Eligibility: Novelty and Nonobviousness Evidence is Irrelevant to the Inventive Concept Question

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.

Two-Way Media & the Doctrine of Equivalents

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.

162 thoughts on “Eligibility: Novelty and Nonobviousness Evidence is Irrelevant to the Inventive Concept Question

  1. 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.

    1. Yes blame the victim.

      1. 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.

        1. 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.”

  2. 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

    1. we are all going to lose our jobs from it.

      What is your job?

      1. I am a paid blogger like you.

    2. “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.

    3. “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.

  3. 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.

    1. 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.

    2. 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.

      1. See, Diehr.

        You are aware Ned that prior perfectly cured rubber was known, right?

        1. Forget Diehr, no industrial or mechanical control process could survive that panel of Luddites.

        2. 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.

          1. I don’t recall the Diehr claims being limited to irregularly-shaped objects.

            1. 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).

          2. “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.

            1. Auto-open

              Auto-open mechanisms were known in the art.

    3. . Well, this doesn’t comply with the Admin Act. So, improper rejection.

      How so?

      (no snark)

      1. 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.

        1. 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.

          1. 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

          2. 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.

            1. “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.

              1. 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.

            2. 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?

        2. 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

          1. “[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.

            1. 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)!

          2. 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.

            1. 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)).

              1. 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].

                1. 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….)

              2. 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”

            2. 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”).

        3. Actually, David do you have any file wrappers to look at for this? Any good articles you can point to?

          1. Maybe David will answer you without snark – YOU have not pointed out errors in his published positions…

    4. 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).

      1. 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.

  4. “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.

    1. “If such display was really novel and non-obvious, then there’s an eligible invention here!” Yes, the eligible invention is the display itself.

  5. 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.

    1. But the claimed method is is compliant with a protocol.

      1. 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

          1. The Donkey’s are literally on the verge of outright collapse! They had to get a loan from Hillary to not collapse!

            lololololol.

    2. I don’t agree that it’s obvious or patent ineligible under your version of the claim.

    3. 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.

    4. 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 )

      1. 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.

  6. Dennis, you made a big error in this post: you spelled “Eligibility” wrong in the big font on top! 😉

  7. 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.

    1. 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.

  8. Why is everything going to moderation?

    1. Because that has always been the rule, from time immemorial (“everything in moderation”).

  9. 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.

    1. 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.

      1. 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!

  10. ” 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.””

    1. 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.

    2. “for each stream, routing such stream to one or more users”

      How is this not multicasting?

      1. Youtube does that, and youtube is not multicasting…

        1. Not an explanation. How does the claim NOT cover multicasting. I don’t care what YouTube does.

          1. The claim “covers” multicasting, just like “sending data over a network” covers multicasting.

            The claim, however, is not limited to multicasting, which is the problem.

  11. The claim includes this element: “converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets”

    Can someone tell me how to do that in the abstract, without using a machine?

    1. “Converting information into ‘addressed’ information”… Such inventive. So eligible.

    2. Clearly a method of organizing human activity.

      1. Really?

        Are you saying the ancient Romans or even Albert Einstein could have and/or did “convert audio and/or visual information into digital packets” ?

        1. digital packets

          aka information with a label.

          Grow up, people. Really. You’re embarrassing yourselves.

        2. Are you saying the ancient Romans or even Albert Einstein could have and/or did “convert audio and/or visual information into digital packets” ?

          And if the invention was converting audio information into packets (i.e. network delivery of data) that would be eligible. But this invention was written at a time that act was conventional.

          It would be like me trying to claim “solving e=mc^2 using a pencil” today. I suppose at one point there was no such thing as a pencil, and a pencil is tangible, and therefore the system isn’t abstract. But once the pencil is conventional, the claim is about writing math, which is abstract and just happens to be carried out on a known medium (pencil and paper) using a known manufacture (pencil).

          This guy didn’t invent computer networking, he just claimed monitoring/timekeeping audio/visual usage in a computer network application.

          1. if the invention was converting audio information into packets (i.e. network delivery of data) that would be eligible.

            Nope. Not as a per se matter. There is no such thing as a claim that is per se eligible merely because of the result allegedly achieved or because an embodiment falling within the scope of the claim has patentable utility.

            Scrivener’s Delight was thrown in the trash by the Supreme Court, where it belongs.

