Patent Literature

Pain and Suffering: Prof. Ronen Avraham was moved by the story of Robert Kearns (Flash of Genius) and asks Should Courts Award Pain and Suffering Damages in Patent Infringement Cases?  His answer is YES, “courts should award damages to solo inventors for noneconomic harm resulting from patent infringement.”

Licensing Without Litigation: Mark A. Lemley has again teamed up with Kent Richardson and Erik Oliver to provide some data about the “Patent Enforcement Iceberg” — licenses of non-litigated patents.  Their tentative conclusion is that the iceberg isn’t that deep.   In a separate econ paper (Bereskin, et al) argues that plaintiffs bringing patent infringement lawsuits see increased stock-value.

All Elements (Limitations): Ted Field’s article on patent terminology probably doesn’t provide a lot for experienced patent attorneys – except for his discussion of “limitations” vs. “elements.” He writes:

Claims are made up of constituent parts, which are properly called “limitations.” It is improper to refer to the constituent parts of a claim as “elements.” Instead, “elements” properly refers only to a constituent part of an accused device or a prior-art reference, not to a constituent part of a claim.

Although Field cites authority for his proposition, I will note that the Federal Circuit regularly considers “claim elements.”  Consider, the following two recent examples: Bosch Automotive Serv. Sols., LLC v. Matal, 2015-1928, 2017 WL 6543777 (Fed. Cir. Dec. 22, 2017) (“When no structure in the specification is linked to the function in a means-plus-function claim element, that claim is indefinite under 35 U.S.C. § 112, ¶ 2.”); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1373–74 (Fed. Cir. 2017)(“The second step of the § 101 analysis requires us to determine whether the *1374 claim elements, when viewed individually and as an ordered combination, contain ‘an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.'”)

Inherently Abstract vs Temporally Abstract: Alan Gocha’s new article focuses on patent eligibility and provides “an ontological model for determining section 101 patent eligibility under Alice.”  I think the most important contribution that Gocha makes is to categorize abstract ideas into those that are “inherently abstract” (preexisting fundamental truths) from those that are only “temporally abstract” (longstanding practices).  In his view, these two different types of abstract ideas should involve different jurisprudential approaches.

158 thoughts on “Patent Literature

  1. 16

    in pieces then…

    Still one more try:
    Catching up on points provided, but blocked by the “don’t have a conversation because a different desired narrative is desired” filter, here are several gems that have been salvaged:

    To Distant Perspective at 15:

    Your comment is awaiting moderation.

    January 3, 2018 at 12:29 pm

    I agree with Ben and further caution against any “loose” attempt to discuss patent eligibility across Sovereigns without noting that the US Sovereign (in particular) has a standard that is larger than any “technological arts” that may be in place in any other Sovereign.

    To Ned at 15.3:

    Your comment is awaiting moderation.

    January 3, 2018 at 8:25 pm

    I am doing my level best to help people understand 101.

    Stop.
    Focus first on you obtaining an understanding of 101.
    An understanding NOT tainted by your Windmill Chases.

    To Ben at 14.3.1.1:

    Your comment is awaiting moderation.

    January 3, 2018 at 12:33 pm

    Ben,
    He is not a char1atan.

    His view IS understandable, and I take your inability to find anything supporting his assertions as more a reflection of just that: your inability.
    That’s not necessarily a knock, mind you. Discussing physics at such a “high” level (verging on meta-physics) AND taking into account the factual nature of computing AND the legal contexts is NOT something for the average person.
    As I note below, I do wish that Night Writer would attempt a different path of conversation given the limitations exhibited by many of those wanting to join the conversation (as well as the opportunity for mischief that THAT type of intricate thinking provides for those who want only to obfuscate the issue in order to advance their own “Feelings/Philosophies.”

    To Paul Morgan at 14.3.1.1.1.1.1:

    Your comment is awaiting moderation.

    January 3, 2018 at 8:27 pm

    Different level of understanding Paul.

    You are WAY off.

    To Martin at 14.4.1.2

    Your comment is awaiting moderation.

    January 3, 2018 at 2:56 pm

    and to anon’s endlessly repeated (and useless) point: hardware, firmware, and software are not the same thing, or they would not be three different words (!) but even if they all result in the same thing,

    You continue to make the mistake of thinking that equivalency means “must be the exact same thing.”

    That is not so.

    Please acquit yourself of the proper understanding and use of terms when you want to partake in a discussion of legal matters.

    Meanwhile, I can actually see the argument for processed information as a manufacture and information processing as coming under the ambit of “process’ in Section 101.

    Software is not a process.
    The execution of software may be a patent eligible process.

    So my answer, in the name of practicality “…

    …practicality? Whose? Yours? When you disdain the terrain upon which you want to wander, “practicality” will not – and cannot – be achieved.

    You want (somehow) to take this to “the next level” when you cannot even be bothered with the foundational level. You know what they say about people such as yourself building castles (the ‘next level’) on foundations of quicksand, eh?

    1. 16.1

      Still one more try:

      To Paul Cole at 13.1:

      Your comment is awaiting moderation.

      January 3, 2018 at 8:03 am

      The phrase is (admittedly) an obscure movie reference. The “filthy” has a different meaning in that context – and my borrowed use intends a more light hearted context (while still reflecting a span of human nature).

      And because H 0 m 0 sapiens fully belongs to the Mammalia group within the animal kingdom, you sir, remain an animal.

      Lastly, “deserve” happiness is an interesting concept, but I am more of the breed that believes that one earns the happiness that one obtains, and everyone has the power within themselves to earn whatever level of happiness that one desires.

      1. 16.1.1

        and some more:

        Both of the following at the end of the Ned chain at 12.1.2.1.1.2.2:

        Your comment is awaiting moderation.

        January 3, 2018 at 8:29 pm

        In the context of a larger machine or process

        I do not see that in the words of Congress.

        Your comment is awaiting moderation.

        January 3, 2018 at 8:31 pm

        believe that circuits and firmware modify a machine so as to potentially improve it. Not so with software.

        Because THAT is only by magic.

        Ned – your statement here is the OPPOSITE of dealing with the equivalency.

        To Martin at the end of the 12.1.2.2.2.2.4 chain:

        Your comment is awaiting moderation.

        January 3, 2018 at 8:13 am

        His reference to your prior statement is NOT an affirmation of that statement, and is merely intended to draw a contrast between that prior statement and your current statements.

        That you do not recognize this and instead appear to “celebrate” only shows how deeply invested in your own world view to the exclusion of what does go on here in this real world.

        1. 16.1.1.1

          smaller pieces then…

          To Ned at 12.1.2.2.2.3:

          Your comment is awaiting moderation.

          January 2, 2018 at 4:12 pm

          Maybe it’s one of those “larger machine” deals…

          1. 16.1.1.1.1

            skipping To maxdrei at 12.1.1.2.1: [a word is tripping the filter rather unexpectedly. and cannot be located]

            To Ben at the end of the 12.1.2.1.1.2.2 chain:

            Your comment is awaiting moderation.

            January 3, 2018 at 10:38 am

            The perversion is in claiming results

            But that’s not a 101 issue.
            That’s a 112 issue.

            To Ned at the end of the 12.1.2.2.2.2.1 chain:

            Your comment is awaiting moderation.

            January 3, 2018 at 9:33 am

            might I add that to anon and Night, the Bible is a book. To many, the Bible is a bit of story and a bit of history. To many others, the Bible is the Word of God.

            But to anon and Night, these distinctions…

            What b01 10cks.

            When have I ever indicated that an item cannot have more than one aspect?

