Challenging Alice at the Supreme Court?

Recognicorp v. Nintendo (Supreme Court 2017) [RecogPetition]

The new Supreme Court petition for writ of certiorari asks the following questions:

In Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Court set forth a two-step test for determining whether computer-implemented inventions claim patentable subject matter under 35 U.S.C. § 101. First, a court must determine whether the claims at issue are “directed to” an abstract idea. Second, if the claims are “directed to” an abstract idea, the court must then determine whether the claims recite inventive concepts — elements which ensure that the patent amounts to significantly more than a patent upon the abstract idea itself.

The questions presented are:

1. Whether computer-implemented inventions that provide specific improvements to existing technological processes for encoding or decoding data are patent-eligible under the first step of the Alice test, even if those inventions involve or make use of abstract ideas.

2. Whether the use of new mathematical algorithms to improve existing technological processes by reducing bandwidth and memory usage can constitute “inventive concepts” under the second step of the Alice test.

The patent at issue here is U.S. Patent No. 8,005,303 that is generally directed toward a mechanism for creating a composite image.  In the brief, the patentee explains that the method allows the use of “composite facial image codes” to represent a face.

Claim 1. A method for creating a composite image, comprising:

displaying facial feature images on a first area of a first display …, wherein the facial feature images are associated with facial feature element codes;

selecting a facial feature image from the first area … via a user interface …

wherein the first device incorporates the selected facial feature image into a composite image …, wherein the composite image is associated with a composite facial image code … wherein the composite facial image code is derived by performing at least one multiplication operation on a facial code using one or more code factors as input parameters …; and

reproducing the composite image on a second display based on the composite facial image code.

After reading through this claim, I’ll give this petition approximately 0% of winning.

US08005303-20110823-D00000

93 thoughts on “Challenging Alice at the Supreme Court?

  1. The trick here is to devise a question which will be seen by the clerks to the Justices to be of significant legal interest, which is really pertinent to the facts in the case, and whose answer will advance the law in a favourable direction. My information is that there is a month or so for amici to think about this.

    On the whole, I think that disregard of the “all elements” rule on the basis of looser language such as “directed to” or more recently “focus” is profoundly unhelpful to the development of US law. The Federal Circuit should not be at liberty to create an arbitrary straw man and then shoot down the straw man rather than the detailed combination claimed.

    Judge Markey said: “Only God works from nothing. Man must work from old elements”. There is too little emphasis on the selection and arrangement of the claimed elements, and too much freedom in picking them apart.

    It is distressing that Judge Reyna cannot tell the difference between raw data and an image on a display. In Europe we have the Vicom decision which is directly on point and directly incompatible with the decision here.

    As a final thought, any student on my course at Bournemouth University in the UK who when asked to comment on a statute having substantive provisions and exceptions in an answer commented ONLY on the EXCEPTIONS would not only FAIL the question in its entirety irrespective of anything else in the answer but also prompt an interview with the student to determine his or her suitability for any role in the practice of law. If claimed subject matter falls substantively within one of the four eligible categories of section 101 and is new and useful, then invoking the judicial exceptions to exclude that subsect matter raises issues of separation of powers as at least one member of the Federal Circuit to my knowledge is well aware. It is astonishing that more emphasis is not placed on statutory compliance both in prosecution through the USPTO and in argument before the Federal Circuit.

    Come to think of it, that is a question that might be raised in this case. Arguably the process claimed is transformative, and therefore falls as a matter of substance and not mere presentation within the meaning of Section 101.

    1. Paul – these points of yours will only bring about derision from the typical naysayers that provide comments to these threads (and are only too pleased at the Ends-justify-the-means-LACK-of-critical-thinking so evidenced by how the courts (and the Office) have been using the only-too-ill-defined-and-ill-conceived “Gist/Abstract” sword. er, t001. provided by our Supreme Court.

      1. @ Anon

        Thanks for the kindly and well-meaning remarks in this and previous comments.

        Unfortunately as a UK national there is little I can do but to present arguments and where appropriate briefs. The key problem, obviously, is in the Federal Circuit and all that we can do is to present well-argued briefs understandable by judges who unfortunately are trained neither in technology nor in patent law. It is better to keep trying than to do nothing.

        1. It is better to keep trying than to do nothing.

          While not disagreeing with you per se, the availability of the following icon seems (distressingly) appropriate:

    2. These are good comments Paul. I think Alice completely circumvents the Patent Act and Congress. (Or almost completely).

      Alice is not even in the ballpark of being Constitutional.

