Role of the Specification and Prosecution History in Patent Eligibility Analysis

by Dennis Crouch

The Federal Circuit’s decision in Two-Way Media is in some amount of tension with the court’s 2016 decision in Amdocs v. Openet Telecom.   In Amdocs, the court noted that the claims appeared problematic under Section 101 (abstract ideas), but that the architecture – as specifically described in the specification but more generically claimed – showed that the invention was actually a technological improvement.  In Two-Way Media, the court faced the same dilemma but arrived at the opposite conclusion — holding that although the specification described a technological improvement, the claims were written at too abstract a level to be patent eligible.

Note here that Judge Reyna dissented in Amdocs.  However, rather than accepting the Amdocs precedent, Reyna is now the author of Two-Way Media – a decision that does not cite Amdocs.  Wow.

Other cases in this intra-circuit-split include Smart Sys. Innovations, LLC v. Chicago Transit Auth.,(Fed. Cir. Oct. 18, 2017); Synopsys Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016); and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017).   The chart below shows these results with the invalidity opinion in blue, and validity opinion in orange.

SpitOnClaims

Now pending before the U.S. Supreme Court is Openet’s petition for writ of certiorari asking the following question:

To be patent eligible, a patent must claim “the means or method of producing a certain result, or effect, and not [the] result or effect produced.” Corning v. Burden, 56 U.S. 252, 267-68 (1854). This principle has driven this Court’s patentable subject matter jurisprudence for over 150 years, including most recently the “search for an inventive concept” described in the second step of the Alice/Mayo framework. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012)). Because a patent’s claims define the scope of the invention, this Court stated in both Alice and Mayo that this second step of the eligibility analysis turns on what is “in the claims.” The question presented is:

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

In the pending case, petition-stage briefs are in and the court is scheduled for conference later this month.

 

I should note here that the patentee Amdocs disagrees with Openet’s characterization of what happened.  Rather, the patentee argues that “The Federal Circuit’s decision on patent eligibility thus rested not on material drawn willy-nilly from the specifications, but on the scope of the claims as construed in Amdocs I at Openet’s urging.”

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

63 thoughts on “Role of the Specification and Prosecution History in Patent Eligibility Analysis

  1. I don’t know why people keep trying to push language that is defined either entirely or almost entirely by function in their claims.

    Here’s the claims in this case:

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

    Now someone try and tell me that this claim doesn’t revolve around the word “enhance.” I don’t think the inventors would suggest that they were the first to a) receive a record or b) correlate that record with another.

    “Enhance” is written there specifically to avoid actually claiming the invention. It is an attempt to throw out some lego building blocks, and then to reconfigure those blocks into whatever a possible infringer might be doing. Does anyone think this actually gives notice to one of skill as to what the scope of the invention is?

    Even construing “enhance” to have the limitations given it (a distributed system) it’s not clear at all how this constitutes an enabled invention across its entire scope. It literally is limited to “to apply a number of field enhancements in a distributed fashion” where distributed means “close to their source.” In other words, some kind of processing will be done at some location of indeterminate scope from another location in a distributed system. Even assuming that were to be definite, can someone explain to me how that is possibly enabled across its scope? That’s just a statement to apply some form of distributed processing to the data. We’re lucky they threw in the word “accounting” there, because otherwise all processing of a record performed by a distributed system would violate.

    Nor is it clear how “enabling load distribution” for a non-limited type of processing is necessarily beneficial. Common sense will tell you that depending on what processing is being done and what other data is in the system, it may or may not be beneficial to perform that processing at location A rather than location B or central clearinghouse C.

    In short, not only is the dissent correct that the claim is abstract because it’s just claiming some sort of generic processing done “in a distributed network” but this claim manages to fail *every single statutory test.* It lacks utility, enablement, description, definiteness and its obvious.

    But that’s the point, isn’t it? Because you have nothing but possibilities with an open-ended word like “enhance” to sue on. That’s the problem with functional language, you can mold it into whatever you feel like after the fact. This case represents a great chance for the supreme court to correct the CAFC on functional language, because the dissent is correct and Electric Power Group was properly decided – if your claim isn’t construed as placing significant limitations on the means on which an end is achieved, the claim must be drawn to the abstract act of achieving the end.

    Distributed processing is a not a significant limitation. Nor is load balancing. Nor is “close” localization. These are all statements which simply say “apply it in a networked computer.” The fact that computer networking has utility doesn’t mean that all computer networking patents are eligible.

    1. Random, I agree with everything you just said. Someone on a copy and paste this post and put into the Supreme Court opinion.