            Quite in fact, Ned – it is I that champions this notion of an item having more than one aspect in my (attempted) conversation with Malcolm when I point out the fact that software has aspects that are differently protectable under the different IP laws of copyright and patent.

            I am also the one that attempts to have people understand that there are very real distinctions between math, applied math, and MathS (as I have coined the term). It is others that seek to obfuscate rather than add clarity – and those others include you with your Windmill Chase of anti-patent for business methods.

            New Year Ned – maybe consider dropping Malcolm’s Accuse Others meme…

            You are not only wrong directly, your attempted disparagement does not reach any recognizable point in the immediate discussion.

            To Martin at the end of the 12.1.2.2.2.2.2 chain:

            Your comment is awaiting moderation.

            January 3, 2018 at 9:37 am

            What are you trying to illustrate?

            How is it that you “magically” have different capabilities without an actual physical change?

            Your Britney Spears CD will NOT restore your hard drive if your reformat that drive.

            One piece of software (that enables “X”) is NOT the same as another piece of software (that enables “Y”).

            You say things here that are simply not factually accurate – and you should KNOW BETTER given what you actually do for a living.

  2. 15

    Given the discussion of subject-matter eligibility below, a shout out to a posting in Dr. Mark Summerfield’s blog Patentology, from 4th December, 2017, entitled New USPTO Data Set Reveals Extent of Patent-Eligibility Confusion and Carnage here:

    link to blog.patentology.com.au

    In addition to the data analysis, there is discussion and/or links relevant to subject-matter eligibility in the U.S., the U.K. and Australia.

    Penultimate paragraph (with a link to the “recent article”):

    “And, as I pointed out in recent article, the situation does not appear to be any better in Australia.”

    1. 15.1

      While I agree with the conclusion that eligibility is an arbitrary mess, I think the patentology argument is weak. His sole point is that Alice/Mayo rejections rates should be going down overtime, and they are not.

    2. 15.2

      A point I forgot to make in the original post.

      Either in the blog posting on the link, or on pages linked from it, it becomes clear that, in Australian law, the basis of subject-eligibility law is the Statute of Monopolies of 1624, as it has been judicially interpreted over the centuries.

      Thus investigation of what is the current law in Australia (and maybe in other common law jurisdictions? Ontario?) is an appropriate alternative (for those tempted to engage in it) to counter-factual speculation as to where U.K. law might have ended up had the U.K. not become a party to the European Patent Convention.

      1. 15.2.1

        Well, Distant, US law all but formally enacted the Statute of Monopolies in 1793. Australian law and US law should be the same, not different, to the extent of the subject matter eligibility.

    3. 15.3

      Well, Distant, I am doing my level best to help people understand 101. What the courts are looking for is whether the claims are directed to a new or improved “manufacture,” or way of making such, as those terms were understood from “working or making of any manner of new manufactures” which appears in the Statute of Monopolies. Ways of organizing human activity for the purposes of making money, or improved mathematics, are neither new or improved manufactures, nor are they knew or improved ways of making such. In the end, the courts are not going to find such inventions eligible and will invent ways to deny eligibility.

      Alice essentially adopted the structure of analysis we see in Hotel Security. That case said that business methods were abstract, and patentability must line the means. This is a simple formula and it is being conducted by the courts day in and day out.

  3. 14

    The lot of you need to remember:

    The conservation of information is the most important law of physics.

    It takes time, energy, and space to process information.

    That you only know whether there is software or a special purpose chip in the black box by looking.

    1. 14.1

      Plus, what exactly do you think processed information is? So, you get output to stop or you will hit a child. You get output that your tumor is cancerous. You get output etc.

      A manufacture. The raw material is the represented information, e.g., the light from the child is turned into a representation of the child and based on a model of the car, it is determined you will hit her. The information output –you will hit her — is a manufacture.

      The production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” Also “anything made for use from raw or prepared materials.”

    2. 14.2

      Night Writer,

      The “conservation of information” theme is over the heads of those who most need to understand that concept.

      A simpler understanding may be achieved if the easy lesson of the “wares” were to be recognized with just a little bit of inte11ectual honesty.

      For patent purposes, software is equivalent** to firmware and is equivalent to hardware.

      It’s that simple.

      **(and for the typical sAmeones, equivalency is NOT the same as “must be exactly the same as.”

      1. 14.2.1

        Mr. Ned will not even address the equivalency. Just completely ignores it.

        A one R. Stern used to do that to me too.

        1. 14.3.1.1

          I did briefly and I couldn’t find anything supporting your assertion.

          I don’t mind your decision to not back up what should be an easily verifiable fact if accurate (i.e. “play the citation game”). It reinforces my hypothesis that you’re a charlatan.

          1. 14.3.1.1.1

            Ben, your nonsense is never ending. Seriously? You entered “conservation of information” and couldn’t find a lot about it?

            1. 14.3.1.1.1.1

              I didn’t say there were no results. I said I found nothing which supported your specific assertion: “The conservation of information is the most important law of physics.”

              What I wonder is if you are cognizant of that sad attempt to redfine the goal posts. Seems unlikely.

              1. 14.3.1.1.1.1.1

                Re: “The conservation of information is the most important law[?] of physics.” ? For most of human history, most of what little information was being conserved other than orally was religious, philosophic, artistic or shamanistic. The printing press and cheap paper clearly helped more rapidly advance all fields of human endeavor, not just physics. So does [a very small portion of the usage of] the internet.
                But all this commentary has little or nothing to do with the only relevant question, which is what the COURTS will actually hold to be patentable subject matter. Even Beauregard claims have never been tested at the Sup. Ct., or even fully tested with a serious challenge at the Fed. Cir. The PTO started issuing them after the Solicitor withdrew their pending, undecided, challenge at the Fed. Cir.

    3. 14.4

      Night, given Greg’s 12.1.2 definition of manufacture, I still say that while Deep Blue is a “manufacture”, and patent-eligible, but that each chess move it outputs is not a “manufacture” eligible for patenting (even though it is indisputably “processed information”).

      Even if the conservation of information is as you say, the “most important” of all the Laws of Physics, so what? What does that have to do with the Patents Clause of the Constitution?

      1. 14.4.1

        What the conservation of information is telling us is that processing information is necessarily a physical process. A machine that processing information is necessarily performing a physical process that takes time, energy, and space to perform.

        I think the processed information and the machine can both be patent eligible.

        1. 14.4.1.1

          We seem to be back with Magritte and his pipe. Matter is physical, and man-made information processors are not processing “information” as such but, rather, units of matter that represent “information”. I do not accept that “information” as such is physical material. A machine for processing “information” per se is not performing a “physical process”. Such a machine is beyond our human imagination.

          That said, I think a machine that is being driven by new and better computer program is a new and improved machine, eligible for patenting.

          1. 14.4.1.1.1

            Max, I think “A machine for processing “information” per se is not performing a ‘physical process’.” Goes to the heart of the whole matter.

            I think that processing information is necessarily physical. The represented information must be represented by physical means and the processing necessarily changes a physical state to change the represented information.

            Information processing is necessarily a physical process.

            1. 14.4.1.1.1.1

              I see a difference between, on the one hand, information and on the other, physical entities that flip between two states. There are machines that process things that “represent” information but no machines (not even our own brain) that process “information” as such.

              Inform-ation, as such, is not part of the physical world. Rather, it is the name we humans give to what our brain is inform-ing us , inside our heads, about the physical world outside our heads.

              In any case, the legislator chose to confine patentability to the ambit of the useful arts. It’s about time SCOTUS told us what they are, in today’s world.