  2. Social media users getting real mad and posting videos of themselves destroying things they already own is just one of the many d – mb political stunts that have increasingly become a staple of (mostly far-right) Tw – tter.

    LOL Seems like only yesterday that Paul M 0r 0n ville and his patent maximalists bros were burning their patents to protest IPRs. Very very serious stuff!

  3. If patents are found to be private rights, then I think a good argument can be made that Alice is unconstiutional. Basically, that the 101 arguments rely on underlying facts that should be presented to a jury.

    1. It will be interesting to see whether the (purposeful) obfuscation of 103 into 101 brings along with it “enough” of the factual underpinnings to require more than mere hand-waving as to several of the “facts” that currently are simply ignored in the swinging of the “Gist/Abstract” sword.

  4. The specification of the ‘303 patent states:

    It is known in the art to create images on the basis of components that are assembled to form a complete image. For example, a common technique for synthesizing single images of faces involves horizontally dividing the image of a face into bands for different features of the face such as hair, eyes, nose, mouth, and chin, respectively. Paper strips containing exemplary features are then be combined to form a composite drawing of a face. Yet another example involves a program element running on a computing platform which allows a user to select individual components and combining them on a pre-selected face. In a typical interaction, the user first selects the shape of the face then eyes, nose, mouth and other components and combines them to form a facial image. Many variations on this theme can be used as described in Kakiyama et al. U.S. Pat. No. 5,600,767, Yoshino et al. U.S. Pat. No. 5,644,690, Sato et al. U.S. Pat. No. 5,537,662 and Belfer et al. U.S. Pat. No. 5,649,096 whose contents are hereby incorporated by reference. For example, the Sato et al. Patent, entitled Electronic Montage composing apparatus, describes a system for creating a montage image of a face using a plurality of basic parts stored in a library.

    The specification thus establishes that existing prior art computer systems were capable of creating a montage image of a face using a plurality of basic parts stored in a library. Therefore, the advance over the prior art was: associating facial feature images with facial feature element codes; associating a composite image with a composite facial image code, wherein the composite facial image code is derived by performing at least one multiplication operation on a facial code using one or more code factors as input parameters; and reproducing the composite image on a display based on the composite facial image code.

    The advance over the prior art did not require and was not directed to the creation of any new technology. Rather, the focus of the claimed advance is the concept of deriving a composite code by multiplying component codes, which is a mathematical operation and an abstract idea. Associating the component codes with facial image features and associating the composite code with a composite facial image do not make the concept any less abstract. The claim fails Alice/Mayo step one.

    At Alice/Mayo step two, employing generic computer components to select and display images in a routine and conventional way does not amount to significantly more than the abstract idea itself. The claim is invalid.

    Once the inventor had the idea of associating facial feature images with component codes, deriving a composite facial image code by multiplying component codes associated with facial feature images, and then using the composite code to display the facial image there was no technological problem to solve. The idea could be implemented using the routine and conventional functionality of an existing generic prior art computer system.

    1. You are spouting goobly gook. Please try 102/103/112 analysis.

      Not a technical problem? Of course it is. The problem is how to transmit an image of a face with a few bytes (<100 say). The solution is to have databases of face parts and face transitions on both sides.

      This meets the EPO problem/solution IMHO.

      We seem to have a whole generation that thinks the nonsensical analysis of Alice has any meaning.

      1. The problem is how to transmit an image of a face with a few bytes (<100 say). The solution is to have databases of face parts and face transitions on both sides.

        Oh my goodness. It’s almost like … using code!

        Deep deep stuff. Like rocket science, really, except there’s no rocket and no science, just some grown man sitting on the floor picking his nose, filling his pants, and whining that if he doesn’t get a patent we’ll be like the Amish.

        1. Hindsight reasoning. J. Rich spoke often about how we don’t want a patent system based on whether another person feels it is inventive, but rather based on objective evidence.

          Alice is clearly unconstitutional for bypassing the Patent Act and for having no evidentiary standard. Pretty incredible that judges make findings of fact with no opportunity for the P or D to present facts.

          1. It is less than the “opportunity” to present and more for the treatment of things factual – under the law – that should be the emphasis here.

          2. Hindsight reasoning.

            Where’s the “hindsight”?

            You believe that the universal utility of code for simplifying communication would suddenly not apply when the communication was descriptive of a face? Seriously?

            My god grow the e f f up.

            1. Prior presence and hindsight reasoning are two very different things.

              Your stultifying Accuse Others needs to be put on the shelf.

    2. Please try 102/103/112 analysis.

      Not a technical problem? Of course it is. The problem is how to transmit an image of a face with a few bytes (<100 say). The solution is to have databases of face parts and face transitions on both sides.

