by Dennis Crouch
Two-Way Media v. Comcast (Fed. Cir. 2017)
Most internet communications involve unicast communications – one point to one point. Although Patently-O is accessed by many thousands each day, each HTTP request is treated separately and uniquely. In some circumstances, you might imagine that multi-casting would be more efficient and capable of reducing certain network traffic. Two-Way’s asserted patents (U.S. Patent No. 5,778,187; 5,983,005; 6,434,622; and 7,266,686) are directed to system and methods for multicasting communications over a network.
Claim 1 of the ‘187 patent, for instance, is directed toward a “method for transmitting message packets over a communications network” and includes steps of “converting a plurality of streams of audio and/or visual information into a plurality of streams of
addressed digital packets;” “routing” the streams to “one or more users” based upon “selection signals” received from the users; and “monitoring” the receipt on a user-by-user basis with information about “the time that a user starts [and] stops receiving” the A/V stream.
Two-Way sued Comcast (and others) for infringement. However, the district court granted the defendant’s motion for judgment on the pleadings – holding that the claims were invalid as ineligible under 35 U.S.C. Section 101 as interpreted by the Supreme Court in Alice and Mayo. In that process, the district court refused to consider evidence of the patents’ novelty and nonobviousness – holding that such evidence would be irrelevant to a Section 101 inquiry.
The proffered materials are irrelevant to the § 101 motion for judgment on the pleadings. None of the materials addresses a § 101 challenge to claims of the asserted patents. The novelty and nonobviousness of the claims under §§ 102 and 103 does not bear on whether the claims are directed to patent-eligible subject matter under § 101. . . . Because the proffered materials are irrelevant to the instant§ 101 issue, I have not considered them.
[District Court Judgement: Two-Way Dismissal].
The district court then went-on to find that the claims were directed to a collection of abstract ideas, including sending information; directing information; and monitoring receipt of information. The court then went on to hold that the claims lacked any ‘inventive concept’ beyond the abstract idea itself.
On appeal, the Federal Circuit has fully affirmed these holdings – noting particularly that novelty and non-obviousness evidence is not relevant to the inventive concept question:
[The district] court correctly concluded that the [submitted evidence] was relevant to a novelty and obviousness analysis, and not whether the claims were directed to eligible subject matter. Eligibility and novelty are separate inquiries. Affinity Labs (holding that “even assuming” that a particular claimed feature was novel does not “avoid the problem of abstractness”).
Note here that the court seemingly offered a road-map for the patentee — a technological arts test — noting that the specifications appear to describe a “system architecture as a technological innovation” but “the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.”
Invalidity judgment affirmed.
worst CAFC decision in years: "ordered combination" novel but not "inventive concept" when doesnt preempt prior art?https://t.co/nQ9yB8BJQC
— J Nicholas Gross (@JNGross) November 1, 2017
Claim 1 of the ‘187 patent:
1. A method for transmitting message packets over a communications network comprising the steps of:
converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol, for each stream, routing such stream to one or more users,
controlling the routing of the stream of packets in response to selection signals received from the users, and
monitoring the reception of packets by the users and accumulating records that indicate which streams of packets were received by which users,
wherein at least one stream of packets comprises an audio and/or visual selection and the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection.
Sounds like they screwed up their response. The court just rejected the arguments because they weren’t made against the 101 objection not because of a problem with the arguments themselves.
After all, every Alice decision assesses novelty and inventiveness to determine the “inventive concept” and then looks at eligibility. Unfortunately, many of these decisions seem to conflate the 103 and 101 assessments, often using the ‘known process merely implemented on computer’ assessment which is a 103 assessment NOT a 101 assessment.
Sounds like Two Way’s counsel is more to blame here. Instead of trying to introduce the evidence for 102 and 103, they should have instead argued that the evidence was to show that the patents are not abstract. We all know the courts muddle novelty and non-obviousness with patent eligibility, but they are not going to admit it outright.