          2. It would be like me trying to claim “solving e=mc^2 using a pencil” today. I suppose at one point there was no such thing as a pencil, and a pencil is tangible, and therefore the system isn’t abstract. But once the pencil is conventional, the claim is about writing math, which is abstract and just happens to be carried out on a known medium (pencil and paper) using a known manufacture (pencil).

            Ding ding ding! We have a winnah.

            1. Your comment necessarily implies that novelty is something that has to be considered in evaluating 101 eligibility

              Not true. And I’m very careful to point out (as I have literally hundreds of times) that novelty does not have to be considered every time when evaluating eligibility.

              That’s because ineligible claims come in distinct flavors (at least as distinct as the so-called “judicial execptions” which are, more accurately, Constitutional exceptions).

              It’s definitely true that most ineligible claims that end up in litigation will require a comparison to the prior art. The reason for that is most people don’t assert pure unadulterated un-scrivened junk and even our incompetent PTO manages to screen most of that stuff out.

              Still, a claim to, e.g., “A correlation, wherein said correlation is …. ” or a claim to “A children’s fairy tale, wherein said fairy tale is instructive on a point, wherein said point is …” does not require any novelty analysis prior to finding the claim ineligible. I’m sure you understand why.

              This is a point I’ve written here hundreds of times already, by the way. Nothing revolutionary or radical about it. Just a basic fundamental truth about our patent system (or any sane patent system, for that matter).

              1. Can you disambiguate “conventional” from “novel”? I’m not seeing it.

                It seems to me eligibility relates to each major part of the Patent Act- both separately and in combination depending on the facts.

                When the claims recite no actual invention because they are aspirational or functional , that can be a 112 problem, or at least require a 112 quasi-analysis. When the claims recite no actual invention because they are beyond obvious (i.e. utterly conventional) it’s a 103 problem, or at least a 103 quasi-analysis.

                Only in the instance where claims recite no actual invention because they lay outside the four statutory categories should a 12(b)6 be the proper method of determining eligibility.

                Until a workable definition of ‘process’ is adjudicated or legislated, the outcomes will be even more random because that inquiry cannot be done cleanly.

                In my scheme, this invention is eligible because its an information invention, and machines are consuming the information (e.g switches and routers). In my scheme a process that results in new, useful information consumed by persons is not a patent eligible process, while new and useful information consumed by non-persons may be eligible on a statutory basis, without reference to 103/112.

                However, there is visibly no invention here because you can’t build anything working from the claims and if you did manage it, you would be doing so by assembling and using selected equipment exactly as those equipment’s designers expected them to be used.

                A procedural construction step is required. Just as the words of claims are matters of law that must be construed when in dispute, what the invention actually is must be a matter of law, construed when in dispute. Like claim construction, this inquiry is a mix of fact and law, and by allowing motions, tutorials, and limited testimony, a far fairer process is in play than the hugely restricted parameters of a 12(b)6.

                The law says the inventor must say what the invention is. Equity demands at some point that the accused have their say as to what the invention is too.

                PS, I enjoyed this bit of peak patent today:

                link to ipwatchdog.com

            2. Silly, the novelty has to be in the means otherwise eligible process, not in the abstract material.

              Consider printed matter, printed matter is excluded from the 102/103 analysis. The courts are doing the same here to the ineligible subject matter.

              1. I think somewhere buried in the grey matter of the judges, that kind of thinking is going on, but by refusing to use the printed matter doctrine to guide an obviousness analysis under section 103, and instead trying to kill the patent at the 101 stage, the courts are doing a lot of collateral damage …. to MM’s delight.

              2. Ned,

                Whenever I see you sally forth with a comment directed to the printed matter doctrine, I am reminded that you have – STILL – not fully embraced the meaning of that doctrine, and in particular, to the exceptions to the judicial doctrine of printed matter.

                Exclusion simply is not what you may appear to want it to be.

          3. But this invention was written at a time that act was conventional….

            Yes, but as the court ruled, that has no bearing on 101 decisions.

            1. Les, is using a machine and improving a machine a distinction you can understand?

              1. Careful Ned – YOU seem to never grasp the point that to use a machien in the first place (with software) that you FIRST have to change the machine and configure that machine with the software.

                You throw some snark at Les, while drowning in it.