          2. 14.4.1.1.2

            It is far more subtle than that.

            “This is not a pipe” may in fact NOT be a pipe, but it IS still something, and something real and tangible at that.

            The “as such” that you insert is a bit of a “too much” caveat, as Night Writer’s context does not allow such a caveat.

            He really is talking at a different level.

        2. 14.4.1.2

          I asked @ 11 “is information patent eligible”

          Night says at 14.4.1 (and elsewhere) that it is.

          Because the natural next question is, “under what conditions? ”

          Any information that’s new and useful or an improvement of any existing information?

          Because if that’s the case, we are going to need hundreds of millions of patents.

          and to anon’s endlessly repeated (and useless) point: hardware, firmware, and software are not the same thing, or they would not be three different words (!) but even if they all result in the same thing, what does that have to do with the patenting of information?

          Meanwhile, I can actually see the argument for processed information as a manufacture and information processing as coming under the ambit of “process’ in Section 101.

          So my answer, in the name of practicality and the Constitutional protection of expression, is that information consumed by persons is never patent eligible, and information consumed by machines may be patent eligible, subject to a heightened standard of obviousness. The hallmark of information processing is its superior malleability compared to the physical systems it is modeling, describing, or simulating. What may be non-obvious mechanically or chemically may be utterly obvious logically.

          Night et al. never, ever want to take this argument to the next level, and that’s why we have such a mess.

    1. 13.1

      @ Anon

      I am a homo sapiens not an animal. And I am not filthy as I had my usual shower this morning. Does that mean I do not deserve the happy new year?

      1. 13.1.1

        Reply stuck in moderation – (I forgot to hint at the movie reference: it’s a relatively new Christmas classic, in the background, in black and white)

      2. 13.1.2

        @Paul Cole

        With regard to the first point, I am sure that any self-respecting cladistic taxonomist would beg to differ.

        (Somewhere in the late Stephen Jay Gould’s volumes of essays, there is one on cladistic taxonomy – but those books are not currently to hand.)

  4. 12

    Some interesting contributions in the thread, I find, on where to draw the line on fitness for patenting.

    Ned harks back to the Olde English definition “any manner of new manufacture” and asserts that the “four classes” of 101 is an attempt to define “manufacture”. Seems reasonable to me.

    Night asserts (4.2.1.2) baldly that processed information IS a manufacture. Can that be? I think not. When Deep Blue outputs a move to be made on a real life chessboard, is that a new “manufacture”? I think not.

    That’s not to deny though, that Deep Blue itself is patentable.

    What about a computer to replace a human judge? Same thing isn’t it. You can patent the machine (as a “new manufacture”) but not the processed information that it outputs.

      1. 12.1.1

        I’ll think about it. But I regret to say I’m reluctant to offer a definition, for fear that as soon as it is adopted, it proves to be out of date.

        That’s why the EPC declined to define “invention” and why patent statutes decline to define “obvious”.

        Was it Justice Douglas who became notorious for asserting that “I know it when I see it”. Well, I think the EPO Boards of Appeal know “technical” when they see it and that I (helped by 40 years of their jurisprudence) know “manufacture” when I see it.

        For the time being at least, Night, I’m sceptical that any definition is needed.

        1. 12.1.1.1

          A concept in jurisprudence you would do well to add to your studies in the new year MaxDrei: Void for Vagueness.

          1. 12.1.1.2.1

            That is a good question, anon.

            A definition is composed of words. A definition goes out of date when the meaning of words (like “useful arts”perhaps, or “horseless carriage”) change over time.

            Does “manufacture” mean today something different from in the 17th century? Perhaps.

            I stand on my position, that assaying a definition of “manufacture” is unnecessary and counter-productive

            1. 12.1.1.2.1.1

              Thanks MaxDrei – more than ever then, you should check out the concept of Void for Vagueness.

              As to Useful Arts, that term’s scope may change over time, but the meaning does not. Some words (and phrases) are expressly built to encompass changes – and this is AND MUST BE especially true in regards law pertaining to innovation, which is in and of itself geared to the unknowable. This is precisely why a proper understanding of patent law dictates that the gate of 101 is a wide open welcoming gate, rather than how that nose of wax has been mashed from the Bench (with ample urging from those that would prefer to compete on non-innovation factors).

        2. 12.1.1.3

          “I know it when I see it.” That was Justice Potter Stewart, and he wasn’t writing about patent law!

          Justice Stewart also wrote the dissent in Flook, joined by Chief Justice Burger and Justice Rehnquist.

      2. 12.1.2

        Until the Court gives us a different definition, my definition (shared in common by all who are governed by U.S. law) is

        “Manufacture,” as well defined by the Century Dictionary, is “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” Also “anything made for use from raw or prepared materials.”

        American Fruit Growers v. Brogdex Co., 283 U.S. 1, 11 (1931)

        1. 12.1.2.1

          That’s a good definition (and one, it should be noted, that fully encompasses the manufacture of software – as anyone who is anyone quite correctly notes the nature of the exceptions to the judicial doctrine of printed matter – and there is a VERY easy to understand, set theory style explication that has been provided, both here and on the Hricik side of the blog).

          1. 12.1.2.1.1

            I can almost see the face of a programmer when you tell him that what he is doing is manufacturing software.

              1. 12.1.2.1.1.2.2

                Ben, for the same reason that I object to any claim that simply says, “Do it on a computer.” If “new” software were patentable simply because the claim specified that it was machine readable and recorded on media, then any software could be patented regardless of whether that software improved any machine or conventional process. It would permit the patenting of business methods and mathematics that are implemented in software.

                The Supreme Court has never been fooled by those who want to patent software generally. Nor have some on the C.C.P.A. and Federal Circuit. But there was a time that the Federal Circuit lost its way, particularly after State Street Bank, which case overturned the business method exception and permitted the patenting of a business method simply because it was implemented on a computer via software.

                And there was a time also that the patent office led the way in heresy when it allowed the patenting of any claim simply by having it recorded on a computer readable medium or by having a conducted by a computer.

                1. Ned, this is a load of nonsense.

                  Three sticks nailed together are patent eligible. You are trying to import 102/103 into 101.

                  Plus, you never deal with the equivalency of software/hardware/firmware. It is a box and you can’t tell what is in it. That is the reality of today.

                  Plus, processed information is clearly a manufacture.

                2. “for the same reason that I object to any claim that simply says, ‘Do it on a computer.'”

                  I don’t see why that’s any worse than “do it with a circuit”, “do it with a device”, or “do it with a biomolecule”. The perversion is in claiming results, not the mode by which the results are claimed.

                3. Night, … [Y]ou never deal with the equivalency of software/hardware/firmware.

                  But I do, and I often have. In the context of a larger machine or process, all are equivalent.

                  In the context of a programmed machine being eligible, I believe that circuits and firmware modify a machine so as to potentially improve it. Not so with software.

        2. 12.1.2.2

          Thanks Greg. I’ve no quarrel with that definition. It covers methods of processing materials but also the material things produced by such processing.

          Would you like now to tell us what a “material” is?

          And while you’re about it, “thing” and “article” too.

          1. 12.1.2.2.1

            material?
            thing? (as in anything)
            article?

            And pray tell, provide definitions for the words used in the definitions of those things, eh?

            Turtles all the way down, that path be.

            1. 12.1.2.2.1.1

              Night asserts that information processing is a manufacture.

              Then Greg offers a dictionary definition of manufacture that speaks of processing a “material”. You complimented Greg on a “good defintion”.