Yes blame the victim.
Yes. They set themselves up for this, so they are to blame for this particular outcome. I’m not disputing that the courts have no idea what they’re doing when it comes to 101, but you can’t expect them to openly contradict themselves. They are going to keep those contradictions vague in the orders and opinions.
sister anon,
I have to wonder if you ascribe to the criminal context of “she was asking for it by dressing like that” line of “defense.”
LOURIE, REYNA, and HUGHES. No information processing patent can survive that panel. Two charter members of the goon squad and an old man that doesn’t understand modern technology.
It is all easy and abstract, and yet, we are all going to lose our jobs from it. Can someone resolve this paradox?
link to motherjones.com
we are all going to lose our jobs from it.
What is your job?
I am a paid blogger like you.
“For the purposes of employment, we don’t really care if a smart computer has a soul—or if it can feel love and pain and loyalty. We only care if it can act like a human being well enough to do anything we can do.”
Not true. The people making AI care very much about this. Observe the killing of Tay by her own creator for wrong-think.
Fact is, you guys are always too optimistic about AI.
“So who’s left? Like it or not, the only real choice to sound the alarm outside the geek community is the Democratic Party, along with its associated constellation of labor unions, think tanks, and activists.”
^Leftist propaganda. The geek community was in their pockets until gamer gate where their feminazi wing assaulted their gamer geek wing for no good reason (other than many of them possessing a penoose), thus red-pilling the gamer geeks and putting them on the path of the hard right wing forever. Thereby creating the beginnings of the community that would begin to fight the feminazis on their own territory.
To be sure, Donny T did not enjoy hordes of anime-right and gamer-right propagandizing for him against the leftist propaganda machine because the gamers were left unmolested. Eventually the left eats itself.
“Imperfect as it is—and its reliance on rich donors makes it conspicuously imperfect—it’s the only national organization that has both the principles and the size to do the job.”
The democratic party has literally zero principles other than “muh victims” now. Nor are they looking at having any in the next few years.
Lots of issues with these opinions, especially on the pleadings.
Let’s look at the Affinity Labs citation: “even assuming that a particular claimed feature was novel does not avoid the problem of abstractness”. This statement doesn’t logically support the holding. True, just because something is novel doesn’t make it patent eligible – e.g., discovery of a new law of physics. This doesn’t mean that novelty has no bearing on eligibility under the Alice framework.
I see at least a few ways that evidence of novelty and non-obviousness inform patent eligibility.
First, as a threshold consideration, assume for sake of argument that you receive an Office action with only a Sect. 101 rejection in which zero prior art or other evidence is cited to support the assertion that all claimed features are merely conventional. Well, this doesn’t comply with the Admin Act. So, improper rejection.
Beyond meeting the bare bones evidence needed to support the conclusion that all features are merely conventional, what about actually proving that each and every is in-fact conventional. Not proper on the pleadings.
Lastly, the second prong of Alice looks at whether there is sufficiently “more” to transform an otherwise abstract idea into a patent eligible invention. It’s evident that unexpected results and advantages of the solution come into play here, which are themselves features of obviousness and perhaps even novelty analysis.
This is the major flaw in most of the 101 analyses. 102/103 have specifically delineated elements that must be met in order to prove a prima facie case. Each of these require evidence from an examiner, not mere examiner opinion.
In Poisson, PTAB provided a good framework for creating the elements of a prima facie case for 101 when they found that a 101 rejection lacking any evidence is insufficient. In fact, the panel used “lack of prima facie” case as the basis to overturn the rejection.
Lastly, the second prong of Alice looks at whether there is sufficiently “more” to transform an otherwise abstract idea into a patent eligible invention. It’s evident that unexpected results and advantages of the solution come into play here, which are themselves features of obviousness and perhaps even novelty analysis.
I don’t think “unexpected” has much to do with it. There must be an improvement. See, Diehr. In Nielson, the improvement to the furnace was both great and unexpected.