    2. Random, I think it is also true that even if “enhance” is limited to the kind of update disclosed in the specification, is only updating data in a record and that is not in itself an eligible inventive application – in other words, data processing per se does not improve any machine.

      1. “Random, I think it is also true that even if “enhance” is limited to the kind of update disclosed in the specification, is only updating data in a record and that is not in itself an eligible inventive application”

        Why not? The record is transformed. It passes MOT. The record is really updated in an observable way. Its real, not abstract. It is certainly useful to have an updated record. So, why wounldn’t that be an eligible inventive application?

        1. …because one cannot claim wood, or rope, or sailcloth in and of themselves, and thus the “Point of Novelty” is within a statutory category itself.

          (or you can think of the same thing with protons, neutrons and electrons – and the configurations of such)

    3. I don’t know why people keep trying to push language that is defined either entirely or almost entirely by function in their claims.

      The English language – it is what us scriveners have to work with.

      As to any such use of certain aspects being NOT to your personal liking, well, it is a good thing then that you are not in charge of the law.

      Congress – way back in 1952 – sought to change what the Court was doing (since the Court was veritably anti-patent). One of those changes directly brings about the term that Prof. Crouch coined: the Vast Middle Ground.

      It’s been around awhile (and chances are, before you were even born), so I would recommend that you search your feelings and come to grips with its presence.

      1. “One of those changes directly brings about the term that Prof. Crouch coined: the Vast Middle Ground.”

        Precisely what part of the 1952 act changed anything to do with sufficiently definite functional claim elements?

        1. See Federico’s discussion on the opening up of the use of functional language (and this includes use OUTSIDE OF 1112(f)).

          1. Federico does not suggest any change to sufficiently definite functional claims. He writes:

            “The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for a combination (and a combination may be not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim) may be expressed as a means or step for performing a specified function, without the recital of structure, material or acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete”.

            It is unambiguous that the “greater liberality” is in 112f type claiming.

            What was acceptable before remains acceptable now, but you do not have any statuatoty blessing.

            1. We’ve had this conversation before Ben – Federico’s statement is more than merely to the last paragraph of section 112.

              1. Plainly false.

                In a paragraph about 112,3rd (112f), Federico writes about “greater liberality” with combination claims (112f) and the overruling of Halliburton (112f).

                To read that line about anything other than 112f is untenable.

                1. Absolutely not – given that combination claims are not limited to means plus (step plus) format, and the Congress acted to provide greater flexibility beyond just 112(f).

            2. As to the rest of the coined term – maybe you want to ask Prof. Crouch directly (if you recall, it was he that used the term AND drew the term to the Act of 1952).

              1. I don’t recall that (“[Crouch] drew the term to the Act of 1952”).

                And I don’t see that when I review the article anew (link to patentlyo.com).

                A quote would be helpful to show this isn’t just more wishful interpretation on your part.

                1. from the link you provided:

                  The Big Middle Ground

                  Partially Functional Elements: The rules are clear for claim elements written in purely functional terms such as a ‘means for communicating’ without any claimed physicality. However, there exists a vast middle-ground for claim limitations that include some functionality and some physicality.

                  112(f) is the clear rule for purely functional claiming.

                  Outside of that “purely” zone is the vast middle ground (not within 112(f)). Read the link again to realize that SOME structure gets you out of 112(f).

                  By the by – the “legislatively overruling” means that the Halliburton decision is gone.

                  Yes, Congress did provide at least one optional format WITH getting rid of Halliburton, but remember – that is but an option (and an option for FULLY functional claiming).

                  As to “ this isn’t just more wishful interpretation on your part.” you would need to wishful interpretation to begin with.

                2. “Read the link again to realize that SOME structure gets you out of 112(f).”

                  “Sufficient” structure gets you out of 112(f), not “some” structure.

                3. a difference without a distinction for the current discussion, stepfor.

                  So while you are correct, your correctness is nothing more than being pedantic.

            3. Ben, the problem with anon is that he does not understand Halliburton in the first place. The only objection Supreme Court had is where the novelty of the claim lay in one element of an old combination. There was no objection to the use of functional language in new combinations.

              The Congress legislated beyond what was necessary and seems to have provided a rule of construction applicable to all “means-plus-function” claim elements regardless of whether they appeared at the point of novelty. This is to be regretted.

              The gloss that the Federal Circuit has now put on this legislation is that it applies to any functionally claimed element – again without any analysis of whether the function claim element appears at the point of novelty or whether the structure, composition etc. being claimed is new or old.

