made in the near vicinity to litigation might be a “sham,” or something akin to a fraudulent conveyance. If so, the transaction will be equitably rescinded, and the ownership will slide back to the non-immune party.

          (3) Finally, the difference between a license and ownership is frequently subtle one. In every one of these ATAT gambits, the previous owner assigns to the tribe, but then licenses the rights back from the tribe. Depending on how much control is acquired under the terms of the license, a court might well conclude that the license amounts to an assignment back, in which case the tribe is out of it, and we are back into the same state of affairs that existed before the assignment to the tribe, where no necessary party has any sort of immunity claim.

          I expect each of these three points to be litigated in the first ATAT case that presents itself to a court. If the patentee loses on any of the three points, then the ATAT gambit will turn out to have been a waste of time and resources. Somehow, I am not sanguine on the changes of any given ATAT succeeding on all three grounds.

          1. Greg it seems possible that aequalitus est quasi equitas would also prevent a party from using sovereign status as both a sword and a shield in regards to a DJ or counterclaim, probably before, or in lieu of, a court reaching to the underlying assignment.

            OTH, not so sure about the interplay of equitable principles and administrative judges in the case of IPR ….

            1. Martin,

              I do not see how you get to your “prevent[ion]… as both asword and a shield” from the Latin that you borrow.

              Your attempted use is out of proper context for that term.

              To wit:

              Aequitas est quasi aequalitas is a Latin maxim which means ‘equality is equity.’ The maxim says that when there are no reasons for any other basis of division of property, those entitled to it shall share it equally.

              The following is an example of a case law on aequitas est quasi aequalitas:

              ‘Equitable assets shall be distributed equally and pari passu among all the creditors, without any reference to the priority or dignity of the debts; for courts of equity regard all debts in conscience as equal jure naturali, and equally entitled to be paid; equality is equity, aequitas est quasi aequalitas. And if the fund falls short, all the creditors are required to abate in proportion.’ [State v. Spartanburg & U. R. Co., 8 S.C. 129 (S.C. 1875)].

              from: link to definitions.uslegal.com

              1. Your arbitrary setting of context for the term is improper.

                The maxim flows from the idea equality or impartiality, with very wide application. While the rule of law may give one party an advantage over the other, equity will seek to place the litigating parties on a footing of equality. IOW, courts are loath to work cases where both parties are not equal in standing before them.

                You sir, therefore are Wrong. Thank you, please play again.

                1. The reply has vanished.

                  Too bad, as I made it clear that I am not in fact wrong – that “my” setting was not only NOT “my” (it was tied to a legal source, of which I provided the link) and it was not arbitrary.

                  The only arbitrary item here is you and your treatment of law as if you making things up out of thin air is perfectly fine (gee, where have we seen THAT from you before?)

          2. Greg,

            Thanks!

            As to (1), I was following up to the point of you ascribing power to the PTAB to decide whether or not tribal sovereign immunity was waved.

            I do not see that level of power within the administrative agency.

            As to (2), I have previously remarked – with sufficient detail – that the legal term of “sham” does not apply to the cases that have actually arisen. Other cases may bring other results, but as far as the legal term controls, there has been no shams, even if people simply do not like what has been attempted.

            As to (3), you raise an excellent point. I may even be so bold as to venture a guess that our views on “licensing” (as opposed to sales merely masquerading as licenses) may align.

            However, I disagree completely with your summation. A case decided on any one of your three points does not – and cannot – impugn the other two points. This is NOT a “one strike and you are out” type of call. Quite the reverse, all that is needed is one of the three avenues to adhere, and the strategy would then need to be looked upon as a success (by those plying the strategy).

            1. I do not see that level of power within the [PTAB to decide whether or not tribal sovereign immunity was waved].

              I am not following you. An agency always has authority to decide whether a given case is or is not within the agency’s jurisdiction. City of Arlington v. FCC, 133 S. Ct. 1863, 1387 (2013). The application of sovereign immunity is a jurisdictional issue. Therefore, the PTAB necessarily has the power to decide the issue.*

              * That is, to decide the question in the first instance, of course. If the PTAB decides that sovereign immunity does not apply, the CAFC or the SCotUS could decide on appellate review that the PTAB got it wrong. On the other hand, if the PTAB were to decide that sovereign immunity precludes PTAB jurisdiction over a given patent, then the PTAB would have to deny institution on petitions against those patents, and a decision to deny institution is unreviewable.