                1. Anon, I think the court has been making this distinction all along. Think Benson. We have a mathematical equation and they said simply doing with pen and paper does not make it a patentable invention for the reason that the mathematics is not eligible and paper and pen, although otherwise eligible subject matter, are not new or improved.

                  So doing it on a computer, a generic computer, is simply not enough for the same reason that using paper and pencil is not enough. The computer, the only otherwise eligible subject matter in the claim, is old and not improved.

                2. Ned,

                  First: the scoreboard is broken and you want to rely on that very same broken-ness.

                  Second: you (yet again) do NOT address the point put in front of you:

                  to use a machine in the first place (with software) that you FIRST have to change the machine and configure that machine with the software.

                  Third: the conceptual idea of “just pencil and paper” finds its roots in the Mental Steps Doctrine. What you are seeing is the attempted re-animation (zombiefication) of that doctrine. This is why I have repeatedly put to the editor of this blog (and/or the academia) to write an objective thread on the history of that doctrine (third party such that others will not simply see the “anon said” and scoff). The plain fact of the matter is that machines ARE NOT humans and that the “plain pencil and paper” scheme misstates what is actually being claimed – the Mental Steps Doctrine must be purposefully misused in order to arrive at a “desired” “Gist/Abstract” point, a point that also brings to mind that so excellent word of mine: Anthropomorphication.

                  Lastly, throwing snark at Les all the while that you do NOT recognize, and are not inte11ectually honest about what is going on merely reflects p00rly on you and your desired position.

                  These counter points of mine will not go away, and being inte11ectually dishonest about this entire situation simply is NOT a sustainable path.

                  Why is it that you think otherwise?

                  Why is it that you think that you can perpetually run away from the counterpoints presented and pretend that your comments of “just using” are not so easily seen through?

                3. Anon, programming a computer does not improve the computer, rather it enables the computer to do something potentially different in a larger system. But that larger system has to be claimed as it was in Alappat. If the computer is only calculating numbers where the numbers are not used for anything then there is nothing there that is patentable subject matter as the computer itself is not improved.

                4. Ned,

                  Your reply STILL does not treat the point in an inte11ectually honest manner.

                  To “just use” a computer (with a change in software), that computer FIRST must be changed and reconfigured WITH the software.

                  You keep on wanting to kick up dust with this “just calculate numbers” thing.

                  That is simply not addressing the reality of the situation.

                  Perhaps you would be better off (and at least more inte11ectually honest) if you were to try to apply the proper patent doctrine of inherency.

                  HOWEVER, even as your last post admits: “ it enables the computer to do something potentially different in a larger system

                  Adjust your statement for undue “spin” by removing the “potentially” and by removing “in a larger system.”

                  It is or is not – so “potentially” is an unnecessary obfuscation.

                  The change is present or not – so “in a larger system” is ALSO an unnecessary obfuscation.

                  Speak plainly and directly here Ned – your obfuscations are obvious and only hurt your position.

          4. Nobody invented protons, neutrons and electrons, they just claim various configurations of these things (and they don’t even bother to come up with an “inventive concept” of some new mechanism for doing those configurations.

    3. Can someone tell me how to do that in the abstract, without using a machine

      The question completely misses the point.

      It’s right up with there with “How can a patent on writing a new story book be an ineligible abstraction? If I drop the book on my foot, I get an ouchie on my toe!”

      Seriously people: it’s 2017 and you’re floating arguments that were laughed at and failed miserably ten years ago. Try harder.

  12. “The claim uses a conventional ordering of steps—first processing the data, then
    routing it, controlling it, and monitoring its reception— with conventional technology to achieve its desired result.”

    if the court is going to ignore novelty and non-obviousness evidence, then how can it come to the conclusion above?

    1. The same way the supreme court decided Alice without first doing an obviousness determination?

      The question isn’t whether “doing old method in new field of computers” is obvious. The question is whether you can dispute that the method is old or that the application to the field presents particular problems unique to the field. You don’t need an obviousness analysis to do that. He’s not saying he didn’t consider the specification. The specification is sufficient to show that there are no problems with implementation (since there is no enabling teaching) and judicial notice would be sufficient to show the method is old.

      1. The specification is sufficient to show that there are no problems with implementation (since there is no enabling teaching) and judicial notice would be sufficient to show the method is old.

        This true in probably 95% of all logic arts cases.

        And the ones where it isn’t true are the ones where the scrivening renders the claim unintelligible.