“ See, Diehr.”
You are aware Ned that prior perfectly cured rubber was known, right?
Yield.
Forget Diehr, no industrial or mechanical control process could survive that panel of Luddites.
Well, actually it wasn’t, at least not perfectly cured over a large and irregularly-shaped object like a tire.
Diehr’s own prior patentt was to measure temperature once, compute the Arrhenius equation once, compute a curing time once, wait, open the press. The improvement in Diehr’s application that reached the Supreme Court was to put that in a loop, to repeatedly measure temperature, compute Arrhenius equation and curing time, and open.
I don’t recall the Diehr claims being limited to irregularly-shaped objects.
They weren’t – and the fact of the matter was that perfectly cured rubber – even irregularly shaped objects – WAS achieved in the prior art.
Perhaps more by “craft” than by “just run the software,” but the point remains that that the object has been achieved and was in the prior art (as an object).
“Well, actually it wasn’t, at least not perfectly cured over a large and irregularly-shaped object like a tire.”
At least in that particular manner of curing.
“open”
Auto-open.
“Auto-open”
Auto-open mechanisms were known in the art.
“. Well, this doesn’t comply with the Admin Act. So, improper rejection.”
How so?
(no snark)
Two-Way is an appeal from a district court decision. Administrative Procedure Act is irrelevant.
But I see “I invented that” @ 18 is talking about a hypothetical redo back in the PTO. Anon, IIT’s hypothectical is perfectly clear about the violation of Administrative Procedure Act — “a Sect. 101 rejection in which zero prior art or other evidence is cited to support the assertion that all claimed features are merely conventional.” Article III courts can (they’re not supposed to, but they can because Justice Scalia in Myriad says they can) pull stunts like that, make up facts out of thin air. Agencies can’t.
I realize that you may have provided a chapter and verse on this previously, David, but what specifically about the Administrative Procedure Act would you reference to combat a de facto (and admittedly conclusory) statement from an examiner that “x” is either “merely conventional” or perhaps “that’s just a generic computer doing what a generic computer does.”
I have yet to be able to get any examiner to actually define (through invoking the APA and the Office’s own requirements for “official notice of facts” the requisite factual underpinnings required for examiners to actually APPLY the Court created Alice/Mayo test.
ALL that I get is a rather weak, “well the courts did this, and your case seems like that case.”
As you may seem to imply (apologies if I am putting word into your mouth), any such Alice/Mayo applied test in an Article III forum is necessarily different than the exact same test being applied in an administrative executive agency setting in a first instance.
anon,
David is way more knowledgeable in this area than I am, but here’s a quick outline:
Section 706 sets forth that a “reviewing court shall- … (2) hold unlawful and set aside agency … findings … found to be- … unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute”.
In In re Gartside, the Federal Circuit “held that substantial evidence is the correct APA standard of review for Board factual findings”. (In re Zurko, 258 F.3d 1379 (Fed. Cir. 2001) (citing In re Gartside, 203 F.3d 1305 (Fed. Cir. 2000).
The Supreme Court has made clear that “Substantial evidence is more than a mere scintilla” and that “[i]t means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consolidated Edison Co. v. Labor Board, 305 U.S. 197, 22 (1938) Further, “[m]ere uncorroborated hearsay or rumor does not constitute substantial evidence.” Id. at 230.
I also like to argue that unlike a judge or jury, an Examiner has a burden of establishing a prima facie case of patent ineligibility. This argument can be buttressed by the PTAB’s suggestion in Ex Parte Poisson that “[t]he PTO bears the initial burden of establishing a prima facie case of patent-ineligible subject matter under 35 U.S.C. § 101.” Ex Parte Poisson, Appeal No. 2012-011084, slip op. at 5 (PTAB Feb. 27, 2015). This is even further reinforced by their ultimate holding that “absent supporting evidence in the record — of which there is none, the Examiner’s opinion is an inadequate finding of fact on which to base the Alice analysis.” Id., slip op. at 5.