              To find out whether “information” is a “material” I think I need a definition of material. Preferably one that helps to distinguish an information scientist from a materials scientist.

              1. 12.1.2.2.1.1.1

                I replied to Night Writer’s assertion below (see 4.2.1.2.1).

                Night Writer’s context is a little bit above the heads of general readership.

                Any concerns that might arise (even within Night Writer’s specific context) are already taken care of with the exceptions to the judicial doctrine of printed matter. I (now long ago) laid out a very easy to understand “set theory” explication of this legal notion originally on the Hricik side of the blog, but posted a couple of times on this side as well.

                I am curious though as to why YOU think some distinguishment is even necessary (between an information scientist and a materials scientist). Are you assuming a specific conclusion already with such an effort?

                PS: Greg’s definition is NOT a “dictionary definition” per se. It actually is a definition in a particular legal context.

          2. 12.1.2.2.2

            I think that “material” means physical matter. Any definition of “material” that can stretch as far as to reach pure information is a thorough-going idiosyncracy.

            Mind you, I think that software is patent eligible under U.S. law, and on most days I even think that it should be eligible. To my mind, when people use the word “software” to designate tangible media (hard disks, flash drives, CDs, etc), that is properly a “manufacture.” When people use “software” to designate algorithms, that is (or at least can be, when made explicit enough) a “process” (which is equally well a statutory category).

            I do not see merit, however, in trying to shoehorn “information processing” into the “manufacture” category.

            1. 12.1.2.2.2.1

              And here Greg tries to answer the question in good faith.

              Night Writer disparages people’s understandings of information processing unless they have formal degrees in the subject. Otherwise, how could anyone understand the idea of assigning alphabet letters and integers to binary values and processing back and forth between them? Nobody could grasp it. If they did, they would know those ones and zeros were surely raw or prepared materials. Surely.

              So Greg’s answer is that information processing machines and structures are raw or prepared materials, but information processed with these machines is information, without material existence.

              When I program my CNC lathe to make a new part in a new way, is the lathe a new machine?

              Hey anon, why aren’t new data considered to be workpieces too?

              1. 12.1.2.2.2.1.1

                Happy new year to you, Martin. I hope that 2018 is treating you well so far. :)

                When I program my CNC lathe to make a new part in a new way, is the lathe a new machine?

                Hm, I confess that I would not call it a “new” machine. I would not invite my friends over to see my “new” lathe, just because I had programmed it to perform a new routine. I would be a bit embarrassed when they looked at me and said “that is the same lathe that you have had for the last three years.” I would be afraid that they would think that I had lost my marbles if I were to respond to that point by saying “ah, you see, it is a new machine now, because I have added some software.”

                On the other hand, the eligibility statute does not, strictly speaking, require that a machine be a “new machine” to be eligible. Rather, 35 U.S.C. §101 provides that “[w]hoever invents or discovers any new and useful… machine…, or any new and useful improvement thereof, may obtain a patent therefor…” (emphasis added).

                I would not feel the least bit embarrassed to invite my friends over to see the improvement that I had made to my machine if I had programmed it to achieve something that the machine had not previously achieved. Given that the statute explicitly provides for the eligibility of improvements to machines on equal footing with eligibility for machines, it seems clear to me that the statute should be read to categorize my better-programmed lathe as patent eligible.

                1. Greg, your improved lathe is physically identical to your old lathe. The only thing that changed is some information held the lathe’s physically identical memory module.

                  How would you know. It is my lathe, after all. Have you snuck into my house to examine it? :)

                  Honest, I do not have a lathe, and I do not really understand how physical storage media work. It was my understanding that magnetic readable media (of the sort that were state of the art when I was in college, which was the last time I had occasion to interest myself in such things) by shoving patches of magnetized iron into different microscopic configurations.

                  In other words, in a hypothetical universe in which my (totally imaginary) lathe has a magnetized disc as its storage medium, it is not really “physically identical.” There are very real physical changes. It just happens that those physical changes are microscopic, so no one is going to observe them. Nevertheless, there is a quite real physical difference between the improved lathe and its off-the-shelf predecessor.

                  I really do not know if such physical changes—however microscopic—are present in more modern storage media technologies. Does anyone care to comment on that point?

                2. Whoops, my immediately previous 1:45 pm post was intended as a response to Martin’s 1:35 pm post below. Also I meant to write “magnetic readable media… work by shoving patches of magnetized iron into different microscopic configurations” (insertion shown in bold).

                3. Greg,

                  Without a very real and very physical difference, you would be forced to accept that the very real difference in immediate capability happens to come from Magic.

                  We do not live in that other Universe.

              2. 12.1.2.2.2.1.2

                Hey anon, why aren’t new data considered to be workpieces too?

                Asked and answered.

                Perhaps you should have paid better attention when I repeatedly explained (in easy to understand Set Theory terms, even) how the exceptions to the judicial doctrine of printed matter works.

                Or even, you should take a patent law class (and pay extra special attention to the notion of inherency).

                “Workpiece” is all fine and dandy, but what we are talking about here are manufactures that imbue a capability not before present.

                You cast stones ever so quickly at Night Writer, but the shards of your very own glass house are all about you.

                Your massively bleeding feet attest that you speak (and continue to speak) without regard to the legal contexts of the items that you are sooo compelled to speak about.

                1. Asked and answered. In your multiverse maybe, but not in this one.

                  Greg, your improved lathe is physically identical to your old lathe. The only thing that changed is some information held the lathe’s physically identical memory module.

                  Is that array of electrons (not the identical memory module itself) an improved manufacture? Are they raw or prepared materials? Are they structurally distinguished from prior art structures?

                2. In your multiverse maybe, but not in this one.

                  Um, no. Very much in this one.

                  Pay attention son.

                3. Marty,

                  You seriously need a lesson in how things really are in this universe.

                  Here is a quick and very easy thought experiment for you:

                  I have two sets of identical “three resistors.”

                  The first set I configure such that the three resistors are in parallel.

                  The second set I configure such that the three resistors are in series.

                  According to you, these two sets remain “physically identical.”

            2. 12.1.2.2.2.2

              Greg, you really don’t need to understand the exact mechanics of how bit storage is physically achieved to understand what is happening. On a magnetic disc, electrons are arranged via magnetic forces. On a CD-ROM, the bits are represented by burned pits. You could use the gravel in your driveway in a similar way to arrange the bits (yes you would need a lot of gravel and time and a means to read the array, but the effect would be identical). If and when quantum computing arrives at scale, the bits are arrayed as probabilities (if there is a 99.999999999999% change an electron will be where you expect it, you can accept the position as a bit value).

              The issue is that in a novel physical structure, the structure itself provides mechanical or chemical utility, while logical “structure” such as a bit-array is only useful because human meaning is drawn from the arrangement.

              If you arrange alphabet letters in your soup to arrange a word, is that word actually a physical thing in the world, or are we really talking about noodles?

              1. 12.1.2.2.2.2.1

                Martin, your post reminds me of the numerous discussions I have had with the likes of Night and anon. While insisting that software had structure, I asked them to distinguish between the state of a bit and a one.

                I am sure their response to my question was highly predictable.

                1. Barking up the wrong tree, Ned.

                  What was your answer again to the weight of Morse’s “space.”

                  See also the simple lesson with resistors in series and in parallel.

                  Of course, you have seen these before. And of course, you have NOT been inte11ectually honest to these things before (still).

                  How is that “magic” world of yours wherein items with NO physical difference somehow have different physical properties?

                2. Martin, might I add that to anon and Night, the Bible is a book. To many, the Bible is a bit of story and a bit of history. To many others, the Bible is the Word of God.