      2. “The same way the supreme court decided Alice without first doing an obviousness determination?“

        None of what you said here is true. Have you read Alice? The court went in to detail providing actual evidence in the form of publications that disclosed the method claimed in Alice. The claimed method was already known and performed by humans.

  13. What complete and total b.s.! But with a panel consisting of Lourie, Hughes and Reyna, why is this result not a surprise? What a comforting message for clients: the validity of your patent is contingent on the group of judges that hears the appeal at the Federal Circuit.

    1. the validity of your patent is contingent on the group of judges that hears the appeal at the Federal Circuit.

      The panel is far less important than the quality of attorneys on the other side and whether or not the hands of those attorneys are tied by their client.

      As usual I’m left wondering: why would anyone think these claims would survive a well-reasoned validity attack? Serious question.

      1. Ok, I’ll rephrase: passing the 101 hurdle is panel-dependent. These claims would have survived 101 (as they should have) if the panel had been Judges Newman, Moore and Stoll.

        If these claims were to be invalidated, they should have been invalidated under 102, 103 or 112. To invalidate them under 101 because, ostensibly, a claimed invention can be novel and non-obvious but still ineligible is b.s. Of course, we already saw that in Sequenom.

  14. This is just my first reaction to a brief read of the opinion, but this paragraph jumped out at me:

    At best, the constructions propose the use of generic computer components to carry out the recited abstract idea, but that is not sufficient. In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (holding that, despite reciting “concrete, tangible components,” the claims were directed to an abstract idea where “the physical components merely provide[d] a generic environment in which to carry out the abstract idea”). The claim is therefore directed to an abstract idea.

    I think this reasoning deprives 35 U.S.C. § 101 of any meaning in distinguishing between “process” and “machine”: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    From a plain reading of 101, it seems clear that Congress intended to distinguish between patentable processes and patentable machines. However, the CAFC seems to be moving towards a reading of “process” to mean “process and machine.” I am aware of the prohibition on patenting “mental steps,” but one could argue that the “mental steps” doctrine is encompassed in the prohibition of patenting abstract ideas (which no one has clearly defined yet).

    However, in this case, the CAFC holds, outright, that the claim is directed to an abstract idea because the claim does not recite “non-generic” computer components to perform the claimed method steps. My question then is: If a method claim must recite new structural components (i.e., non-generic computer components), then is the claim directed to a process or is it directed to a machine that performs the claimed process? If it’s the latter, which I think this opinion suggests, then, I argue, that the CAFC have effectively rewritten 35 U.S.C. § 101 in contrary to Congress’ intentions.

    In requiring that a process must recite “non-generic” structure (whatever “non-generic” is – and that’s a whole other can of worms), I think a fair argument could be made that the CAFC have overstepped their bounds in interpreting 35 U.S.C. § 101.

    1. I think this reasoning deprives 35 U.S.C. § 101 of any meaning in distinguishing between “process” and “machine”:

      That’s because you don’t understand a very fundamental and easy-to-understand fact of life: information content and information processing are different from objective physical structure and the transformation of matter.

      Let me know if you need additional explanation. I can break it down into very simple terms for you. But first you should try to understand why this is true and you should also try to appreciate that our patent system (indeed, our entire society) was designed with these basic facts at the core.

      If a method claim must recite new structural components (i.e., non-generic computer components),

      This premise is false outside of the context of information processing. See above.

      Really odd that this is so hard for some people to grasp in 2017.

      1. You must have forgotten how to distinguish between “process” claims and “machine” claims. Please find in 35 U.S.C. 101 where it states that a “process” claim must involve a “non-generic” structure. The last time I checked, a “process” was different than a “machine.” If Congress intended that a patent for a process must also recite a patentable machine, that would have been presumably written in the statute. If you need an explanation on the separation of powers, just let me know.

        “information content and information processing are different from objective physical structure and the transformation of matter.”

        Ah – yes – data is “just math” so there aren’t any structures involved. That’s just silly and shows a lack of understanding of what a computer is. Show me the case where a process for making a chair requires a new type of wood. I’ll wait.

        If you can’t understand that processes involve the new use of known structures, then nothing is patentable.

        1. Using the logic of this case, there are no method claims eligible for surgical methods.

        2. Seems like all surgical methods are now ineligible.

          1. Seems like all surgical methods are now ineligible.

            “Everything is ineligible because I say so! Therefore I’m right and you’re wrong!”