              Personally I think the Federal Circuit ought to be very liberal in the construction of corresponding structure if what is being claimed is a known structure, etc. Thus, the claim should automatically cover every known structure that accomplishes the claimed function and that a worker of ordinary skill would know to substitute for the disclosed structure. In contrast, if the novelty lies in the claim element, equivalents should be limited to others structure etc. that performs in the same way.

              1. The Congress legislated beyond what was necessary

                Tell me which branch of the government is directly authorized by the Constitution to write the statutory law that is patent law.

                Then tell me how “beyond” is anything other than your own bias in action?

                In addition – you STILL have not learned your lesson on 112(f) and what it means from when you and your pal Stern got together.

    4. “I don’t know why people keep trying to push language that is defined either entirely or almost entirely by function in their claims.”

      I think you’re being slightly unfair to functional claiming here. The person who invents a new FFT algorithm would need functional claiming to protect their algorithm. Functional claiming can be legitimately used to define a psuedo-structural algorithm. The problem is when the functional claiming is done at too high a level of abstraction.

      It plays into the hands of those like anon and NWPA to act like software has to be claimed at the level of logic gates. They need the exclusion of a reasonable middle ground in order to legitimize “a processor configured to perform a FFT based on an enhanced model.”

      1. The problem is when the functional claiming is done at too high a level of abstraction.

        How high is too high?

        Do you – like Random – think that ladders only come with two rungs?

        As to “It plays into the hands of those like anon and NWPA…need the exclusion of a reasonable middle ground in order to legitimize” – what exactly is your point?

        Yes, the second question is related to the first.

        HOWEVER, rather than my “need,” the point long provided by me on this topic is that it is the likes of Random that is excluding a reasonable middle ground in that he pretends that the ladders of abstraction ONLY have two rungs.

        You aim at the wrong person with your sally.

        1. Can you not read? I disagreed with how he characterizes functional claiming in this post, specifically because it gives your ilk a legitimate thing to complain about.

          I don’t have a standard, and I’m not sure if anyone will produce one. But eventually the CAFC or SCOTUS is going to decide that “processor + result” isn’t sufficiently definite to avoid 112f, and 90% of the problematic functional claims (and a large chunk of patent attorney income) will vanish. Cheers.

          1. I can read. You disagreed with Random on the one hand, but on the other STILL aimed your sally at the wrong person.

            That’s why I posted what I posted.

            As to “my ilk” – since you complain about Random, are you then of “my ilk?”

            As to: “and 90% of the problematic functional claims (and a large chunk of patent attorney income) will vanish. Cheers.

            Wow, your bias is showing.

            Do you really think that innovation is going to disappear (or the use of functional terms in patent claims) with the mere “processor + result” mischaracterization that you want to employ?

            Maybe less animus from you and more appreciation of the reality of today’s innovation…

  2. This inconsistency is reminiscent of all the conflicting or split Fed. Cir. decisions on claim scope interpretation – similarly differing on how much of the spec to read into the claim – aka reading the claim “in the light of” the spec. An issue that should have been settled by the en banc decision in In re Phillips, but was not.

    Clearly solving a specific technology problem should be a relevant factor in avoiding a claim rejection for claiming “abstract” unpatentable subject matter. But if that is not in the subject claim?

    1. Are you desiring a “technological arts” test to be added to the law?

    2. Paul, I recommend you read the reply brief in the Amdocs appeal. They specifically point to Morse claim 8 and pointed out that if courts were entitled to view whether there was an eligible invention disclosed, claim 8 would have not been declared abstract.

    3. Paul, if I run the Supreme Court I would be asking the same question you asked about why this case is not taken back to the Federal Circuit for en banc review. It seems an obvious split in the court.

  3. stepfor: Do you think that McRO ruled that all method steps are inventive? Or that rules themselves are inventive? It ruled none of that. It ruled that applying a specific class of quantitative rules to a certain process that traditionally had been done qualitatively may be inventive.

    Animation was not “traditionally done qualitatively.”

    That’s just a l i e.

    24 frames per second. <— look it up if you don't know what this means

    1. Also, McRo is filled with internal contradictions and self-serving g0bbledyg 00k. It never made sense and it never will. Like nearly every one of these cases, history will look back and laugh. Cripes, Enfish is already a j0 ke.

      1. In other words. The cases that I disagree with are bad. Therefore we can ignore them. Convenient, isn’t it?

        1. In other words. The cases that I disagree with are bad.

          No, in other words, I’ve already written extensively about the incredibly junkiness of McRo here:

          link to patentlyo.com

          and here:

          link to patentlyo.com

          and here: link to patentlyo.com

          Note: there was no Supreme Court appeal filed to reverse McWrong. That was a mistake. But the attorneys who handled that case for the defense blew it, big time.