                  But to anon and Night, these distinctions are beyond their comprehension. It is like trying to teach animals math.

              2. 12.1.2.2.2.2.2

                Qbits are not binary.

                And the arrangements very much are more than just “only useful because human meaning is drawn from the arrangement

                I invite you to reformat your hard drive and reinstall your computing system with a Britney Spears CD if you insist on disagreeing.

              3. 12.1.2.2.2.2.3

                The exceptions to the judicial doctrine of printed matter already answer that , Martin.

                1. anon,

                  In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) , ironically as usual, completely supports my proposed eligibility test for information results and completely undermines your misuse of the non-statutory doctrine (usually anathema to you but just peachy when one results in more patents)

                  The court held that a data structure stored in a memory does not convey “intelligence to a reader.” It had to “be processed . . . by a machine, the computer'” to do that.

                  More: “The printed matter cases have no factual relevance where the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.”

                  My position is the inevitable path of this policy problem, especially in the age of AI.

                  Your position is a dead-end, naturally.

              4. 12.1.2.2.2.2.4

                “The issue is that in a novel physical structure, the structure itself provides mechanical or chemical utility, while logical “structure” such as a bit-array is only useful because human meaning is drawn from the arrangement.”

                I don’t understand how YOU are saying this. You’re the one who brought up the CNC lathe. That lathe’s product is dependent on the arrangement of bits. There is a meaningful difference between arrangements which convey instructions to a machine and arrangements which convey information to a human.

            3. 12.1.2.2.2.3

              Greg, the nature of software is changing. It no longer is stored locally on locally accessible media, but is increasingly stored on cloud servers and downloadable as required. It’s going to be an interesting question as to whether a server located in Canada will infringe an American Beauregard claim.

              1. 12.1.2.2.2.3.1

                Ned,

                YOUR view omits the very first change to the local machine and allows the local machine to act as if any reconfiguration of that local machine need not happen except in some non-connected ‘land of magic.’

  5. 11

    It’s 2018 and the “new machine” argument cannot be killed. Configure a computer to do something different, and you have a different machine.

    The argument concedes that that the novelty must be in the configuration, because without the configuration change, the machine would have remained in its previous state.

    The arguers never (or rarely) concede that when the novel configuration change is entirely electronic, it has no corporal existence; the changes are properly characterized as a set of information.

    Considering the changes as a new arrangement of working parts is actually an additional abstraction- indisputably something in the mind, in the same way the working parts of a quadratic equation are in one’s mind.

    If that clear reasoning is conceded, that means novel information should be patent eligible, or at least someinformation.

    To the bright minds at this site: is information patent eligible?

    1. 11.1

      Because “electronic has no corporal existence

      Come back to THIS universe from your “it must be magic” universe.

    2. 11.2

      Martin, when asked directly, anon insists that the claims in Bilski were patentable subject matter. There is nary a computer involved in that claim. Thus information processing by itself is patentable subject matter for anon – and for that matter, for Night as well, because as he expressed it, the processing of information is a law of physics or some such.

      1. 11.2.1

        The conservation of information is the most important law of physics.

        It takes time, energy, and space to process information.

        Think of represented information as the grains in Deener.

      2. 11.2.2

        Ned,

        Your misinformation here was noted in a reply that has vanished (even from the “in moderation” buffer).

        Stop misrepresenting my positions. I have NEVER confused the Bilski case with any argument on “computers involved in that claim.”

        1. 11.2.2.1

          correction (and perhaps salvaged):

          Your comment is awaiting moderation.
          December 30, 2017 at 3:37 pm

          claims in Bilski were patentable subject matter. There is nary a computer involved in that claim.

          WOW – that is a complete fabrication – how you strung that together.

          And completely different than the point being made here that re-configuring in IN FACT involving actual physical changes.

          Otherwise – as you WOULD know if you actually were inte11ectually honest about the things that I have posted, you would be abel to use the patent doctrine of inherency in order to make ALL FUTURE re-configurations “already in there.”

        2. 11.2.2.2

          Folks, just to make a point here, when asked directly, anon affirmed his belief that the claims in Bilski were eligible.

          1. 11.2.2.2.1

            Your “point” is not a point – it is a non sequitur and a distraction at best.

            You are not starting the new year off well at all Ned.

    3. 11.3

      What is your education Martin? You don’t appear to have a CS/EE background.

      And, let’s remember equivalence. The machine could be a special purpose computer.

      And, magic, new functionality without new structure.

        1. 11.3.1.1

          So, as I suspected you are a self-taught software person. Please try to educate yourself. It is great that you learned to program and design software systems. But, you know very little about the theory of computation. You know very little about law.

          Take some classes at the local university.

          1. 11.3.1.1.1

            b-b-but he has had plenty of Slashdot/Techdirt indoctrination….

            (not to mention all the anti’s on these threads)

    4. 11.4

      Hopefully two quite separate comments in response.

      The first is a trip down memory lane, back to 1995, when Unisys asserted its US patent on the LZW compression algorithm (4,558,302).

      I can remember pondering how it could be, given my understanding, back then, that mathematical algorithms were not patentable, that such a thing as LZW compression, implemented on a general purpose computer, could be patentable. (I can remember the hillside, and the path up the hill that I was taking, at the time that I was pondering this question.)

      The conclusion that I came to at that time was that physical processes involving electrons scooting around in the memory and storage of general-purpose digital computers, especially multi-tasking computers rapidly switching between numerous distinct processes, and logical procedures representing the steps of a mathematical algorithm were distinct, with no correspondence between them: a single logical procedure would be implementable through numerous distinct processes, and conversely a single physical process could implement many distinct logical procedures. If one simply had data as to how signals were, shall we say, “propagating” in the registers, memory locations, etc. of such a busy computer, it would surely be a well-nigh impossible task to determine the “processes” and “programs” that were running on the computer at a given time.

      That, at any rate, is the conclusion that I came to back in 1995.

      On the other hand, hardware implementations would presumably implement the logical procedure though a well-defined physical process. And maybe certain low-level bit-twaddling software, or perhaps firmware, processes. Perhaps the subject matter of Diamond v. Bradley?

      1. 11.4.1

        Distant, I understand your quandary. Consider for a moment a computer that has an improved adder. That adder is typically composed of standard logic circuits including flip-flops. There is no invention at all in circuitry, just how they are connected logically. The real novelty is in the adder calculus as opposed to any particular circuit. If one claims the calculus, then any circuit that effects the calculus would be an infringement. But this seems proper because the invention is not in the circuitry, but in the calculus – the algorithm. And there is no question, at least the should be no question with a hardware implementation that an improved machine is being claimed.

        Thus in a way we have Benson redux. Is the result in Benson to be different depending on whether the implementation disclosed is by circuitry or by software? – What about micro-programming that is permanently made part of the machine? As it has developed, the courts are very clear that software implementations do not make a better machine (except in the context of a larger machine or machine process as in Alappat or Diehr respectively). But they have not considered whether a disclosed hardware implementation of the mathematical algorithm can be claimed mathematically in the context of an improvement to a computer.

        Manifestly, the Supreme Court in Benson believed it was dealing with software and said so. But would the result have been different if the claimed BCD->decimal algorithm had been implemented in circuitry?

        1. 11.4.1.1

          I see that Ned ends the year in the same old same old misrepresentation mode.

          composed of standard“…

          Hmm – take any of Ned’s “hard goods” cateogry items and switch his “logic” here with the “composed of standard Protons, Neutrons, and Electrons” and his position immediately FAILS.