            Rinse. Recycle. Repeat.

            And then you guys wonder why you lose over and over and over again.

            1. “Because I say so” sounds a lot like a certain frequent commenter on this site. If you disagree with said commenter, he types things like, “LOL” and “you lose” as if that somehow makes his position even more right. I wonder who that commenter is…

        3. Not only does it NOT require so, it objectively PERMITS new process claims to ONLY use non-inventive “machinery” or “components.”

          35 USC 100(b): (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

          1. Processing data is not a new use for a computer.

            Anybody have an adult argument or are you just going to recycle these l0 ser arguments from 2012?

            1. The claims don’t cover “processing data” you clod.

              1. The claims don’t cover “processing data”

                Of course they do. It’s just a specific kind of data (audio or visual data).

                Data is data is data, however, at least from the viewpoint of a machine which exists for the sole purpose of processing it.

                New words don’t make a new pen. New destinations don’t make a new car. But for some bizarre reason the computer becomes “new” every time somebody comes up with a new term to describe the digital bits that go into it. What’s up with that? Oh right: it’s how a tiny tiny tiny class of rich people like it. So they can get an exception and everybody else can just sck it.

                1. Except for your very own volunteered admission against interests and the notion of functionally related as to the exceptions to the judicial doctrine of printed matter which leads to the opposite of what you are trying to dissemble.

                  “Data” is NOT just Data.

                  Reformat your hard drive and try to recover it with the Data from a Britney Spears CD.

                  Do that and THEN post again (but not before 😉 )

    2. Absolutely true. There are several cases now that have held that patents to processes can include generic computing elements and nevertheless be eligible.

      “An ‘improvement in computer-related technology’ is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of “rules” (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.”

      These panels aren’t even trying anymore…

      1. These panels aren’t even trying anymore…

        You don’t have to try very hard once you can spot the issue. That’s the beauty of it.

        And it was always true.

        1. That’s definitely what makes it appealing to simpletons.

    3. Novel/non-obvious business methods are eligible. Existing business methods do not become eligible again simply because they are done “on a computer.” This isn’t the court saying that there must be some sort of new physical structure in all cases, this is saying that when there is a conventional method, applying it on a computer is not eligible unless it requires some sort of new structure.

      New (non-mental-process) methods are eligible. But if the starting point is that this is a mental process, and the argument is that computer implementation renders it concrete, then the requirement that it be implemented using a new structure is correct, because you’ve already admitted that the other ways it would be eligible don’t apply.

      1. It is akin to saying that one does not need to show “reasonableness” to survive a battery charge. There are plenty of ways to defend a battery charge. But *if* we assume that there was a harmful touching and *if* we assume other defenses don’t apply, then yes you would have to show reasonableness to make your self-defense defense apply.

        1. … show “reasonableness” to survive a battery charge…

          This would probably be better phrased a “avoid conviction” than “survive.” When one speaks of “surviving” a battery charge, I imagine a person grabbing both leads of a battery charger—one with each hand—but not quite dying from the resulting electrocution.

      2. if the starting point is that this is a mental process, and the argument is that computer implementation renders it concrete, then the requirement that it be implemented using a new structure is correct, because you’ve already admitted that the other ways it would be eligible don’t apply.

        This.

    4. JustPassing, this all makes sense if one considers that the courts are looking for a new or improved manufacture — (machine, manufacture, composition or process). The process must make or improve one of the others. A process that makes a machine, manufacture is clearly a manufacture. Ditto a process that improves a machine — such as was the case in Nielson’s blast furnace.

      Morse referred to Nielson, and the Supreme Court refers to both of them. It would be good to actually read those cases. As well, consider why the claims in Funk Bros. failed and the claims in Chakrabarty did not. The latter structurally modified the bacteria to provide new or improved functionality.

      So what in the claims here provided an improved machine — meaning the internet or system of computers? Apparently the specification did disclose such a system. But what here was the new or improved machine?

      1. Ned:

        So now all method claims must recite a new structure? Again, why have an apparatus and method both called out as separate statutory classes?

        Can you explain to me how a surgical method is ever eligible in light of this holding? No new structure or manufacture is created when a surgical method is performed.

        1. Bluto, new structure? Hardly. A new way of making an old structure or improving its functionality is certainly within the realm.