          1. Oh. So you’ve written extensively! Wow. So now we can ignore them! This is so easy!

    2. 24 fps film speeds have nothing to do with whether animation relied on subjective human intuition, Mal. Each of those frames were still produced by artists using qualitative judgements.

      You’d have done better referencing rotoscoping. And 29.97ndf would be a better name drop if you wanted to prove your media bona fides.

  4. DC holding that although the specification described a technological improvement

    Pretty sure that’s dicta, no? Not that it matters a whole lot.

    the architecture …. showed that the invention was actually a technological improvement.

    The “architecture”? LOL

  5. I have long put forth the notion that a problem with the Prost court (and even existing prior to Prost being Chief Judge) is the renegade aspect of panel to panel NON-deference to prior panel decisions.

    I believe that this may have been first pointed out after the very first post-Bilski panel affirmed that Alappat remained good (and controlling) law.

    Is the CAFC to blame?

    Sure.

    But before you level your criticism at them, note that ALL that they are doing is emulating the Supreme Court (and to reflect on the psychological thought experiment of simians being trained in a cage to NOT reach for suspended bananas, it is the Supreme Court that has been fire-hosing the CAFC).

    Without a bonafide strong leader like Judge Rich (who knew patent law FAR better than any Supreme Court Justice, the CAFC will always run into the problem that they cannot live up to their mandate of bringing clarity to patent law because of the Supreme Court’s addiction to the nose of wax.

    Given that patent cases do NOT make up an item of original jurisdiction for the Supreme Court, there exists a way to slice through this Gordian Knot.

    1. a bonafide strong leader like Judge Rich (who knew patent law FAR better than any Supreme Court Justice

      Judge Rich was an arrogant over-rated incompetent whose bumbling fumbling approach to subject matter eligibility turned the US patent system into a t0 xic waste dump.

      By the way, Intellec tr0ll Ventures saw another one of their junky patents destroyed today under 101. It should never have been granted in the first place.

      If this what a “swinging back” pendulum looks like, you guys are really going to be miserable when it stops.

      LOL

      No matter what happens with Oil States, the maximalists are going to like what happens next even worse. Invest in popcorn now.

      1. Do you have real insights here or are you just spouting off? If the former, please enlighten.

        1. Do you have real insights here

          Depends on where you’re coming from. If you’ve just emerged from the fever swamp over at Big Jeans Club for Aggrieved Entitled Men then I probably have hours of insights for you.

          But for most of the rest of us what I’m saying is just common sense.

          You guys don’t have good arguments to defend s0 ftie w0 ftie junk. More accurately, your arguments are some of the absolutely sh ttiest and disingenuous arguments ever made in the history of patent law. The entire premise of logic patenting rests on an absurd fiction pulled out of a judge’s behind. These are the facts that you are stuck with. On top of that, your side is stuck with advocates with really deep and serious ethical problems, top to bottom. You can’t change that and you never will.

          So I win. You lose. It’s just a matter of time. I was here before the flood, I predicted the flood, I’m enjoying the flood now, and soon you will all be washed away. It’s just destiny. This kind of thing — a massive legal error based on pure fiction — moves in only one direction. How can it not?

          Weird that you can’t see this.

          Just grab your cash while you can, if you’re the cash grabbing type. And bets are good that you are.

          [shrugs]

          1. What are you talking about? I’m a material science practitioner; I don’t have eligibility problems. Why the assumptions and gratuitous insults?

            1. Why the assumptions and gratuitous insults?

              Are you new here, PYT? That is pretty much the extent of what Malcolm has to “offer.”

              ..for the past eleven and half years at that!

  6. I have made this prediction before, so I am not saying anything new here, but I predict that the Court will not take cert. on this one. They are done with §101 for the foreseeable future.

    1. I predict that the Court will not take cert. on this one. They are done with §101 for the foreseeable future.

      I think it’s entirely possible that the Court will destroy logic patenting tomorrow.

      All it takes is some competent attorneys and a client whose hands aren’t tied behind its back.

      It’s a slam dunk, really. Everybody knows that. Just put down the kool-aid and start from first principles and game over.

      [shrugs]

      1. Please explain the approach from first principles that destroys logic patents…without gratuitous insults, if possible.

        1. Logic isn’t eligible for patenting.

          You can’t protect ineligible subject matter by sprinkling prior art, contextual limitations over it.

          End.

          It really is that simple.

          Do you really think that exceptions created on mythologically, fabricated premises are going to hold up to serious scrutiny? Especially when the negative outcomes were so transparent, so predictable, and the predictions came true, and there is no benefit to anybody except for the already wealthy? I mean, sure, you have some rich white guys on the Supreme Court who are going to identify with crying rich white guys whose playground is being obliterated. Is that going to win the day, ultimately? I highly highly doubt it. And I’m quite cynical, actually.