              I disagree completely with your summation. A case decided on any one of your three points does not – and cannot – impugn the other two points.

              Hm, I wonder if I may not have expressed myself clearly. I certainly agree that if the PTAB or CAFC were to decide (e.g.) issue #1 against the patentee, that does not imply that the tribunal must also decide issues #2 and/or #3 against the patentee. My only point was that if the tribunal were to decide #1 against the patentee (that is to say, if the tribunal were to hold that tribal sovereign immunity is no obstacle to IPR review), then #2 or #3 simply would not matter, because the case will still end up in front of the PTAB regardless of the validity of the assignment.

              By the same token, however, even if the tribunal decides that sovereign immunity does preclude PTAB review (that is to say, if the tribunal holds for the patentee on #1), if the tribunal finds either that the initial assignment was a fraudlent conveyance (i.e., against patentee on #2) or that the license amounts to an assignment back (i.e., against patentee on #3), then it does not matter that tribe-owned patents cannot be subject to IPR, because the patents at stake at that point are not tribe-owned.

              In other words, the IPR petitioner resisting the application of sovereign immunity as a defense against IPR challenge only needs to win on any one of points #1, #2, or #3. To avoid IPR, however, the patentee needs to win on all three. If one side needs only to “hit” once to prevail, while the other side needs to “run the table,” you should expect the party who needs to run the table to fail in the end.

              1. Therefore, the PTAB necessarily has the power to decide the issue.*

                They have the power to decide whether a given sovereign immunity claim my place the item outside of their jurisdiction. This is decidedly different than deciding whether A claim to sovereign immunity is indeed a real claim.

                They do not have the authority to deny a sovereign immunity claim. The power you reference is how to address the presence of such a claim, and NOT whether or not the claim itself may be made.

                1. They do not have the authority to deny a sovereign immunity claim.

                  I feel fairly certain I must be misunderstanding the assertion here, because the straightforward sense of this quote is absurd on its face. Surely, you do not mean to say that if a patentee asserts sovereign immunity, the PTAB is obliged simply to credit that assertion—no matter how ill founded—and deny institution?

    3. I have seen two very different responses to the whole concept of entering freely into contracts with entities that may have sovereign immunity to certain government actions.

      Your “hint” appears to indicate that there is only one response.

      I see lots of spin, but little substance when it comes to particular sides of the responses.

      Quite distinct from any allegation of “sham,” the term has a definite legal context that even (or especially) judges should be aware of when they want to ‘criticize’ the effort without actually ruling on that particular aspect.

      If the arrangements BE a sham – as that term is properly used in law – then the arrangements should be taken care of per the existing law regarding shams.

  8. “anon”, kicking up the dust cloud (so impressive!): ALL patents are merely words on paper. Any of dozens of ways that the “logic” of the wielding of the “Gist/Abstract” sword leaves no limit to what may be cleaved.

    The argument that “all claims are ineligible because they are merely words on paper” is probably the worst patent law argument ever made here by anyone, ever, or at least in the history of this blog. Notice that I’m leaving a little wiggle room for an even worse argument but off the top of my head I can’t think of one. If there was one, you probably were also responsible for it.

    Congrats! You’re a very serious person.

    1. The use of “kicking up dust” as a dismissal technique without actually applying any critical thinking is noted.

  9. Kudos to Judge Linn. Unfortunately Alice is still leaving bupkis on the trail.

    Here’s some proof. Should either of the following claims be analyzed under Alice, Mayo or Myriad?
    A. A method of breaking glass comprising dropping a hammer on the glass, thereby crushing the glass.
    B. A method of breaking glass comprising dropping a hammer under the force of gravity onto the glass, thereby crushing the glass.
    When you arrive at the answer under Alice, you can only conclude Alice, along with Mayo and Myriad, represent low points in S. Court jurisprudence.

    Claim dissection for identification of the “inventive concept” is p**p. Under such analysis, “a method of treating bacterial infection with penicillin” would never have been patent eligible because the inventive concept was simply an idea: let me try treating this known bacterial infection with this natural product. Yet the discovery of a new use for a known compound remains subject matter eligible.
    The Courts should read up on CellzDirect, which has cogent and proper reasoning and a correct decision.