JCD
Sorry, Anon, another basic legal principle that you don’t get. Two explanations (one from “I invented that,” one from me) is the max per customer. I can’t push a string.
“a Sect. 101 rejection in which zero prior art or other evidence is cited to support the assertion that all claimed features are merely conventional.” Article III courts can (they’re not supposed to, but they can because Justice Scalia in Myriad says they can) pull stunts like that, make up facts out of thin air. Agencies can’t.”
Interesting. I think that we have used this to win at the PTAB, but that the Examiner just issued a new rejection with some evidence. I’ll see if I can dig up the case.
I think there was also an article about this on the web. This is an interesting approach.
I’d like to see them have to show evidence that the abstract idea that they contend the claims are directed to is an abstract idea. Often, I just see a few words removed from the claims used as the abstract idea.
That’s a rather bizarre answer David.
My being nice and polite to you gets a “push a string” snarky comment…
You do hold a grudge, don’t you?
Just because you do not like the fact that I am correct when it comes to a number of things you don’t like (for example, that the Void for Vagueness doctrine applies outside of criminal law, or that MOST state attorney oaths differ from how attorneys are called to treat the separation of powers and the LACK of ascendancy of the judicial branch ABOVE the Constitution) does not warrant such immediate snark when I throw you a slow ball down the middle of the plate to set up your knowledge on a critical item in today’s world of the executive branch administrative agency applying a REALLY b@d “Alice/Mayo” broken-scoreboard test which basically calls for the Office to make conclusory statements on clearly undefined terms of the “test.”
Is this because you do not want to lend any credence to the notion that the test itself (let alone how the test is applied outside of the judicial branch) is SOOOO decrepit because – gasp – it is far too vague?
Is your eg0 that wrapped up in your error of the Void for Vagueness doctrine discussion?
David,
Thanks for emphasizing this. It seems uncontroversial, but I raised this issue at the TC3600 Partnership Meeting and was unable to get a straight answer. I’ve also made this argument countless times to the PTAB, but have yet to get back any decisions.
On the other hand, just yesterday I had to respond to an Examiner’s answer that came straight out and alleged that “[u]nlike rejections under §102 and §103 which are evidence based, §101 is not evidence based but rather is a matter of law and such, no evidence is required” (sic).
This is the most blatant I’ve ever seen the proposition articulated, but it’s a position that is endemic to certain art units at the PTO, and it seems too widespread to not be receiving at least implicit support from above the examiner level. This is reinforced by the fact that when asked about it, neither the TC3600 director nor an attorney from OPLA seemed willing to come out and agree that an assertion that something is conventional generally requires evidentiary support or a taking of official notice.
JCD
“[U]nlike rejections under §102 and §103 which are evidence based, §101 is not evidence based but rather is a matter of law and such, no evidence is required”…
Wow. Well, in a sense, the honesty is refreshing (even if the sentiment being expressed is appalling). I have read some doozies of office actions, but that one might well take the cake.
Greg,
I had literally the exact same reaction (“Applicant appreciates the Examiner’s candor and willingness to clearly articulate her position. This makes it much easier to highlight the relevant issue that must be addressed and settled to resolve this appeal.”)
The most amazing thing is that the language isn’t even from an Office Action – it’s an Examiner’s Answer which has been approved by a panel of examiners (and likely an appeals and/or 101 specialist as well)!
JCD – with regards to your point that Sect. 101 has been construed as “not evidence based”, I think the way to attack that is to: (1) point to the fact that the 101 rejection relies on an assertion, and (2) that all assertions within the admin context need to be supported by a rationale underpinning, which can be evidence and/or reasoning.
In the case that the Examiner asserts that all elements are merely conventional, no amount of pure reasoning can support that assertion unless the claim elements are capable of instant and unquestionable demonstration as being well-known – i.e., the Official Notice standard. A truly pure mental process might qualify here. In most cases, Official Notice is not proper, and therefore actual evidence should be present to support the assertion.