      This meets the EPO problem/solution IMHO.

      We seem to have a whole generation that thinks the nonsensical analysis of Alice has any meaning.

      1. As described in the ‘303 patent…

        In the preferred embodiment, the facial code is a number in a given base.

        FIG. 8 shows apparatuses including an embodiment of the invention connected by a data transmission medium. (Two boxes connected by a line)

        The facial code produced by the process described above allows each facial image to be described with a very small number of characters compared to a graphical representation permitting the rapid transmission of the composite picture over data transmission medium. For example, as shown in FIG. 8, a police station at site A 804 using an embodiment of the invention can transmit the entire composite picture of a suspect to police station at site B 802 by simply sending the facial code for that facial image either verbally or through an electronic communication means 800. At the reception, police station at site B 800 enters the code into the composite picture system that displays the composite picture. The data transmission medium 800 between site A 802 and site B 804 may be a telephone line with a set of modems, and Ethernet connection, the Internet or any other communication medium suitable for the transfer of data. In the above example, site A 804 and site B 802 have on their local site a composite picture system of the type described in FIG. 1 or FIG. 7 of the drawings. A copy of the library of pictorial entities and image qualifiers is stored at each site and only the code needs to be transferred. Advantageously, the invention further allows the storage of a facial image by storing the facial code only on a computer readable medium. This may result in substantial savings in terms of memory requirements for storing the images since only a single instance of each pictorial entity and image qualifier needs be stored, the instance being in the library of pictorial entities and image qualifiers.

        ****

        In the above embodiment, the only necessary hardware is a generic computer and database at site A connected (over the Internet or other communication medium) to a generic computer and database at site B. This conventional arrangement of generic hardware for communicating data was well known long before the 1998 priority date.

        According to the specification, bandwidth and storage is reduced by using a numerical code for an image instead of the image itself. While transmitting less data does in fact reduce bandwidth and storage, the concept of using a code to represent a composite is older than ordering a fast food combo by number. Using numbers to represent composites was not an advance over the prior art and cannot be owned.

        Nothing new was needed to communicate a numerical value from one computer to another or to display an image on a computer in response to an input value. Therefore, the only thing novel was the specific way of calculating the number for the facial code, which is math and is ineligible for patenting.

        1. There are too many things wrong with what you are asserting for me to bother with you. But, here are a couple:

          You can’t just take a claim apart piecemeal. You have to consider as a whole. Read Diehr.

          Plus, you are not even using the logic used by Reyna. He basically said there just wasn’t enough detail in the claims from what was in the spec for an “inventive concept.” He didn’t say the spec didn’t have an inventive concept, but that the claims didn’t have enough of it.

          This 101 discussions are just nonsense. Try using 102/103/112. If those don’t work, then the odds are overwhelming that it is patentable in a rational world.

          1. .You can’t just take a claim apart piecemeal. You have to consider as a whole

            Welcome to the world of malpractice, folks. This is what you get when you spend too much time inhaling the mist between Big Jeans cheeks.

        2. AIGC, Inc,

          You are arguing Ends without proper Means.

          That is just not a small mistake.

        3. the concept of using a code to represent a composite is older than ordering a fast food combo by number.

          It’s actually about as old as human civilization, and probably a bit older.

          But, hey, the claim refers to computers so we all need to pretend we were born yesterday. Some rich entitled people like it that way, and the rest of us just live here to serve them.

      2. At 6.1 in this thread is a Link to Paul Cole’s take on this case, in PatentDocs. Thanks Greg deLassus. Readers might find the PatentDocs short Comments thread entertaining. Paul is quite blunt in his reply to Martin Snyder.

        Paul is a professor of patent law based in the UK. Looks like he too can see a technical problem that the invention here has solved.

        1. It’s not a difficult task to dismiss Marty.

        2. To Paul’s credit (and to Greg for the link), the following questions by Paul put for en banc STILL deserve some answers:

          • What scope is attributable to the phrase “directed to” in the first stage of the Alice test, at what level of abstraction is interpretation of a representative claim impermissibly untethered from the express language of that claim, and is an abstraction permissible where it omits reference to elements positively recited in a representative claim?

          • Is a new and beneficial result improving a technological process available to rebut an objection that claimed subject matter falls within the law of nature, natural phenomenon or abstract idea exception?

          • Is the Alice test, as applied in the breadth of the present decision, incompatible with the obligations of the United States under Article 27 of TRIPS?

        3. Paul is a professor of patent law based in the UK.

          Paul is pretty much completely cl u e less when it comes to 101. Happy to debate him anytime.