    1. Do the analysis on your claims. Let’s see how you think. Show everybody. You’re very serious! And don’t forget to state your assumptions about the prior art etc.

    2. Rick, the search is for a new or improved “manufacture.” Of course, manufacture includes machines, compositions, and processes. Claimed subject matter has to be something more than simply the ineligible subject matter and must at least be an improvement over pre-existing manufactures.

      This is not rocket science. It seems simple to understand which is why some of us do not understand the complaints of those who refuse to accept Mayo and Alice.

      1. Manufacture does NOT include processes.

        I believe that you are slipping into your antequated view of the statutory category of process as a mere handmaiden to the hard goods categories.

        1. anon, but it does. See, the Nielsen case. The court held the improved blast furnace directed to a manufacture (a machine) even thought what was claimed was process because the claim encompassed all apparatus between the bellows and the furnace to heat the air.

          1. No Ned – it does not. Per (at least) the Act of 1952.

            This has been explained to you – in detail – many times, and each time you simply disappear from the conversation only to reappear later spouting the same schlock as if the matter was never explained to you.

            (That’s called inte11ectual dishonesty)

          2. salavaged… (maybe):

            Your comment is awaiting moderation.

            October 19, 2017 at 7:57 pm

            No Ned – it does not. Per (at least) the Act of 1952.

            This has been explained to you – in detail – many times, and each time you simply disappear from the conversation only to reappear later spouting the same schlock as if the matter was never explained to you.

            (That’s called inte11ectual dishonesty)

  10. Anyone else think it was funny that the majority seems to conflict itself? On one hand they stated that under step 1 “[w]e look to whether the claims focus on a specific means or method that improves the relevant technology,” on the other they state that “[o]ur mandate from the Supreme Court under Alice step one is to ascertain what the claims are “directed to”, and not the “thrust”, “heart” or “focus” of the invention.” Are we supposed to determine the “focus” of the claims or are we not?

    1. The point of that passage is to emphasize the focus on the claims as opposed to some unclaimed “invention” floating around in the spec.

      Are you actually defending this junk? Do you take mass transit? You want mass transit companies to pay for endless streams of junk like this so they can pass the costs onto riders?

      Oh but wait! You’re going to tell me you’re concerned about “clarity” or some other bs. Give everyone a break already. This was a slam dunk. Good riddance.

      1. So, now we are bashing patents because they make licensee’s charge their customers more. Yep, let’s kill them patents!

      2. Do you take mass transit?

        I do. Do you?

        You want mass transit companies to pay for endless streams of junk like this so they can pass the costs onto riders?

        I want someone to invent a technology that enables me to pay for my bus fare with a credit card. I almost never carry cash, so if (on the first or second of the month, when my previous month’s bus pass has expired but I have not yet remembered to buy the current month’s pass) I get to the stop and find that I have forgotten to grab $2.25 from the coinbank on my wife’s nightstand, I need to march all the way back home from the bus stop to get the cash, because the bus does not accept credit cards.

        If patents are necessary to incentivize someone to invent that credit-card enabling technology, then hooray for patents. License costs are rather less of downside to me than having to march back home, making me late to the office.

        1. you need to move to minneapolis where you can simply go on line and add more money to your pass.

          1. Minneapolis has many things to recommend it, but my wife was born in the tropics. I can imagine several things being thrown at me if I were to suggest to her that we might move to an area of the country with even colder winters, merely so that I might have less of a hassle with bus fares.

            No, a straightforward solution of inventing a mechanism by which buses might accept payment with ordinary credit/debit cards would be much the better solution.

            1. Sorry, dude, but there seems to be prior art on that thing you want to invent: U.S. Patent Nos. 7,566,003, 7,568,617, 8,505,816, and 8,662,390.

              1. Prior art – such as that which you have supplied – does not address whether or not the 101 rejection is proper.

                Quite in fact, this leads to the rejection being improper.

        2. Greg I want someone to invent a technology that enables me to pay for my bus fare with a credit card.

          That technology already exists. It’s existed for many decades, even before you were born.