          The claims in this case merely used conventional apparatus to keep track of times. The information gathered is not actually used for anything.

          Had the claim connected the dots all the way to an improved machine (better way of delivering video) then they would indeed have had an eligible claim.

          1. Alice disagrees with you Ned – as I yet again have to remind you…

  15. “The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way.”

    It almost sounds like the court is treating these like 112f nonce words for process steps, but instead of invoking 112f, the element is abstract.

    The Enfish claims were mostly 112f elements, with sufficient support in the disclosure…

    Anyone know of any CAFC cases finding ineligibility of claims utilizing 112f?

    1. Ben, you beat me to the point I was going to make. In fact, when I opened this page, the first comment I see, right at the top, is nearly word for word what I was about to write.

      Naturally, the fact that you had exactly the same thought as I had proves that you are a genius!

    2. The Enfish claims were mostly 112f elements, with sufficient support in the disclosure…

      Just a friendly reminder: there was no invention in the Enfish claims.

    3. It almost sounds like the court is treating these like 112f nonce words for process steps

      They are also that.

      instead of invoking 112f, the element is abstract.

      Right. Because the prior art described structures that were well-known to be capable generically of performing all of these tasks and a whole lot more. There is nothing at all “inventive” and there can not be anything “inventive” about taking existing technology for processing data (any data) and then reciting “wherein it’s audio data” or “wherein it’s visual data”. And that’s all that these claims purport to do.

      It’s incredibly disingenuous and misleading for a patentee to point to incredibly specific and narrow embodiments in the real world and suggest that somehow their hand-wavey dreams made it all possible. Might as well put in a limitation about “wherein said audio is heavy metal audio” and then take credit for Black Sabbath’s music “on a computer”.

    4. This is a method claim. If you want to invoke 112(f) then you are talking about “step for” claims, which, to my knowledge, has never been invoked by a federal court. If you start invoking 112(f) on method claims, then a whole lot of patents will have a whole lot of problems.

      1. Many of those many claims deserve the problems that invoking 112(f) would imply. Williamson v. Citrix Online is basically unexploded ordinance lying in the patent fields right now, but one of these days it will explode and many are going to be caught unawares.

        1. I agree with you.

          A “step of: converting information into packets” is not any different than a “step for converting information into packets”, but until now I dont think 112(f) has ever been invoked for method claims.

          If these claims read “a converter for converting information into packets” they would clearly be 112(f); but somehow “A method comprising the step of converting information into packets” gets away…

          A lot of claims will go down, or become substantially limited, if/when the court latches onto step-for interpretations. I’m thinking of all those method claims with broad “determining Y, based on X” steps, which will all of a sudden be limited to the specific algorithm disclosed in the spec.

        2. Many of those many claims deserve the problems that invoking 112(f) would imply. Williamson v. Citrix Online is basically unexploded ordinance lying in the patent fields right now, but one of these days it will explode and many are going to be caught unawares.

          Yes and no. The problem is that most software patents are indeed junk. The claim is functional language and the spec is functional language, and they obtain an allowance because they pile undescribed function on top of undescribed function until the examiner requires so many references that they allow the claim.

          Even if you don’t construe the claim in 112f, either what you have is known functionality being used for its expected results (which is always the case in a logical computer) or you have undescribed novel functionality. The claims all violate either 103 or 112a. It’s true that 112f simply makes the 112a violation easier to see (since it requires the spec describe the function regardless of whether it is novel or not), but it’s not so much that Williamson is a problem as it is that applicants are serially seeking (and receiving) vastly overbroad scopes based on little or no disclosure at all.

          If the novelty of your software claim is claimed using functional language not in 112f, you’re gonna be invalid because you fail to support the scope of “all possible ways of achieving a novel result.” If it is in 112f, you may be invalid because you probably didn’t even provide one means of achieving the result in your spec.

          1. If it is in 112f, you may be invalid because you probably didn’t even provide one means of achieving the result in your spec.

            When I wrote about Williamson “exploding,” this is what I had in mind.

            There are a lot of claims out there that are totally functional in presentation, where the author did not even consider whether there is adequate support in the specification for what is, in reality, a §112(f) claim. If and when courts begin to realize that these claims sound in §112(f), but then go looking in the specifications for the non-existent structures to support these §112(f) limitations, the result is going to be a long string of very simple summary judgments for invalidity.