          If you really believe that the pendulum is “swinging back”, you need to see a doctor.

            1. Like I said, you guys don’t have an argument.

              That’s why I win and you lose. It really is about competence and not being afraid to stare into the abyss. If you get distracted by children screaming that nobody will write a new “app” because their precious logic patents are taken away, that’s your problem, not mine. I’m immune to that silliness because I’ve peaked behind the curtain. There aren’t any children there just wealthy grown men counting their money and filling their diapers.

              1. LOLOLOL

                See how easy it is! You guys don’t have an argument. In other words. I just write LOL any time someone makes a good argument. I ignore everything that contradicts my points. Then I throw insults! Such an easy game!

              2. Can you define “logic patent” in any non-circular manner? Again, if tomorrow Congress made all computer-related inventions ineligible, regardless of form, it would not affect me or my employer; I’m simply curious about where you would draw the line given your clear disdain.

                1. Next ask him to explain the fact that in the patent sense, one “ware” of a computer manufacture is equivalent*** to another “ware” of a computer manufacture.

                  Soft”ware” is patentably equivalent to firm”ware” is patentably equivalent to hard”ware.”

                  ***dont let him prevaricate concerning equivalence, which in the patent sense is expressly NOT “exactly the same as.”

          1. Logic isn’t eligible for patenting.

            It is not eligible for copyright protection either.

            And yet, we both know that BOTH copyright and patent protection exist to protect different aspects of software.

            Of course, from you Malcolm, all that we get is constant dissembling on this matter.

    2. I agree Greg. First, because the Supreme Court usually wants to see how lower courts deal with their decisions for several years before getting back into the same issue again. Secondly because they have indicated a desire to use “unpatentable subject matter” as a front end filter or preliminary filter [for disposing of otherwise expensive and time consuming patent litigation on many other issues].
      [One reason for the latter may well be that the subject matter or technology of some patents on which the Supremes have taken cert on in recent years has not been impressive to them. As the old saying goes, bad facts make for bad law, and it might also affect cert grants. A really compelling case of a really important, widely needed or used, invention not having any of its claims allowed might have a somewhat better chance of cert?]

      1. A really compelling case of a really important, widely needed or used, invention not having any of its claims allowed might have a somewhat better chance of cert?

        That was what happened in the Ariosa cert. petition, and the SCotUS took a pass on that one. To my mind, if they are not interested in reviewing the §101 issue in that case, then they really simply are not interested in revisiting §101 any time soon.

        1. To my mind, if they are not interested in reviewing the §101 issue in that case, then they really simply are not interested in revisiting §101 any time soon.

          That was another case where the claim suffered from serious obviousness, enablement and eligibility issues. The Supremes were wise not to touch it.

          Notably, biotech patenting continues to roll right along without a whole lot of teeth-gnashing. I’ve got work coming out of my ears and Sequenom isn’t a problem. Allowing people to claim methods of using the prior art to detect naturally occuring phenomenon — now that’s a huge problem.

          Hence the denial of cert.

          But go ahead and present the counter-argument, Greg.

      2. As the old saying goes, bad facts make for bad law,

        There’s another saying:

        Legislating from the bench in the matter of statutory law makes for bad law.

  7. Dennis: This case is also in direct conflict with McRO, which was also written by Renya.

    “While the result may not be tangible, there is nothing that requires a method “be tied to a machine or transform an article” to be patenta-ble. Bilski, 561 U.S. at 603 (discussing 35 U.S.C. § 100(b)). The concern underlying the exceptions to § 101 is not tangibility, but preemption. Mayo, 132 S. Ct. at 1301.”

    “The specific, claimed features of these rules allow for the improvement realized by the invention.”

    Rules (method steps) were inventive…

    1. “Rules (method steps) were inventive…”

      ?? Do you think that McRO ruled that all method steps are inventive? Or that rules themselves are inventive? It ruled none of that. It ruled that applying a specific class of quantitative rules to a certain process that traditionally had been done qualitatively may be inventive. Is that what two way media did?

      1. When you write an opinion that, if applied to a prior case, would produce and entirely different result in the former case, something is askew, especially if you were the one that penned the prior opinion.

        You cannot square the new machine requirement in Two-Way with the ruling in McRO.

        1. What is this “new machine requirement in Two-Way” that you speak of??

      2. stepfor, echoes of Diehr, with the assumption that the underlying lipsync process that is improved was itself eligible.

        1. was itself eligible.

          Windmills Ho!

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