          His “the invention is in” is nothing but muckery.

          He then gets even the Benson Court wrong (and on a point so very often put to him in the past – as I, at least, have been one to put TO him) with his “the Supreme Court in Benson believed it was dealing with software and said so” as the Supreme Court explicitly stated “We do not so hold.”

          Double this down with the FACT that Ned has in past conversations ADMITTED that the Supreme Court got claim 8 wrong (because hardware WAS present in the claim.

          Maybe 2018 will see some inte11ectual honesty from Ned.

          I will not be holding my breath.

          1. 11.4.1.1.1

            I must say, anon, that your reading skills are right up there, equivalent with your comprehension skills.

            The point I was making about Benson was that the court believed it was dealing with software and not hardware. Why else would it make a comment about software at all if it did not believe that it was dealing with software?

            In other words, the Supreme Court has not addressed digital circuits claimed, not in terms of their circuitry, but terms of their logic. My thinking here is that the Supreme Court will come differently.

            However, I would be more interested in hearing from somebody like it Distant than somebody that has a difficult time understanding simple concepts.

            1. 11.4.1.1.1.1

              The point I was making about Benson was that the court believed it was dealing with software and not hardware

              Which we BOTH know (or should know) is wrong.

              I have provided the direct quote from Benson many times now (“We do not so hold”).

              Do you need that quote again?

              I am NOT the one here having difficulty with simple concepts. I see that you are (once again) NOT going to make a difference in this New Year, as you are already channeling Malcolm and using his Accuse Others Of That Which YOU Do meme…

                1. You say that all the while continuing your own inte11ectual dishonesty.

                  The “four fingers pointing back at you” saying comes to mind with your whining, Ned.

        2. 11.4.1.2

          Re: Benson…

          I suggest that, with regard to Benson, it is instructive to peruse the prosecution history.

          Professor Hollaar, of the School of Computing at the University of Utah, has set up a website, called Digital Law Online here:

          link to digital-law-online.info

          I would be the last person to agree with many of Professor Hollaar’s policy positions, but I suggest that this website is valuable material, including in particular, the Transcript of Record, CCPA, Patent Appeal No. 8376, In the Matter of Benson and Tabbott. This is available here:

          link to digital-law-online.info

          (If my memory is correct, Professor Hollaar served as an advisor to the Hon. Randall Rader. I wonder whether, in his student days, former Chief Judge Rader took any of Prof. Hollaar’s classes.)

          The specification discloses a lot of electric circuitry, more than sufficient to embody a “reentrant shift register”.

          After some years of prosecution, with some original claims withdrawn and new claims added, the patent examiner rejected, at the penultimate stage, all the claims over two prior art references (see page 119 of the Transcript of Record):

          Gilbert, 3,019,426: link to google.com

          Couleur, 3,026,035: link to google.com

          Specifically, claims 1 and 7 were rejected as “fully met” (under 102) by Gilbert, claims 1, 2, 4, 5, 7, 11, 12 as “fully met” by Couleur (under 102), and claims 6 and 9 as “merely obvious modifications of Couleur” (under 103). In addition claims 1, 2, 6, 7, 8, 9, 11, 12, 13 were rejected as “non-statutory subject matter”.

          Note that not all claims were rejected as non-statutory.

          The applicants responded by withdrawing all claims with the exception of claims 8 and 13.

          Thus, to the extent that a “reentrant shift register” was nominally recited in claim 8 it was not a new invention, but prior art apparatus, such as that described in Couleur’s patent (priority date 1957, a decade before Benson and Tabbot’s application). Thus claim 8 is a method of manipulating “signals” on non-inventive apparatus, with steps of “shifting”, “masking out” and “adding”. And claim 13 was a data processing method, involving a “decimal digit representation”, “binary shift position” etc., and thus not on its face tied to any apparatus.

          Thereupon followed an extended recital of the Old Piano Roll Blues…

          So yes, the remaining claims 8 and 13 that were appealed were addressed as software claims, as any claims purportedly reciting inventive hardware circuitry had been withdrawn.

          Plenty of juicy stuff in the Transcript of Record to back up anyone’s entrenched position with regard to Benson.

          1. 11.4.1.2.1

            …and is it instructive to quote from the Court concerning its view on software: “We do not so hold“…?

            Then throw in their Diehr which is the opposite of your attempted takeaway with the attempt to partition out the reentrant shift register.

    5. 11.5

      Second, distinct observation.

      Consider the cDNA at issue in AMP v. Myriad.

      The District Court Judge, Judge Robert W. Sweet, had ruled that genomic DNA (gDNA) sequences “isolated” from human DNA were patent-ineligible as products of nature. As everybody knows, that was reversed by the CAFC panel (Lourie, Moore reversing, with Bryson in dissent) but SCOTUS reversed the CAFC, affirming the district court, at least with respect to genomic DNA.

      Now Judge Sweet had also ruled that complementary DNA (cDNA) was also patent-ineligible, on the grounds that it represented the same genetic information as the gDNA. The CAFC panel were unanimous in reversing the District Court on this, and SCOTUS affirmed the eligibility of cDNA.

      To the extent that “snipping was necessary”, the gGNA was typically “snipped” from chromosomes. (After the CAFC panel, in their opinions, had brought “snipping” into the picture, the SCOTUS brief of AMP et al. drew the attention of SCOTUS, in a footnote, to the existence of gene fragments, already “snipped”, to be found in nature in the form of, for example, cffDNA in blood serum, citing the papers of Dennis Lo at al. Thus human agency was not a prerequisite for “snipping”.)

      Now the cDNA contains only the exons of the gDNA, omitting the introns. (I trust that I have got this right – checked on Wikipedia). Thus cDNA is, in general, chemically distinct from gDNA.

      Surely implicit in SCOTUS’s ruling that cDNA, unless chemically coinciding in short fragments with gDNA, is artificial, and does not fall under the “product of nature” exception, is the proposition that the “information content” of the DNA does not affect the determination of whether or not that DNA is a “product of nature” for purposes of 101 jurisprudence.

    1. 10.1

      Albert Einstein’s CV also wouldn’t mention a single day working as an engineer (grad school -> patent examiner -> academic)… Same with the CVs of a large number of other highly influential, extremely smart academics…

  6. 9

    I agree with Ted Field’s position that the preferred usage among practitioners refers to “limitations” of claims and “elements” of accused devices (or prior art structures). See Mueller on Patent Law sec 16.01 n.2 (citing Dawn Equip. Co. v. Kentucky Farms Inc., 140 F.3d 1009, 1014 n.1 (Fed. Cir. 1998); Perkin-Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1533 n.9 (Fed. Cir. 1987)). Admittedly both courts and practitioners use the two terms interchangeably. The Patent Act itself is not clear (compare sec 112(d) (“limitations”) with sec 112(f) (“element”). Much more troubling (and inaccurate), however, is the Circuit’s (and the Supreme Court’s) practice of referring to claims (or limitations thereof) as “describing” the invention (or an aspect thereof). That’s not the purpose of claims; it’s the role of the rest of the specification.

    1. 9.1

      Delighted to see a real, longstanding, patent law expert substantively contributing in this blogs comments section.

    2. 9.2

      To describe the invention is the role of “the rest” of the “specification”, and not what the claims are for. Under the EPC, that part of a patent application that is in writing and comes before the claims is indeed dubbed the “description”. What is it called, please, under the USA’s patent statute?

      I ask because I had always supposed that a US patent application had i) a specification ii) drawings iii) an abstract and iv) claims. I had not realised that the claims are part of the specification. Are they really?