          I almost never carry cash

          I always do. I want someone to invent technology that allows me to pay for my transit rides with pennies. According to your “logic”, all we need is more patents and my dream will become a reality! Because the only reason things don’t happen the way you and I want them to happen is because we aren’t giving some sillyCON alley bros and their “investor” buddies exclusivity so they can gamble without risk. They are the most important people ever! Nothing happens without them.

          Certainly nobody would ever even try to solve this deep deep problem of how to pay for Stuff Greg Likes with a credit card.

          Here’s an “innovation”: a sensor on the bus recognizes you and just takes the money out of your bank account or out of your wife’s bank account if your account is empty. If both your accounts are empty, then your finances are frozen by your bank and you are never allowed to ride the bus again unless you pay $50,000. Many variations will be obvious to those of skill in the art of charging people money for stuff.

          Let me know when you’re ready to have a serious discussion about 101, Greg. It’s been years and you’re still sniffing “anon”s b-h0le. C’mon. You can do better.

  11. Knowing that Malcolm thinks that Diehr is simply wrongly decided, and also knowing that Ned never engages with th particular point, let’s take a little more critical look at the following statement:

    In the process of reaching this result, the court distinguished both Diehr and DDR Holdings:

    Diehr does not apply when, as here, the claims at issue use generic computer components “in which to carry out the abstract idea.”.

    Realizing that the actual “Point of Novelty” for Diehr was the programmed computer controls, what was the “speciality” computer in that case?

    Hint: the only speciality was the reconfigured computer with the added software conponen that provided the upgraded capability.

    Everything else was not a “Point of Novelty” and merely had th function that the items had previously.

    That the courts (and in particular, the Court) continue to lack any sense of inte11ectual honesty in the incongruities of their 101 mashed nose of wax only more so screams for Congress to apply their Constitutional power of jurisdiction str1pping of the non-original jurisdiction of patent appeals from the originators of all the 101 problems.

    1. Well, also, they distinguish DDR because this doesn’t have to do with the Internet. That is ridiculous. It was about a new technology.

      The bigger point is Obama put in charge of our patent laws a group of judges that are not qualified to sit on the CAFC. Neither Wallach or Renya or even close to being qualified to sit on the CAFC. The fact is that both of them were selected by Google as being ignorant and virulently anti-patent.

      Trump should wipe the CAFC clean and restart it.

      1. Trump should wipe the CAFC clean and restart it.

        That is a nice idea – but the wrong actor.

        Sadly, that task would be up to our friendly neighborhood captured Congress.

        First step: overrule Citizens United.

    2. Step 2B’s utilization of the ‘well-known’ suggests that the Alice analysis is time dependent. A claim eligible in 1981 may not necessarily be eligible in 2017.

      1. Time-dependency has no place in a true understanding of what 35 USC 101 entails.

        That you recognize the presence – but not the conflation – is a bit telling.

          1. Rather than mindlessness, perhaps you would like to provide some (any) cogent legal ground for making eligibility into a time-dependent thing….

            1. …that’s what I thought.

              On to other threads for Malcolm and his drive-by monologue “swagger”

      2. That is definitely a correct statement of the law as it stands. That this same proposition was once regarded as a reductio ad absurdum tells you how far off the deep end the law has been allowed to drift.

        1. Again, children: 101 is time dependent because most 101 analyses require an understanding of what was in the prior art.

          That’s never going to change and if you don’t understand why you are a walking malpractice case or just plain ig n0 rant.

        2. “Drift” is too kind of a word.

          When judicial branch rewriting of the purposefully wide open (properly designated) statutory law – as written by Congress – has so mashed the nose of wax of 101 as to result in that clear reduction, then even more direct action than what happened in 1952 is called for.

          1. “Drift” is too kind of a word.

            True.

    3. From Alice:

      In Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155, by contrast, we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a “well-known” mathematical equation, but it used that equation in a process designed to solve a technological problem in “conventional industry practice.” Id., at 177, 178, 101 S.Ct. 1048. The invention in Diehr used a “thermocouple” to record constant temperature measurements inside the rubber mold — something “the industry ha[d] not been able to obtain.” Id., at 178, and n. 3, 101 S.Ct. 1048. The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. Id., at 178-179, 101 S.Ct. 1048. These additional steps, we recently explained, “transformed the process into an inventive application of the formula.” Mayo, supra, at ___, 132 S.Ct., at 1299. In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.