          1. You use that word “debate,” but I do not think that word means what you think that word means.

            1. I do not think that word means what you think that word means.

              Paul Cole knows what it means because I’ve held his hand and walked him down the road many times already.

              He’s a “professor” of 101 in the same way that I’m a “professor” of college basketball.

              1. Your version of “held is hand” is as suspect as your use of the word “debate.”

    3. “Once the inventor had the idea of associating facial feature images with component codes, deriving a composite facial image code by multiplying component codes associated with facial feature images, and then using the composite code to display the facial image there was no technological problem to solve.”

      Once the technological problem was solved, there was no technological problem to solve.

      Well… that part is true enough.

      1. Touche’. Once the mathematical problem (of deriving the facial code) was solved, there was no technological problem to solve since the mathematical solution was implemented using the routine and conventional functionality of an existing generic prior art computer system.

        I suppose this is why they are presenting the question: Whether the use of new mathematical algorithms to improve existing technological processes by reducing bandwidth and memory usage can constitute “inventive concepts” under the second step of the Alice test.

        1. was implemented using the routine and conventional functionality of an existing generic prior art computer system.

          This “Big Box of Protons, Neutrons, and Electrons” mindset has become a plague.

          Does that “existing generic prior art computer system” inherently have ALL future programming components “already in there?”

          The patent doctrine of inherency is important at this point.

          Notoriously, the Morse case tells you that ALL such future configurations are NOT there.

          Notoriously as well, the television show House and that protagonists view that “computers were invented once, so all improvements to the machine ‘just don’t count’ is a sad fallacy that unthinking people merely assume to be true.

  5. using one or more code factors as input parameters

    Enough already. This is such an absurd farce its unbelievable.

  6. performing at least one multiplication operation

    LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

    S00per techno!

  7. What is Uber’s “most valuable” patent?

    Anybody know?

    It’s Friday and I’m ready for some big weekend laughs.

  8. “Improvement by reducing memory usage”

    Relative to ….

    Oops. Too much nuance there.

    1. Relative to what is described in the background, e.g., gifs.

      Really MM, you should try to at least be a tad fair.

      1. Seriously? why would Malcolm start now, after more than eleven and half years?

        1. I think I get the nuance…

          Transmitting and storing ANY numerical value that refers to an image will require less bandwidth and memory relative to transmitting and storing the image itself. The patent owner cannot claim ownership of the fact that using a code as a reference is more efficient than communicating the whole thing, see e.g., post 12.2.1. (see what I did there?)

          Does transmitting and storing a facial code, which in the preferred embodiment is just a number in a given base, require any less bandwidth and memory relative to some other number calculated in a different way?

          1. You are using hindsight reasoning AIGC, Inc., in that you are saying the way the code was applied is obvious.

            I wish some of you people actually had real world experience designing products. I have. Things now that judges and I am sure the people on here say are obvious, were not.

            Once you see something it becomes obvious. Before you see it, it is not.

            You have a system here that has all sorts of parts. You can’t just say, gee, a code, obvious.

            1. They can and they do – but this is exactly what hindsight reasoning is called.

  9. These questions presented make too much sense and, if answered, would shed too much light on an area the Court prefers to keep in the dark and play hide the ball with.

    These questions shall not be answered by the Court, unless and until certain mega-corps get bitten by efficient infringement.

    1. You guys still don’t get it? The echo is loud and strong over st Big Jeans, I guess.

      What’s amazing is that people still pay attorneys (!!) to write junk like this. I guess what’s funnier is the idea know-nothings like the commenter above are supposed to worry about the quality of their provisional applications. LOL!

      1. Agreed, My daughter is an artist and at times makes composite prints, one image onto another. Artists have been doing this on paper since the printing press or shortly thereafter.

        1. What you said does not cover how the invention works.

        2. What are you agreeing to?

          You know the company that filed this application has a successful product?

        3. Does your daughter associate her composite image with a composite facial image code … wherein the composite facial image code is derived by performing at least one multiplication operation on a facial code using one or more code factors as input parameters ?

          Secretaries took dictation 70 years ago using pencil and paper. That doesn’t mean getting a machine to type what you say is trivial or an abstract idea.

          1. associate

            Ah yes: the “accociating” arts. Very very deep stuff!

            1. That is a great link, but can only be useful to those that want to think.

  10. Bad claims lead to bad decisions. I don’t think anyone would be happy if they did grant cert.

    1. Actually, the redoubtable Paul Cole has backed this case as a vehicle for restraining some of the juristic excesses that have followed from Mayo & Alice. Unfortunately, the team that did this cert. petition went with a much less interesting set of questions presented than Mr. Cole had proposed.