      Another question: What is the function of the claims? Is it (as in Europe) to “define” the invention?

      1. 9.2.2

        Hi Maxdrei: In the U.S. Patent Act, 35 USC 112(b) requires that “[t]he specification shall conclude with one or more claims . . . .” I’ve always taken from that wording that the specification of a U.S. patent includes the claims.

        In my view, the claims define or set the literal boundaries of the scope of the patent owner’s right to exclude others from practicing the claimed invention. The right to exclude may not be co-extensive with what the inventor thought was her invention, particularly after the patent prosecution process. So I don’t think of the claims as “defining” the invention (and certainly not “describing” it).

        The preferred usage in the U.S. is to speak of claims “reciting” certain limitations, not “describing” the invention or parts thereof. The remainder of the specification (i.e., written description and drawings) provides the “description” of the invention, which description has to satisfy, inter alia, our enablement requirement–how to make and use the claimed invention without “undue experimentation.”

        1. 9.2.2.1

          Thanks Professor Mueller. Where I’m coming from is Rule 43 of the EPC which stipulates that the claim shall “define” the subject matter for which “protection is sought”. Its function after issue is, of course, the same as in the USA, to define the scope of protection afforded by the duly issued patent.

          The American specification concludes with the claims, as you write. What comes before the claims is, as you write, a written description. Under the EPC, that part is dubbed the “description”.

          S 112 states the function of the claim as being to “particularly point out” and to “claim” the subject matter. Bit of a no-brainer, that. What other purpose is there to a claim than to claim something.

          And yes, it rarely happens, that what the inventor thinks she has invented is what ends up being “claimed”. I recall a cartoon showing a swing hanging under a branch of a tree., a sequence, showing how the swing changes through the stages of progress from conception to issued patent. Very funny!

          1. 9.2.2.1.1

            Hit the send button too quick. I’m stopping now. Champagne time soon, over here. Happy New year to you, anon, and all readers.

        2. 9.2.2.2

          Janice, while the claims as-filed certainly are part of the specification and can provide written description support, especially that part of the written description requirement that requires the inventor to describe his invention, it is not clear to me that the claims as amended can be considered part of the specification because if they are not supported in the specification as originally filed, they are invalid over § 112(a). Moreover, if they claim subject matter not disclosed, not only do they have § 112(a) support problems, they also potentially have §132 new matter problems.

          Also considered that the early patent statutes separated the claim from the description. The claim was made in a petition, and the patent was granted on the petition or upon a brief description of the invention in the grant. Presumably, the government would draft at least approve the brief description of the invention. A specification describing invention in detail and how to make and use it had to be filed separately.

          In the case of Evans v. Eaton, the Supreme Court decided that the specification had also to distinguish the old from the new. Thus the patent would have a petition, a grant briefly describing the invention, and a specification that also had to describe what was new v. what was old. I think the brief description morphed into what we now call an abstract.

          All this gave way to the system we now have that was “invented” in the patent act of 1836 that first required claims and an examination thereof.

          1. 9.2.2.2.1

            In the case of Evans v. Eaton, the Supreme Court decided that the specification had also to distinguish the old from the new.

            You are aware of course that this is technically NOT true, right Ned?

            An Inventor is under NO requirement of law to discuss the old.
            At all.

            In fact (as I have ALSO mentioned to you long, long ago), DOING THIS can even rise to the level of irresponsible prosecution, given the COURT-induced patent profanity that exists.

            1. 9.2.2.2.1.1

              You mean, anon, that the Supreme Court is again wrong and that you are once again right just because you say so?

              1. 9.2.2.2.1.1.1

                No Ned – this has nothing to do with the Supreme Court being wrong in the comment of yours here at 9.2.2.2.

                Maybe YOU should try for some reading comprehension and try to understand exactly what my reply is stating.

                You do know (right?) that one is NOT required (by law) to actually discuss the prior art in a patent application (I really do hope that you recognize that fact).

                1. Anon, to the extent that the claims particularly point out the invention, they may serve to distinguish between what is invented from what is known.

                  However, the Federal Circuit has held (Ariad ) that the written description requirement is a requirement upon filing. Thus, the invention ultimately claimed must be described as an invention in the specification as filed, even if it is only described the claims as filed.

                2. to the extent that the claims particularly point out the invention, they may serve to distinguish between what is invented from what is known.

                  There is a world of difference between “the specification had also to distinguish the old from the new” – as in discussing the old and whatever is in the specification being able to be distinguished from whatever art anybody else comes up with.

                  As to your new attempt to switch the topic to a an Ariad “possession,” that’s all nice and swell – BUT NO ONE IS TALKING ABOUT THAT.

  7. 8

    courts should award damages to solo inventors for noneconomic harm resulting from patent infringement</i.

    This is a laugh riot, by the way.

  8. 7

    It is not just pain and suffering for independent inventors fighting for their rights.

    The time and energy that is robbed from independent inventors represents time and energy that they will not have to invent more new and useful inventions.

    An independent inventor who gets a patent has shown that he/she is a person having more than the ordinary skill in the art and it is reasonable to believe that he/she has even more to contribute to science and the useful arts. That is robbed when companies force us to fight for our rights in what is hardly a level playing field.

    1. 7.1

      Not to endorse the inefficiency of patent litigation, but rather ironically, I used to get similar complaints from managers and engineers of companies being sued for patent infringement: that all their required document discovery and deposition activity was taking away time they needed for business decisions and new product development.

    2. 7.2

      “An independent inventor who gets a patent has shown that he/she is a person having more than the ordinary skill in the art”

      The only thing having a patent necessarily shows is that you had the money and a pulse.

      1. 7.2.1

        Ben,

        As you being an examiner, I have to wonder if you recognize the self-deprecating nature of your comment…

    3. 7.4

      The time and energy that is robbed from independent inventors

      Because it takes weeks and weeks of sweat and hard work to come up with “request access code.”

      You guys are p@ thetic.

  9. 6

    different types of abstract ideas should involve different jurisprudential approaches.

    That sounds very familiar (and correct).

    1. 6.1

      I agree completely. Information consumed by persons is  always 100% abstract. Inventions described by functional or aspirational terms are a different kind of abstract.

      How about some pain and suffering for business owners drawn into years-long and business-destroying nightmare of meritless patent litigation?

      Oh, there is no such thing as meritless patent litigation. If the office issued it, it must be valid.

      1. 6.1.1

        meritless you say…

        Maybe you missed 35 USC 282.

        Let’s check.

        Yep. You sure did.

        (and your snark with “must” is simply misplaced, as you would know if you grasped the actual law).

        1. 6.1.1.1

          Let me add for new readers, that your own personal feelings get in the way here and that you “advanced” the notion that the item for which you had personal involvement with (being sued) was something that you “felt” was not “legit” because you had independently invented the item (or so you claimed), and that your real grief was that you did not bother patenting (or otherwise publicly sharing “your” invention while someone else did, and then that someone else “made you pay.”

          You neglect – with your single-mindedness on your own feelings – that the patent system was designed to “make you pay” in such circumstances and that a “best practices” STRONG patent system has both a carrot and a stick aspect.

          1. 6.1.1.1.1

            Because using a computer for its intended purpose requires that you be continually harassed by the worst @ h0les on the face of the earth.

            It’s just the way it is, folks! “anon” is here to tell everyone.

            Maybe he’ll try to sell you some “insurance” next. He’s a very very serious person.

            1. 6.1.1.1.1.1

              Your “intended purpose” rings of the Big Box of Protons, Neutrons and Electrons “Logic.”