      1. You quite miss the point of what was the actual “Point of Novelty” in Diehr (the dicta from the Justices that you cite just don’t change the reality of the situation).

  12. I would call this a poor decision that gets to the right result.

    Alice dealt with intermediated settlement. Bilski dealt with hedging. Ultramercial dealt with accepting advertising as a currency. Credit is a more fundamental economic concept than those concepts.

    Paying for something with credit is abstract. As the Court suggested, a new card (i.e. a new means of actually carrying out the credit). or a new machine for reading the card or even solving a technological problem with applying credit to the field of public transportation would all be eligible. But this is pretty clearly an attempt to simply claim buying a particular thing with credit.

    No need to shoehorn this into an abstract idea computer-data-processing thing. It’s paying for a good or service with credit, performed on a computer.

    Question for all you “112/103 solves everything” people: Assume that he also invented the good or service, but used conventional credit card processing hardware to pay for it. Thus at least one feature of the claim wouldn’t exist in the prior art. I assert that even if one were to assume the good or service were not conventional it *still* wouldn’t be eligible, and there is no mechanism (at least not with how the 112b law has been since ’52) to knock the claim down.

    That’d be a fun trick though: invent a new widget and file two applications – one for the widget, one for paying for the widget with credit – then sue the credit card companies for every sale paid for with a credit card.

    1. “Question for all you “112/103 solves everything” people: Assume that he also invented the good or service, but used conventional credit card processing hardware to pay for it. Thus at least one feature of the claim wouldn’t exist in the prior art. I assert that even if one were to assume the good or service were not conventional it *still* wouldn’t be eligible, and there is no mechanism (at least not with how the 112b law has been since ’52) to knock the claim down.”

      How about the non-functional descriptive matter doctrine? If “a method, comprising: purchasing a good, via a credit card” is obvious, then so is “a method, comprising: purchasing a working time machine, via a credit card,” irrespective of the fact that no one has yet invented a working time machine. That feature is non-functional with respect to the rest of the claim, and therefore has no patentable weight.

      Here, 103 (if not 102) could easily dispose of this claim.

      1. Now you are bringing up real patent law. In Alice Land with the goon squad (Google selected judges) there is no law.

        1. Real?

          Is not law by definition “abstract” (whatever that means) and thus cannot be “real?”

          😉

          (by the way, I am sure that payment IS real, so while the “idea” of payment is perhaps “abstract,” the actuality is most definitely not. The “idea” of anything is abstract. The idea of a bio chem molecule is abstract. Words on a piece of paper are meant to convey meaning – which is abstract. ALL patents are merely words on paper. Any of dozens of ways that the “logic” of the wielding of the “Gist/Abstract” sword leaves no limit to what may be cleaved.

          1. I am sure that payment IS real

            I just signed a paper transferring all my material possessions to you.

            How much do you weigh now?

            1. What does weight have to do with anything?

              Start with three resistors.

              Configure them on series.

              Weight that.

              Configure them in parallel.

              Weigh that.

              Now try to say something (anything) intelligent.

      2. Can you point to any case that clearly supports such an application? The cases involving non-functional material which I am aware of seem to involve ignoring printed/organized/described information, rather than excising the ‘subject’ of a process step from a claim (i.e., giving no patentable weight to X in “purchasing a X, via a credit card”).

    2. I would call this a poor decision that gets to the right result… [T]his is pretty clearly an attempt to simply claim buying a particular thing with credit.

      Hm, for whatever little my opinion is worth, I disagree. It is not clear at all to me that this claims is “clearly an attempt to… claim buying a particular thing with credit.” There have long been difficulties with running a credit card on a moving bus, given that credit card verification has traditionally required either phone lines or internet connection, and most buses have neither. This claim covers a method that gets past the problems associated with that lack of connectivity. As more and more buses become Wi-Fi connected, it becomes increasing possible to verify credit (and thus accept credit card payments), in a way that does not infringe these claims. Therefore, the claims do not cover “simply… buying a particular thing with credit.” They claim one ordered combination of steps to buy a particular thing with credit.