I invented that,
Thanks! In situations like this I generally try to make several related points:
(1) unlike a judge or jury, an Examiner has a burden of establishing a prima facie case of patent ineligibility;
(2) the relevant inquiry is not whether functionality is currently conventional, but instead requires determining whether such functionality was conventional at the time of filing, and since no one can be expected to remember WHEN something became conventional, evidence is necessary;
(3) an assertion that something is conventional is akin to taking of official notice, and courts have “reject[ed] the notion that judicial or administrative notice may be taken of the state of the art” because “[t]he facts constituting the state of the art are normally subject to the possibility of rational disagreement among reasonable men and are not amenable to the taking of such notice”) (citing In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973); and
(4) the Office “cannot simply reach conclusions based on its own understanding or experience—or on its assessment of what would be basic knowledge or common sense”, instead, the Office “must point to some concrete evidence in the record in support of these findings” (citing In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001)).
JCD —
I appreciate the degree to which you get it, and I’d like to share some experiences. Could you send me an email so we can talk adultish? D Boundy [at] Cambridge Tech Law [dot kom].
I have to wodner if you still have your undies in a bunch from being proven wrong on the Void for Vagueness thing (or the limitations of the Commonwealth of Massachusetts oath of office thing….)
this is excellent. Thanks.
Good points JCD,
However….
1) In cases that I have seen, the examiner merely continues to proclaim that they have established a prima facia case because “well, this is sort of like what the courts have done.”
2) establishing such conventionality – with evidence – is ignored; even when specifically asked for it. By the way, what is the definition of “conventional”…? is it the same as “not novel”? or perhaps “obvious”? or perhaps, it NEEDS to be something more – something like, “in widespread use.” A related question: where is the legal tie to the statutes themselves for this (undefined) term of “conventional?”
3) Official Notice is flatly denied to being taken. What is your response to such a clear false position?
4) Again, this aspect is being ignored. So far, what I have seen is (again) merely the “well, this is sort of what the courts are doing, so THAT is my evidence”
Iit,
I have actually received replies back that the assertions being made are NOT actions of the Office taking “official notice.”
Along with refusal to actually define the terms that the Office is using in their 101 rejections (terms including “generic computer,” “not sufficiently more,” as well as the good old stand by of “abstract.”
David’s point (when he is not pouting), is a good one – examination in the first instance MUST proceed under different sets of rules than the hand-waving that courts engage in. NOT ONLY does the APA apply (and I thought giving David a forum for being precise was a generous gesture on my part), but as you also indicate: taking Official Notice comes with its own stringent requirements. I simply see examiners deny the fact that they are taking Official Notice even as they provide NO OTHER basis for their “factual findings” (other than “well, this is kind of like what the courts have been doing”).
Actually, David do you have any file wrappers to look at for this? Any good articles you can point to?
Maybe David will answer you without snark – YOU have not pointed out errors in his published positions…
Here, it was argued that the claims are novel and non-obvious, as shown by the prior art, and are therefore patent eligible. At least, that is how the court characterized and dismissed the “novelty” evidence, i.e., that novelty and non-obviousness do not equate to eligibility.
Instead, argue that there is no evidence showing that the abstract idea identified in the claim is, in fact, an abstract idea. The abstract idea cannot be found in the prior art (unlike Alice, where the Court identified the abstract idea in two prior art references) and so it has not been proven that the abstract idea is, in fact, an abstract idea. Such evidence is required by In re Zurko, 258 F. 3d 1379 (Fed. Cir. 2001).
anonymous, let’s break this down a little:
“The abstract idea cannot be found in the prior art (unlike Alice, where the Court identified the abstract idea in two prior art references) and so it has not been proven that the abstract idea is, in fact, an abstract idea. Such evidence is required by In re Zurko, 258 F. 3d 1379 (Fed. Cir. 2001).”