              Or maybe you want to try to recognize the patent doctrine if inherency…

            2. 6.1.1.1.1.2

              That means that every invention that uses a mechanical gear (or a lever) is obvious because the invention is simply using the mechanical gear (or lever) for its intended purpose.

              And no, MM, *you* are one of the worst @ h0les on the face of the earth.

              Why don’t you go back to your old job, cleaning toilets in the Kremlin?

          2. 6.1.1.1.2

            You know my hands are tied I will never, ever comment on that particular case. Of course, if you were not a lazy pedant, you could go read the docket yourself and thus have some idea of what you are talking about, but I suppose that really only matters to normals anyway.

            The people deeply harmed by a flotilla of bad patents in the last 20 years dwarfs massively the handful of inventions with real inventions who have been harmed. Massively. Just look at the gross sales of the litigation bar v. the prosecution bar. Will tell you all you need to know.

            1. 6.1.1.1.2.1

              perhaps salvaged:

              Your comment is awaiting moderation.
              December 29, 2017 at 7:06 pm
              Hard numbers tell a very different story vis a vis the amount of patents versus the, what, less than half a percent that are actually brought to suit?

              (and your ‘lack of comment’ comes from your own voluntary agreement – that does NOT negate the emotion that drives your view on patents.

        2. 6.1.1.2

          “the actual law” <— pretty rich coming from the person who is most reliably wrong about every important issue in the business

          Also a well-known path 0 l0 gical l i @r, right up there with the ment@ lly defective Perznurt Pumpkinhead who "anon" somehow found indistinguishable from the other candidate. Go figure.

  10. 5

    I found Gocha’s article unhelpful and rather unsatisfying.

    Perhaps the tip-off should have been the use of the word “ontological.” Generally, the article presupposes that all of the Court’s (and courts’) moves have been sound and then tries to “word-smith” a coherent “justification.”

    But such is not the correct path forward and would do a DIS-service by attempting to “cement in” the errant moves of the non-legislative branch.

  11. 4

    Dennis, I haven’t read the article on figuring out abstractness, but your description of the article tells me that the author has no clue. Even from the oral argument in Alice, one could see that what the court was looking for was something technological – something in the four classes – that was inventive. If the novel subject matter is not related to technology, then it is not directed the statutory subject matter and is by definition – from Bilski – directed to abstract ideas.

    1. 4.1

      Do you think that processing information is technological Ned?

      (Please try to actually answer this question.)

      1. 4.1.1

        As I said, Night, I use the term that the logical and shorthand for being a new or improved machine, manufacture, etc. Necessarily, merely processing information, facts, which is entirely mathematical in nature, cannot be an advance in technology so defined.

        1. 4.1.1.2

          Ned, that is just ridiculous. You are saying that a machine that performs the task of a judge is not an improvement in technology.

          I cannot believe that you really believe that.

    2. 4.2

      Ned, “technological” may be the test in the EPO for patentable subject matter, and may control, in practice, many Alice-101 case outcomes here these days, but it is not an actual legal test for “abstract.” And the Sup. Ct. majority refused to hold business methods to be per se unpatentable subject matter.

      The article author’s definition of “inherently abstract” as “preexisting fundamental truths” sound to me more like “laws of nature” or “physical phenomena,” which are the OTHER two Sup. Ct. declared areas of unpatentable subject matter besides “abstract ideas.”

      1. 4.2.1

        Paul, the ultimate search is for an invention in the four classes. I use the term “technological” as shorthand. The four class originated in England as “manufacture.” Federico restated the intent of 101 in ’52 as any manufacture made by man is the stuff of patents.

        Part II of the Alice test is ultimately determinative for the kind of abstractness present in Bilski. The reason the claims there were labelled abstract is because a business method (math) is not a new or improved manufacture (machines, articles or compositions or a related process). The problem is that the court did not explain itself. But one can infer its reasoning from what it did and the cases it relied on from Bilski, Mayo, Myriad and Alice.

          1. 4.2.1.2.1

            “processed information” is an unhelpful oxymoron.

            I “get” what you are trying to say – but information – in and of itself, processed or unprocessed is NOT what software is.

            All that you will do here is confuse matters and give the anti’s some “ammunition” as they do not understand the physics as you discuss them.

          2. 4.2.1.2.2

            Then processed information is a raw or prepared material, legally speaking. So yes, finally, you flat-out admit your position:

            Information is patent eligible.

            Now we can move along to the next question.

            What should the criteria be for patentable information?

            It can’t just be limited to new and useful, can it?

    3. 4.3

      Ned’s latest (but still wrong) kick: “technological” is short hand for the four statutory classes.

      This is simply wrong in so many ways, and lacks any tie to any foundation that Ned should simply stop using this tripe.

      Instead, what we are bound to see is a million plus iterations (or in the world of propaganda, as it is known: repeat a L I E often enough and it gains the semblance of truth).

  12. 3

    Re Lemley’s “Roughly one-third of all patent licensing efforts among our survey respondents end in litigation, significantly less than the 10% some had predicted.”

    With many years of observations on that subject, that 33% to 10% varies widely due to several important factors. First, did the company being approached by the patent owner do a really thorough invalidity and/or infringement study, AND present those study results to the patent owner? Or, just blow them off? The former is assisted by maintaining good files of prior product information, especially dated & (c) service manuals.
    Secondly, was the patent owner a reasonable actual company open to pre-suit cross-licensing, or reasonable-royalty licensing, or was it an NPE?
    Thirdly, is the patent being offered to be licensed for a new or improved product, or is it being asserted as infringed by existing products? In my observation, the latter has greatly proportionately increased in the last 1o or so years.

    1. 3.1

      Anyone who quotes anything from Prof. Lemley is sadly misled. Lemley’s vaniety pieces are not worth reading.

  13. 2

    Isn’t a “a constituent part of an accused device” more clearly [especially to a jury] called a component or “part”?

    1. 2.1

      The Sup. Ct. recently in Samsung v. Apple used the term “a component of that product” for the design patents infringing products parts [not “elements”] and that was re the key issue in that decision.

      1. 2.1.1

        Egads, let’s not presume MORE interaction between design and utility patents – that area already is a legal backwater.

        1. 2.1.1.1

          Design patent law is more of a legal quagmire than a legal backwater, and one reason is not applying the same, current, infringement, 103, and 112 requirements and standards, even though they are under those very same statutes.

          1. 2.1.1.1.1

            The “one reason why” is NOT because “they are under those very same statutes.” it IS because those should never have been attempted to be placed under the very same statutes in the first place.

            When you do not understand that, your posts will only lead into MORE quagmire, not less.

  14. 1

    The obvious answer is “no it is not going to happen” to “Should Courts Award Pain and Suffering Damages in Patent Infringement Cases?” But if you want a good example of individual inventors who may have deserved it there is all the years Col. Armstrong’s patent infringement suit for FM radio was stalled off by legal delaying tactics until he finally committed suicide. That may have been before awards of pre-judgement interest were added to infringement damages awards? That is at least some punishment for such delays.

    1. 1.1

      BTW, other versions of the Robert Kearns story are not as flattering, and include reports that he thought he really didn’t need attorneys for patent lawsuits even after it took attorneys to finally win his first case. Also, if had better advice he would not have picked Ford to sue first, a company that then had a longstanding reputation ever since the George Seldon patent for fighting patents of others to the bitter end rather than paying for a license. A good example of that from the 1960s was their losing expensive battle against the Randsburg electrostatic spray painting patents saving everyone a fortune in automobile and truck paint costs.

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