      * “Achieve a particular desired outcome [by the disclosed means or by any other]” is an unpatentable claim.
      * “Perform these steps to achieve a desired outcome” is patentable.

      These claims fit decidedly into the latter category.

      Question for all you “112/103 solves everything” people…

      I hear someone calling me.

      I assert that even if one were to assume the good or service were not conventional it *still* wouldn’t be eligible, and there is no mechanism (at least not with how the 112b law has been since ’52) to knock the claim down.

      I am not following. Why is it not eligible?

    3. The “112/103 solves everything” people are so full of shirt it’s coming out of their ears.

  13. Sometimes as an examiner you can just look at a claim and know what pointless drivel ultimately resulted in an allowance.

    and wherein the set of bankcard records identifies bankcards from a plurality of issuers; verifying the currently presented bankcard with a bankcard verification system, if the bankcard was not contained in the set of bankcard records; and denying access, if the act of verifying the currently presented bankcard with the bankcard verification system results in a determination of an invalid bankcard.

    I bet there was a 2/3 reference 103, but the references were silent about “a plurality of issuers” (as if this guy invented the concept of a *second* entity providing credit), verification and then “denying access” on the lack of verification. You’d be surprised how rarely applications with an authentication feature are silent about the result of either passing or failing the test, because everyone knows what it is.

    This wasn’t allowed because the office couldn’t find “using a credit card to pay for something” or “public transportation pay terminals.” This claim was allowed because the office often follows the legally incorrect rule of allowing something once you get to a certain number of well-searched references.

    Classic example of adding not-really-limiting ancillary features that have no real bearing on the obviousness actually creating an allowance. Counsel should be proud on this one.

    1. Did you check the actual prosecution history before launching into your story?

      (real question – I have not checked. yet.)

      1. I have not, but it’s certainly prior that people can pay for goods and services with credit, and it’s certainly prior that people have bought public transportation before, and that is what the alleged invention is, so I doubt the office fell down on the initial instance. Nor do I doubt that one could have found references for the other features (I can think of one prior art by a certain Doctor Jones that explicitly confirms what happens when you have “No ticket”).

        This is almost surely one of those “you consider the claim as a whole and look at all the references you’re citing” cases.

        1. I have not…

          You should have stopped there.

          Everything after that point only confirms that you are ranting out of control.

          But thanks for sharing.

          1. You should have stopped there.

            It’s true, I suppose some examiner could have been mentally incompetent enough to have genuinely considered paying for a bus ride with a credit card using conventional computer hardware non-obvious. In which case he probably got tossed out of the office and started prosecuting patents somewhere.

            1. “In which case he probably got tossed out of the office and started prosecuting patents somewhere.”

              Envy is not a healthy emotion.

  14. Wallach and Renya. Both Google selected and both completely ignorant of science, innovation, and patent law prior to their appointments to CAFC just a few years ago.

    It is ridiculous that judges that are so clearly do not have the qualifications to sit on the CAFC are making our patent laws.

    1. >>Rather, the claims are directed to the collection, storage, and recognition of data. We have determined that claims directed to the collection, storage, and recognition of data are not [sic] directed to an abstract idea.

      Of course, the irony here is the judges are doing exactly what they say is not patent eligible. So, the judges are holding that machines that can perform their duties as judges are not patent eligible.

  15. From the decision: The Asserted Claims are not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes. Rather, the claims are directed to the collection, storage, and recognition of data. We have determined that claims directed to the collection, storage, and recognition of data are not directed to an abstract idea.

    I checked the decision and the quote above is an accurate copy from the decision. The negative term in bold, however, is definitely a mistake that needs to be fixed before it ends up polluting a zillion briefs.

    1. Thanks MM – that is pretty clearly an error. I’ve contacted someone at the court.

      1. I’ve contacted someone at the court.

        Whew, thank goodness…

          1. Nice catch and response on that typo. anon’s OCD mysteriously receded in not being excited to fix that particular error.

              1. It’s a miracle… patent up and vanished like a fart in the wind.

    2. I see that there is an “errata” order today to fix that “not.”

  16. The idea of Judge Crybaby that focusing on “a ‘tangible application’ that serves a ‘new and useful end'” will magically end the alleged “uncertainty” (in fact, very little about eligibility is uncertain once you free your mind of the toxic k00l-aid that is being served over at Big Jeans Place 24-7) surrounding 101 is ridiculous.