      I am doubtful that even a better set of questions presented would have tempted the Court to take cert. on this one, but the rather dreary set actually presented surely does not increase the chances here for cert.

      1. I agree with you – there will be no cert for this case.

        Of course, the questions I would put to the Court would be a little more direct

        (btw, the link is to the en banc effort – not the questions presented here for Supreme Court cert)

        What is perhaps of interest in the brief for the Court is that Recognicorp appears to be “tattling” on the CAFC for the “bright-line” application of the Court’s “Gist/Abstract” sword.

    2. I’d love it.

      A huge class of junk would end up expressly trashed and the door would be open even wider for the k-ll shot.

      The death of logic patenting works like a ratchet. It’s a one way street. Bring it on.

  11. The issues are poorly worded, but this claim should clearly be eligible if it were not for the train wreck that is eligibility jurisprudence.

    1. Translation: “everything on a computer should be eligible because lawyers need money”

      Seriously: this claim is pure g@r bage and everyone “associated” with it should be ashamed.

      1. We know you think it’s garbage. Tell us WHY and then maybe we can evaluate your position. Until then, I can’t be persuaded by “you’re wrong, duh” kind of statements.

    2. The claims should go down on 103 but not 101.

  12. As if there’s something special about “face” from the perspective of the computer. Like your calculator is different when the numbers being crunched are “associated” with real estate as opposed to yoga pants.

  13. Why would anyone spend money on this petition? Other than fooling some naive “investor” and trying to take more of their money, what would possibly be the point?

    I guess it could be the usual tr olling. Probably these guys are asserting junk left and right and this just shows their targets that they dont care about substance. It’s just a shakedown. A big grift.

  14. I’ll give this petition approximately 0% of winning.

    Same here. Those questions presented seem almost purposely contrived to make the points of law at issue sound arcane and picayune. This does not strike me as something that the Court will bite on.

    Basically, if the justices were not interested in taking Ariosa v. Sequenom, I cannot see why any other disappointed patentees should think that their claims are the ones so unjustly denied that the SCotUS will surely wish to intervene.

    1. Greg, the problem with the claim in Ariosa and the problem in this case is that there might have been a patentable invention disclosed in the specification but it was not claimed. The real technical advance in Ariosa appeared to be the method for isolating the paternal DNA from the maternal DNA in the maternal plasma. But all the claim required was amplifying the paternal DNA.

      Here too the patentee did not claim the new compression technique apparently disclosed, but merely stated that it involved multiplication. Thus the issue is not whether the whole of compression techniques have been declared ineligible by the Federal Circuit, is that this particular claim did not claim the compression technique actually disclosed and which may have been otherwise eligible.

      1. [A]ll the claim required was amplifying the paternal DNA.

        Two points:

        (1) That is just not true. The claim required amplifying cell free paternal DNA from the maternal serum. While amplifying DNA that belongs to someone who happens to be a father is (I will concede) old in the art, amplifying such DNA from a cell free sample taken out of a woman was entirely new, surprising, and useful as all get out.

        (2) All that Kary Mullis’ original PCR patent required was amplifying DNA. No one doubt’s that his method was §101 eligible. In other words, the mere act of amplifying DNA ought to be enough to confer §101 eligibility. If you think that someone else out there was amplifying this particular DNA before, that might well betoken a failure under §§ 102 or 103, but I still do not see how Sequenom’s claims were supposed to fail under §101 (except that the Court has so badly deformed the test for §101 that any invention can be construed to be §101 eligible or ineligible by artful styling of terms like “directed to” and “conventional”).

        1. “Cell free” was and IS a result — results are not claimable. They are not inventions.

          The method of producing the cell free paternal DNA was the invention and it was not claimed.

          1. “Cell free” was and IS a result — results are not claimable. They are not inventions.

            Sequenom’s was not a method for clearing cells from a blood sample. It was a method for diagnosing trisomy disorders. The result is the diagnosis, not the cell free sample. The cell free sample is merely an ingredient in the process along the way to reaching the result.

            Imagine that I am claiming an alloy, and I specify 10% nickel, 40% copper, and 0% iron. Is “0% iron” a result, or a structural limitation?

            “Cell free” = “0% cells”

            This is just as structural a limitation as “0% iron,” and not at all a result.

            1. Sure it is. Take Nielson, the blast furnace case. Would the abstractness of the claim be reduced if instead of claiming the heated box of indefinite structure, Nielson had simply claimed heated air without regard to how it was heated? That would have been even more abstract.