            1. I take your point, however, about “yes and no.” You are certainly correct that, in those instances where there is sufficient disclosed structure, the unintentional invocation of §112(f) might actually leave the patentee with something (even if it is narrower than the patentee wanted), instead of the claim simply dying on the §101 spike.

            2. Yes, but my point is that even if they do not sound in 112f, when the author does not consider if there adequate support the claim will be invalid.

              If the functionality is novel and not in 112f, it’s a 112a violation for the same reason it would be a 112b violation if it is in 112f. Further, there’s a scope issue that would render it a 112a violation even if a 112b in view of f were not proper.

              Even if you ignore the scope issue, the only way to save a function that is not described in the specification is to argue that the function was known in the art. If the function was known in the art, the likelihood is that the claim is obvious, because in computers known functions always perform predictably (i.e. the claim will be obvious because the art knew of a technique, knew of an element, and application of the technique to the element produces only expected results)

    5. The claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe how to achieve these results in a non-abstract way…Anyone know of any CAFC cases finding ineligibility of claims utilizing 112f?

      The court in this case didn’t construe the claims in 112f because the patentee didn’t ask for it. The district court adopted the patentee’s proposed construction of the claims for dismissal purposes.

      I agree that 112f significantly reduces the scope to particular acts, and therefore makes it much harder to show that all the acts in that order are conventional. 112f isn’t eligible as a matter of law, but it certainly is more likely to surpass an Alice attack.

  16. At some point, these glaringly inconsistent position taken by various panels are going to have to be reconciled. There is no way to square this ruling with McRO, Amdocs, and/or BASCOM.

    We now have judges on the record stating that 102/103 have no bearing on eligibility, but we have prior (at least dicta) statements from other judges stating exactly the opposite.

    The Federal Circuit has become a joke.

    1. There is no way to square this ruling with McRO, Amdocs, and/or BASCOM.

      Those cases are all wrong and make no sense on their own terms. They’re result-oriented internally inconsistent word salads designed to prop up patents on logic which don’t belong in the patent system.

      What on earth was the invention in BASCOM? There wasn’t any.

      McRo was using a look-up table to animate a mouth. Seriously?

    2. At some point, these glaringly inconsistent position taken by various panels are going to have to be reconciled.

      Ah, I wish that were true. However, the whole system have been able to pretend for many years that Diehr could be reconciled with Flook, and we have now been pretending for several years that Mayo can be reconciled with Diehr. In other words, we have gotten to be very good at nodding emphatically when someone says that up-is-down. I am afraid that if you think that an ultimate synthesis and reconciliation has to come at some point, then you are badly underestimating our human capacities for hypocrisy and evasion.

      1. we have now been pretending for several years that Mayo can be reconciled with Diehr

        Mayo can be reconciled with Diehr but you have to accept that Diehr was poorly written and the holding in Diehr was far more limited than the maximalists wished it was. If you accept that the holding in Diehr is only that the mere existence of some ineligible subject matter in a claim does not render the entire claim ineligible (a legally correct statement of the current law), then Diehr is perfectly consistent with Mayo.

        Mayo will never be overturned, by the way, unless the entirety of the US patent statutes are re-written from scratch. I’ve explained why this is true before, many times. It’s easy to understand. Happy to explain it again if anyone is still confused.

        1. Says the guy that defiantly proclaimed that Bilski was going to End the “Diehrbots”….

          1. Says the guy that defiantly proclaimed that Bilski was going to End the “Diehrbots”….

            Well, nothing will ever end the Diehrbots. That’s kind of the point of the “bot” suffix. Zombies just keep on coming.

            Rest assured that when Congress gets around to statutorily banning logic patents, the maximalists will come up some argument that the Constitution mandates patent protection for “new” logic, based on something Lord Cokebottle scribbled on the side of his chamber pot in Sherwood Forest in 1743.

            1. Zombies just keep on coming.

              More Accuse Others from Malcolm (hint: your mental steps doctrine zombie and the FACT that machines really do not think – anthropomorphication and all)

    3. I see some consistency. Absence of novelty weights against eligibility. Presence of novelty doe not weight for eligibility. Such a one-sided implication can be correct because novelty and eligibility are not equivalent.

  17. Again with the “inventive concept” silliness that was long abandoned 100+ years ago with the “fire or flash of genius” tests that used to be used by the courts in the 1800s.