    First of all, that approach was already tried and the result to the system was a catastrophic one that we will be cleaning up for years. Second of all, any attorney reading the phrase “tangible application that serves a new and useful end” can see that there is pretty much nothing under the sun that wouldn’t pass through that filter like cr @p through a goose. It’s a bottomless bucket.

    Judge Crybaby: All three nonstatutory exceptions are intended to foreclose only those claims that preempt and thereby preclude or inhibit human ingenuity with regard to basic building blocks of scientific or technological activity.

    News flash: logic and information and the application of logic to information are the basic building blocks of everything. And yet the CAFC does endless backflips to make sure that these building blocks remain protectable. And then Judge Crybaby complains about “inconsistency”? The answer is right in front of them. They’ve been staring into the abyss for YEARS and they simply lack the courage and integrity to do what needs to be done.

    They are intended to be read narrowly.

    The CAFC is reading them narrowly already. I’ve said it before and I’ll say it again: when you open the gates up to a flood of the worst junk ever applied for, you end up with a massive bolus of junk. Yes, the termination of giant radioactive lampreys should be “rare” in an ideal world. But when you dump a ton of toxic waste into the river, you end up having to spend a lot of time cleaning up the mess.

    Why is this is so hard to figure out? I mean, these are highly educated people and somehow they want to pretend that people were applying for data-processing g@ rbage like this from the beginning of the system. That’s not what happened. My goodness are memories that short?

    1. Formatted correctly this time:

      They are intended to be read narrowly.

      The CAFC is reading 101 too narrowly right now. I’ve said it before and I’ll say it again: when you open the gates up to a flood of the worst junk ever applied for, you end up with a massive bolus of junk. Yes, the termination of giant radioactive lampreys should be “rare” in an ideal world. But when you dump a ton of toxic waste into the river, you end up having to spend a lot of time cleaning up the mess. Complaining that “this should be rare” after you blithely opened Pandora’s box is a bit beyond the pale, I’d say.

      Why is this is so hard to figure out? I mean, these are highly educated people and somehow they want to pretend that people were applying for data-processing g@ rbage like this from the beginning of the system. That’s not what happened. My goodness are memories that short?

  17. DC: Note here the suggestion from the court that “a new type of bankcard, turnstile, or database” could be patent eligible.

    To be eligible (or patentable) a “new” “bank card” would need to be distinguished from previous “bank cards” based on the recitation in the claim of some novel structural features, e.g., a new polymer from which it is made or some microscopic patterning along the edge. Nonsense like “associated with a card holder’s health insurance account” is never going to cut it. And that’s as it should be.

    “New” “databases” aren’t eligible for patenting. If an attorney tells you otherwise, they are simply trying to con you out of your money. Don’t believe them. You will end up losing in court, one way or another. Malpractice is rampant in this profession and so is money-grubbing. I’ve seen it all. It gets worse as people get more desperate. It’s rather pitiful, frankly.

    1. “To be eligible (or patentable) a “new” “bank card” would need to be distinguished from previous “bank cards” based on the recitation in the claim of some novel structural features, e.g., a new polymer from which it is made or some microscopic patterning along the edge. Nonsense like “associated with a card holder’s health insurance account” is never going to cut it. And that’s as it should be.”

      Sure, but that’s because an association of a card or other identifier with an account is well known.
      But what if the card had a new structure that was non-physical? Specifically, Mal, you agree that a card made of a new polymer would be patentable… What about a card that stores the account information in some new robust data compression system? And that the claims specifically recite that compression system, rather than merely some data that has been previously stored. Would you agree that a card incorporating such a new structure is patentable? If not, why?

      1. “data” is not structure

        😉

      2. Information isn’t “structure.”

        Nice try though!

    2. Does it not matter that all of the claims are method claims and not apparatus claims? They are not claiming a new physical thing, they are claiming a method. The method must be new and useful irrespective of whether the underlying hardware that is used to perform the method is new and useful.

      1. Quite deliberately, the courts (following the lead of the Court) have blown through the actual statutory categories as if they did not matter at all.

        (that’s a clear sign that the “exception” has swallowed the rule)

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