              The use of amplified DNA to do this or that was old. “Cell free” was new, but the invention, if any, is not in the routine process of using “cell free,” but in the method of creating “cell free.” Now that was indeed new and clearly eligible subject matter.

              1. Ned, you make no sense. Instead of taking Nielson and adding “abstraction,” you should be looking in the other direction.

                Tell me again – at that actual level of Nielson – how was that case decided?

                Your last paragraph is not parsable.

              2. I am not following what you are trying to get at in your first paragraph, Ned. The analogy feels off to me, but frankly I just do not understand it, so I cannot point to any particular flaw. Could you unpack what you are trying to say?

                Taking your second paragraph one point at a time:

                (1) The use of amplified DNA to do this or that was old. This is true, but I wonder if you are misunderstanding the nature of the claimed method. Sequenom did not use amplified DNA to do anything. Sequenom used the process of amplifying to detect something. If the DNA amplifies, then you know something by the mere fact of amplification. Once the amplification is done, however, the actual product of the amplification has no further use.

                (2) “Cell free” was new… No. This is not true, in any sense. For one thing, spinning cells out of plasma to leave behind cell free plasma was decidedly old by the time of Sequenom. Meanwhile, the existence of cell-free fetal DNA in the mother’s blood was as old as motherhood, so this was not “new” in the §101 sense (although it was “novel” in the §102 sense).

                (3) [T]he invention, if any, is not in the routine process of using “cell free,” but in the method of creating “cell free.” No. The invention lay in the use of the old technique (PCR) to amplify the old (but novel) template DNA to achieve a new and useful result (reliable trisomy diagnosis without amniocentesis). The Sequenom inventors did not “create” cffDNA (which was there even before they went looking for it), nor did they create any new techniques to isolate it once they discovered it. Nor is isolation of the cffDNA really any part of Sequenom’s invention.

                1. Greg, I will let Malcom jump interview wants to explain the technology just a bit more. But, there is nothing inventive at all about using amplification here. It is like using a microscope to observe something. The invention has to be and what is observed.

                  I just reiterate, that the nature sample being amplified, paternal DNA, is the result of a process of separation of paternal DNA from the maternal DNA in maternal serum. It is understanding that how can that was done was both new and nonobvious. The patentees should have clamed this invention.

                2. Is there anything “inventive” about “just using” protons, neutrons and electrons for any of the ”
                  hard goods” categories?

                  Maybe we should realize that Congress, way back in 1952 removed this whole judicial “inventive gist” thing….

        2. In other words, the mere act of amplifying DNA ought to be enough to confer §101 eligibility. If you think that someone else out there was amplifying this particular DNA before, that might well betoken a failure under §§ 102 or 103, but I still do not see how Sequenom’s claims were supposed to fail under §101

          Because 101 is not a static thing. A book was originally eligible, but a claim filed today directed to a book + a math equation in it is obviously “directed to” to the equation, and the book is conventional under Step 2.

          The reason “directed to” exists is because the Federal Circuit has usurped the Supreme Court’s previous 112b caselaw that limited the claim to the actual invention. i.e. if you invented a new more powerful car battery, but your claim comprised the battery, the engine and the wheels, that claim would have failed under pre-52 112b jurisprudence. Because the Federal Circuit refused to follow this 112b in a post-52 world, now people think they’re allowed to include the the engine and the wheels despite the battery-engine and engine-wheel interactions are old. Now people not only include the engine and wheel but try to use their inclusion to support the eligibility of the battery.

          The battery (the actual invention) is either eligible or it isn’t. The battery doesn’t become eligible because you re-teach the art what it already knew about a battery-engine interaction or an engine-wheel interaction. Thus we get “conventionality.”

          The first patent was for amplifying DNA. That was eligible. The second patent was for teaching people that paternal DNA existed in a place nobody knew it existed before. That is not eligible. The fact that once people know that paternal DNA exists somewhere means they can perform the previous amplifying DNA on it for predictable results does not suddenly turn the ineligible natural law/fact into an eligible invention.

          If the claim was a jepson style claim where it said “Performing the known method of amplifying DNA wherein: The DNA that is amplified is paternal DNA located in a previously unkown-to-occur place” the ineligibility would have been more clear.

          1. This.

            Only exemplifies how “Fed up the scoreboard is.

            Random gets so many things wrong here, there is no clear starting point to provide the correct understanding of the law as written by Congress in the Act of 1952.

          2. A book was originally eligible, but a claim filed today directed to a book + a math equation in it is obviously “directed to” to the equation, and the book is conventional under Step 2.