That’s not how the logic goes.
“proving” something is an abstract idea is simply NOT required in the magical forging of the “Gist/Abstract” sword.
NO evidence is required.
Much less evidence of whether or not an idea (the abstract idea) is in ANY sense a “prior” idea. There is NO notion of timing or “something being prior” that is involved in the swing of the Sword.
None.
Something completely never ever “thought of” before may still very well be an abstract idea.
Yes, I get that the courts (and specifically, the Court) has confused the concept and has several times equated “abstract idea” with something merely being “long and well known,” so I see where you might think that “prior” is not only a necessary item, but a necessary item needing evidence as per In re Zurko, but NO such “necessity is present for the “abstract idea” portion of the “Gist/Abstract” sword.
“The novelty and nonobviousness of the claims under §§ 102 and 103 does not bear on whether the claims are directed to patent-eligible subject matter under § 101” and “Eligibility and novelty are separate inquiries”
These are not absolute truths and I’m afraid this dictum will be taken out of context to cause more mayhem (although this could go both ways). Assume the claim also had the step of, “displaying the visual information on an output device comprised of a matrix of light emitting polymers comprising polyfluorene” and that the spec enabled such a OLED display. If such display was really novel and non-obvious, then there’s an eligible invention here! If such display is known in the art (as this one), then of course this is just trying to twist the nose of wax.
“If such display was really novel and non-obvious, then there’s an eligible invention here!” Yes, the eligible invention is the display itself.
It would behoove all patent prosecutors to personally, privately, write their claims in a jepson format before writing a regular format claim of the same scope.
These inventors weren’t dumb enough to think that the invented 1) a network, 2) addressing over a network (i.e. unicast communication), 3) playing audio/video or 4) controlling the playback of audio/video.
A Jepson claim that is of the same scope as this claim would be:
1. In a system where audio/video is played back over a network, a method comprising: Monitoring the start/stop time of the playback.
This is a really simple 101/103. Cue all the people talking about how it should be a 103.
But the claimed method is is compliant with a protocol.
Dat protocol, lololololololol MM.
link to yahoo.com
Dat lovely lovely protocol!
““Wait,” I said. “That victory fund was supposed to be for whoever was the nominee, and the state party races. You’re telling me that Hillary has been controlling it since before she got the nomination?” Gary said the campaign had to do it or the party would collapse.”
LOLOLOLOLOLOLOLOLOLOLOL.
link to townhall.com
Donkey CRP is still CRP.
The Donkey’s are literally on the verge of outright collapse! They had to get a loan from Hillary to not collapse!
lololololol.
I don’t agree that it’s obvious or patent ineligible under your version of the claim.
“would behoove all patent prosecutors to personally, privately, write their claims in a jepson format”
Because, what, that optional claim format sees about a half a percent of actual meaningful use now a days?
If you have to reach to such an anachronism, you might want to re-evaluate the “feelings” that are driving you there.
I agree, some private time with a Jepson claim is super important. I still do it (usually mentally, sometimes in writing) after 25 years of practice, and it’s an exercise I force on all juniors when I mentor. (But of course you never file that claim. See my article from a couple months ago link to patentlyo.com )
Excellent linked article David.
link to patentlyo.com
But (and this really is without snark), IF you are indeed taking that private time and (sometimes even in writing) putting your claims in Jepson claim format, how are you avoiding MPEP § 608.01(m):
“The form of claim required in 37 CFR 1.75(e) is particularly adapted for the description of improvement-type inventions.”
and 37 CFR 1.75(e) – (which your linked article covers in excellent detail – emphasis added as to what I believe to be your main point) ?
Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.”
I think – and forgive me if I am putting words into your mouth – that the “required” mentioned in MPEP § 608.01(m) is simply one of those places (and there are a few) where the MPEP is simply WR0NG in what it is saying.
Your well written (linked) article briefly touches upon 608.01, but in a different context.