    1. Again with the “inventive concept” silliness that was long abandoned 100+ years ago with the “fire or flash of genius” tests

      No, that’s not what’s going on here.

      1. the “fire or flash of genius” tests

        Those tests were replaced with 103.

        Eligibility is not about a degree of inventiveness. It’s about a kind of inventiveness.

        I can use my genius to come up with a mind-blowing correlation between freckle number and the likelihood that you’re going to end up in prison in Texas on a hot day eating a hot dog under the shade of a mesquite tree while reading a biography of Paul Anka. But I can’t claim the correlation. And it doesn’t matter if I throw in the words “using a ball point pen and a piece of paper” or “on a computer”.

  18. The claims contained no saving
    inventive concept because although they recited some
    computer components, they required only ordinary functionality
    of these components. Id. at *6–8.

    More of that Big Box of Protons, Neutrons, and Electrons “logic.”

    Ordinary functionality of the three basic classical components of matter gird ALL inventions in ALL of the “hard goods” statutory categories.

    So… until someone invents a new fundamental particle (or a new manner of having the existing fundamental particles interact), then we may as well simply swallow ALL of hard goods eligibility based on the “logic” being used.

    Charles H. Duell would be so happy.

    1. Ordinary functionality of the three basic classical components of matter gird ALL inventions

      It’s called “unexpected results” for a reason.

      This isn’t hard, people. Don’t make it hard by making s t 0 0 pit axx statements without even stopping to think for two seconds.

      1. Are you really saying that the classic elemental particles of the proton, neutron and electron have some “unexpected result?”

        Because you know, you really should hew to the actual “logic” that is on display here.

  19. Novelty and Nonobviousness Evidence is Irrelevant to the Inventive Concept Question

    I’m sure the nuance in Dennis’ title will be lost on the perpetually confused class of readers.

    Note that the focus is on “the inventive concept” prong of the eligibility query and not on the eligibility of the claim as a whole. Evidence of the novelty and non-obviousness of (i) a particular recited structural feature or
    (ii) a physically transforming step in a claim is pretty much always going to be “relevant” to the eligibility analysis because those kinds of limitations are exactly the kind of limitations that represent the “something more” required by the second prong of the analysis. The kinds of limitations that don’t work should be very familiar to readers by now: “computer” (including a zillion other generic terms for a data processing component), “determining the meaning of X”, “receiving data”, “transmitting data”, “associating data with X”, “correlating data with X”, etc.

    An easier way, perhaps, to understand why novelty/non-obviousness are irrelevent to the “inventive concept” is to consider a claim at the far end of the spectrum of abstractness, e.g., “A method comprising determining whether a story is more similar to Gone with the Wind or the unfinished script for Blade Runner: Season of the Witch.” For 101 purposes, does it matter whether this method is non-obvious? Of course it doesn’t.

    Dennis didn’t copy the claims here but the warning flags that should be apparent to everyone popped right out at me: recitation of “audio / visual information” (limitations relating to information content are always a strong indication of ineligibility) and the recitation of “logging said extent for commercial purposes” (reciting limitations relating to commercial utility will never confer eligibility to an otherwise ineligible claim).

    And, lastly, just so we’re all on the same page: this “J Nicholas Gross” guy — the apparent “inventor” of the “proxy server” and one of Judge Patel’s favorite punching bags — may be the least credible person on the planet when it comes to the question of subject matter eligibility. He’s certainly one of the most self-interested when it comes to sowing confusion and griping about the topic.

    1. Your attempt to infuse MoT or some type of optional claim format does NOT save the “logic” used, Malcolm.

      1. The claims at issue in this case are gone forever.

        I understand why.

        You don’t.

        I could have predicted why the claims would end up in the trash in very clear and plain and legally correct language.

        You couldn’t do that.

        You’re not a very good patent attorney. And that’s being generous.

    2. may be the least credible person on the planet when it comes to the question of subject matter eligibility. He’s certainly one of the most self-interested when it comes to sowing confusion and griping about the topic.

      Classic Malcolm Accuse Others meme…

  20. How does this fold into the “something more” or “well understood, routine and conventional” portions of the new-fangled 101 “test” written by the Court?

    This only more sharply pronounces a “I-know-it-when-I-see-it” p0r na graphy treatment.

    Someone wake up Congress

    1. Anon, 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.

      1. Let’s hope he can move things forward before he retires next year.

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