            You are proving my point for me here. Cite me a case where a claim to a book with a new writing is excluded on §101 grounds. If I presented such a claim, it would be excluded on §102 grounds because the novel writing gets no patentable weight, not on §101 grounds. See, King Pharma. v. Eon Labs, 616 F.3d 1267 (Fed. Cir. 2010), where the court reversed the 101 invalidation but affirmed the 102.

                1. anon, choosing not to final precedent from prior to 1952 is what got Rich and the Federal Circuit in so much trouble.

                2. Ned- NOT recognizing and acknowledging the changes in law that CONGRESS put into place with the Act of 1952 is what gets YOU into so much “trouble***”

                  Your attempts to impugn Judge Rich, when all that Judge Rich had ever done was to apply the law as passed by Congress, is a well recognized slur campaign.

                  Put simply: there was not a single jurist (at any level of the US judicial system) that knew the patent law as passed by Congress better than Judge Rich.

                  That you want some other law to be the patent law is quite clear – quite clear in that you refuse to recognize and accept the plain history that lead up to the Act of 1952, and what the Act of 1952 actually did with patent law.

                  This shows itself repeatedly in our conversations as you always running away from the counter points I present based on an understanding of what the Act of 1952 entails.

                  ***trouble being simply incorrect on what the patent law of the US Sovereign is – you may of course feel free to hold any opinion that you want as well as may espouse any change in law that you want – but you are NOT free to misrepresent the law as enacted with the Act of 1952. At a minimum, such is inte11ectually dishonest, and at its heart is unethical.

              1. Thanks for the citation, Ned. I wish I could figure out what was going on in that case. They never give the patent number, nor the claim language. The court explicitly denies that they are passing on a case about a book, and instead contend that they are passing on a case about a method for making a book, although I gather that the patentee insists that he is claiming a book (a manufacture) and not a method. I really do not know what is going on in that case.

                In any event, I suppose that my challenge to Random Guy ought to have been to cite me a precedent, not merely a case. Congress effaced second circuit holdings from any relevance to patent law back in 1980, so the poorly written and confused nature of the second circuit opinion is not its biggest failing. The fact that it stands for nothing anymore is rather a bigger point for Guthrie‘s irrelevance to the matter under discussion.

                1. Greg,

                  Surely by now you realize that relevance is irrelevant to Ned. Once he finds a case he thinks supports his windmill chase, that case will be quoted (and misquoted) endlessly.

                  For example, how much do you want to bet that Ned came across the Guthrie case because it references his other hobby horse (Hotel Security)?

                  Never mind the fact that both Prof. Crouch and David Stein systematically dismantled Ned’s retro/revisionist historical tilting.

                2. I am not nearly so willing as you are to brush off Ned’s response here. I asked for a case, and he cited me a case, and a case that I had never read before at that. I cannot quite concede that the case shows that for which I was challenging, but Ned clearly knows a great deal more of the law on this point than do I. I am reluctant—as yet—to say that I quite know that he is wrong here.

              2. Greg, the patent was for how to compile a freight card.

                “What Guthrie shows is how to compress into small space a lot of information about freight tariffs; he is really giving advice as to how to make indices, as one might advise concerning dictionaries or directories; and the patentee substantially calls his work by the latter name, when (ut supra) he lauds it as completely describing a given tariff ‘as far as is practicable in a directory.'”

                “The patentee may and does call what he produces a manufacture, to wit, a book of so many leaves and a given amount of print thereon; but the question is not what an interested party calls it, but what is it, and we consider the only possibly novel part of it, what might be called the plot of the work, i. e., the story revealed, and that can be copyrighted, but not patented.

                Whether a thing is a manufacture or not is sometimes a close question ….

                [W]e consider this patent as disclosing merely advice as to how to make an index, and the means (if any) disclosed for doing it as not patentably novel.”

      2. “The real technical advance in Ariosa appeared to be the method for isolating the paternal DNA from the maternal DNA in the maternal plasma”

        Whya? The invention, in its entirety, was the knowledge that fetal DNA could be found in maternal plasma if one knew where to look.

        Reasonable people might debate if straight scientific discovery can be protected by patent, but not that old methods are somehow new methods when looking at different things.

        1. The invention, in its entirety, was the knowledge that fetal DNA could be found in maternal plasma if one knew where to look.

          No, it was not. Not at all. You could not infringe Sequenom’s claims merely by knowing about cffDNA or thinking about cffDNA. You are correct that the inventors discovered cffDNA, but that is not the invention that they claimed. They claimed a practical application of the discovery.