Dennis, you made a big error in this post: you spelled “Eligibility” wrong in the big font on top! 😉
Thanks. I always forget that the spellchecker doesn’t work for post titles.
FWIW, at the AIPLA lunch on Friday two weeks ago, Senator Hatch indicated he’s aware of the problem and that it requires Congressional attention.
LOL
Did any of the incredibly brilliant attorneys at the AIPLA lunch bother to ask Hatch if he understood the facts in Prometheus v. Mayo and what Prometheus’ infringement theory was?
I’m guessing not. But someday it’ll happen and a lot of people will wish they had worn belts.
The fact of Mayo? Why should he care? As I said before, momentum for this could build quickly, whether you like it or not. Personally, I think its a long shot at best, but if the tax reform fails, the administration will be desperate for any legislative win, especially one they can spin to the public as making American software and biotech innovation great again.
Why is everything going to moderation?
Because that has always been the rule, from time immemorial (“everything in moderation”).
This is a poorly worded holding, as is often the case for CAFC decision.
It is certainly true that (contrary to what a lot of attorneys argue in front of me) the fact that something is novel and non-obvious does not render it eligible. Alice was struck down despite a presumption of novelty/non-obviousness and no discussion of such.
Assuming the patents issued before Alice, the examiner didn’t do an alice analysis, so the fact that the record evidences non-obviousness for some reason isn’t relevant. Similarly that tweet from Gross is inappropriate because simply because something is a novel or even non-obvious ordered combination doesn’t mean it is relevant to eligibility.
It is entirely correct to say that evidence that the claim surpasses 102/103 is not relevant to a 101 inquiry.
However, the 102/103 question likely identified features which could be either 1) what the claim is drawn to or 2) what could be significantly more. It was likely the case that the patentee simply argued those features and the court considered them in the analysis (especially because its construed in the patentee’s favor).
But examiner action is probably appropriate to consider to determine what a claim is directed to or to highlight things which could be significantly more. For example, one would assume that the reason the Alice claims issued is not because the examiner couldn’t find a computer or the business act, but because it was found to be non-obvious that the act was performed on the computer. That issue (computer implementation) was specifically considered by the Alice court.
If the record contains a particular reason for non-obviousness, that reason ought to be considered by the court. However, that reason could be considered simply by argument that the feature meets the second step of the Alice analysis, and evidence to the effect isn’t necessary.
So the holding of the court falls into the “True, but you’re leaving out this…” that they so often do. Poorly done.
“That issue (computer implementation) was specifically considered by the Alice court.”
For some unknown reason, people do not want to address the larger issue here that the scoreboard is broken.
ALL of these panel-to-panel zigzag back and forth nonsense is directly attributable to the broken scoreboard, and the zigzag back and forth nonsense will continue until that scoreboard is fixed.
ALL of these panel-to-panel zigzag back and forth nonsense is directly attributable to the broken scoreboard, and the zigzag back and forth nonsense will continue until that scoreboard is fixed.
Exactly!
” Two-Way’s asserted patents (U.S. Patent No. 5,778,187; 5,983,005; 6,434,622; and 7,266,686) are directed to system and methods for multicasting communications over a network.”
But the claim you posted, claim 1, is not directed to methods for mutlicasting, does not mention multicasting, and does not require multicasting… Perhaps this is what the CAFC meant with “the claim—as opposed to something purportedly described in the specification—is missing an inventive concept.””
Definitely a huge part of the problem with those claims. The magic in the claims is in the final clause: the records that are accumulated indicate the time that a user starts receiving the audio and/or visual selection and the time that the user stops receiving the audio and/or visual selection
That’s the part that “allows” you to stop playback and start it up again where you left on.
Imagine that! You are “allowed” to stop something and start up where you finished because you kept some information about where you stopped. Very very impressive. For a four year old maybe.
“for each stream, routing such stream to one or more users”
How is this not multicasting?