          The law has long been that one may not claim natural laws per se, but one may claim practical applications of those natural laws. That is exactly what the inventors did here, and yet the courts (following a totally whacked SCotUS test) ruled the claims ineligible. This is Exhibit A for why and how the Mayo test is wrong.

          1. Greg, you are proving that you do not understand the difference between claiming an invention and claiming an idea.

            Take a look at Perkins clue for example. The inventor had come up with a new way of processing materials to produce glue, but rather than claim that process, he claimed the resulting glue by its properties. That’s what’s going on in Ariosa v. Sequenom. The cell free source for application is the result of a process of separating the maternal and paternal DNA from the maternal serum. That process was a new. Claiming the cell free starting point for DNA amplification claimed the novel process by describing its results.

            1. Ned,

              You are the one showing a lack of understanding – not Greg.

            2. The inventor had come up with a new way of processing materials to produce glue, but rather than claim that process, he claimed the resulting glue by its properties. That’s what’s going on in Ariosa v. Sequenom.

              No. This is not correct. The Sequenom claim is reproduced below:

              A method for detecting a paternally inherited nucleic acid on a maternal blood sample, which method comprises:

              removing all or substantially all nucleated and anucleated cell populations from the blood sample,

              amplifying a paternally inherited nucleic acid from the remaining fluid and

              subjecting the amplified nucleic acid to a test for the Paternally [sic] inherited fetal nucleic acid.

              NB, they do not claim the cffDNA itself, nor the amplicon of the cffDNA. One might well be in possession of the cffDNA or the amplicon, and make free use of both without infringing the claims. One only infringes the claims if one amplifies the cffDNA and tests the amplicon for an (unspecified) SNP.

              In other words, they are not claiming the “glue.” They are claiming the method used to make the “glue.” Just as you acknowledge to be allowable.

              I will say that I think that this claim is flawed. By failing to specify any particular test SNP, or any particular amplification primers, it is difficult to agree that the claim is enabled throughout its whole scope. The failure to specify such essential elements could also be said to constitute a failure of definiteness. In other words, I do not think that this claim deserved to survive.

              Its faults, however, are not §101 faults. The fact that the CAFC thought that it must fail under §101 demonstrates how badly out of whack the §101 analysis has become.

              1. But if you strip away the details of the method to leave nothing else but “just do it,” then one is claiming in the abstract. That is the probable identified in Morse.

                1. if you strip away the details of the method to leave nothing else

                  That magic “Gist/Abstract” sword works that way on ANY claim.

                2. I agree with Ned. I mean, just look at this abstract monstrosity (amirite, Ned?):

                  A method comprising:
                  using a controller chip to interface a flash storage system with or without a controller to a computing device, the controller chip comprising a flash adapter, wherein the flash storage system comprises a flash section and at least a medium ID;
                  determining whether the flash storage system includes a controller for error correction; and
                  in an event where the flash storage system does not have a controller for error correction, using firmware in the flash adapter to perform operations to manage error correction of the flash section, including bad block mapping of the flash section in the flash storage system that is coupled to the flash adapter section.

          2. Greg, there was another problem with Sequenom’s claims. They did not just claim “a” practical application of the discovery, they broadly claimed [preempted] every possible known or unknown diagnostic or screening application of that discovery. Like claiming every possible practical application of the discovery of very small amounts radium in pitchblende.

            1. [T]hey broadly claimed [preempted] every possible known or unknown diagnostic or screening application of that discovery.

              That “preempted” looks spurious to me. I honestly do not know what that even means. If I claim a compound that is useful to treat (at least) hypertension and diabetes, I also preempt its use for any other maladies against which it might later be found to be useful. No one blinks an eye at that. I get my 20 years and then the world gets it for the rest of eternity.

              If you mean, however, that there is a §112 problem because they have shown it to be useful for the diagnosis of one disorder, and claim it for the diagnosis of any disorder, then you get no argument from me. It is a “reach through” claim, and deserves to fail on §112 grounds, just like any other “reach through” claim. As I said, I think that this claim is §112 flawed. I just cannot agree that there is any §101 problem here.

              1. Also Greg, there is a relationship between lack of enablement and claiming in the abstract. A claim to a principal abstract of course is not enabled. Actually, as Morse stated, when one claims idea, one doesn’t even need a specification.

  15. It’s not a good claim. There aren’t enough details in the claim. This would be a terrible case to go to the SCOTUS.

    Issue 1 seems to be awkwardly worded. Basically, they are asking whether a computer implemented method can be directed to an abstract idea, which I think the SCOTUS has already said yes.

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