by Dennis Crouch
Aatrix Software, Inc. v. Green Shades Software, Inc., 2017-1452, 2018 WL 843288 (Fed. Cir. Feb. 14, 2018)
Following upon its February 8 decision in Berkheimer, the Federal Circuit has again sided with the Patentee on eligibility grounds – holding here that the lower court’s judgment on the pleadings failed to consider disputed issues of material fact. Prior to this pair of cases, it was unclear whether eligibility analysis involved factual questions. Although pair of cases indicate a precedential sea-change, both opinions were written by Judge Moore and joined by Judge Taranto (Berkheimer was also joined by Judge Stoll). Here, Judge Reyna dissented, writing:
I respectfully disagree with the majority’s broad statements on the role of factual evidence in a § 101 inquiry. Our precedent is clear that the § 101 inquiry is a legal question. In a manner contrary to that standard, the majority opinion attempts to shoehorn a significant factual component into the Alice § 101 analysis.
Reyna in dissent.
The divide among the court is now quite clear — what is needed is an en banc consideration of the issues. Failing that, we will continue to muddle and err.
Going back to the majority opinion, the court explained the setup:
- Plaintiff filed complaint alleging patent infringement;
- Defendant motioned for dismissal on the pleadings — asking the court to declare the asserted patent ineligible as a matter of law;
- Plaintiff filed a motion to amend its complaint to add specific allegations of fact directed to step-two of the Alice/Mayo inquiry — attempting to setup a material factual dispute that could not be resolved on the pleadings;
- District Court found the patent claims ineligible; refused to allow the amended complaint; according to the court the amendment would not have made any difference – would not have manufactured a factual dispute – since eligibility is a pure question of law.
- On appeal here, the Federal Circuit has vacated the judgment — holding that the complaint raises factual disputes that must be resolved prior to ruling on the eligibility issue.
The majority writes here:
[The Federal Circuit has previously] held that patent eligibility can be determined at the Rule 12(b)(6) stage. This is true only when there are no factual allegations that, taken as true, prevent resolving the eligibility question as a matter of law.
. . .
The district court granted this Rule 12(b)(6) motion without claim construction. We have some doubt about the propriety of doing so
in this case, but need not reach that issue because it did err when it denied leave to amend without claim construction and in the face of factual allegations, spelled out in the proposed second amended complaint, that, if accepted as true, establish that the claimed combination contains inventive components and improves the workings of the computer.
Moore majority opinion.
Following the majority opinion, some plaintiffs will now look to the patentee’s proposed proposed amended complaint as one roadmap establishing a factual dispute sufficient for a patentee to overcome a motion on the pleadings. In particular, the complaint alleges a novel data importation scheme that is database independent and that “eliminat[es] the need for hand typing in the values.” Further, the complaint alleges that the result is “increased the efficiencies of computers processing tax forms” and “saved storage space” on the computers.
Although not proven, Judge Moore suggests that – if proven – these allegations would leave the asserted claims patent eligible since they are “directed to an improvement in the computer technology itself and not directed to generic components performing conventional activities.” Judge Moore then goes on to explain that these allegations are factual allegations rather than conclusory legal allegations and must be given due process according to the rules of our legal system. The majority opinion also claims the following:
Whether the claim elements or the claimed combination are well-understood, routine, conventional is a question of fact. And in this case, that question cannot be answered adversely to the patentee based on the sources properly considered on a motion to dismiss, such as the complaint, the patent, and materials subject to judicial notice.
This quote sets-up the potential en banc case: To what extent does eligibility involved factual disputes; to what extent should extrinsic evidence be available to prove those facts? For patent litigators, these questions look strikingly similar to the decades old dispute over the proper approach to patent claim construction. It is easy to see eligibility following in the same line of reasoning seen in Teva and Phillips that allows for full judicial but opens the door to potential (but often not required) factual findings regarding extrinsic evidence.
Last note here — The claims at issue are claims 1, 2, and 22 of U.S. Patent No. 7,171,615 (“’615 patent”) and claims 1, 13, and 17 of U.S. Patent No.
8,984,393. These patents cover really simple tax prep forms that I expect the Supreme Court would eat for lunch.
Comments 6 and 5.2 were sidetracked by Malcolm’s mindless ad hominem, and comment 2 saw no reply whatsoever.
But the view of “The divide among the court is now quite clear — what is needed is an en banc consideration of the issues. Failing that, we will continue to muddle and err.” remains rebutted.
Reading (again) the dissent in part, I see:
– NO cogent establishment of a “divide among the court,”
– NO development of issues that would require en banc consideration, and certainly,
– NO indication that the factual predicate – being given its due weight – would cause ANY type of “continue to muddle and err.”
To even get to needing an en banc decision, we would first need another panel decision that directly conflicts with the series of cases here – and does so in a cogent and legal manner (and NOT simply from one panel merely disregarding the binding effect of an earlier panel).
I look forward to any such decision, and then applying critical thinking to that decision.
Otherwise, let’s keep the anti-patent bias down to a dull roar.
To anon,
‘Reading (again) the dissent in part, I see:
– NO cogent establishment of a “divide among the court,”’
Respectfully, Reyna does not believe that certain factual inquiries require evidence while the Aatrix majority and the Berkheimer panel do. FWIW, I’ve talked to the attorneys who won each of those cases, and they recognize the divide in the courts.
There is a group of us organizing to file amicus briefs on behalf of Berkheimer and Aatrix on the very issue you do not believe exists. I don’t mean to badmouth you in any fashion – I just respectfully assert that you are mistaken.
Is this really an en banc worthy issue? As it stands with this decision, the DCT simply needs to entertain some fact finding and then issue an opinion. It isn’t a case that fundamentally alters any rights.
If the only “harm” to the moving party is a little more briefing before getting the ultimate DCT opinion, I don’t see how this is an issue that warrants an en banc opinion.
Aren’t there many more worth en banc issues than this?
“Is this really an en banc worthy issue?”
I assure you, there is a great need for an en banc decision. Until that happens, PTO examiners and APJs alike will continue to deny the need for evidence by, for example, citing Electric Power Group and the vast host of other idiotic decisions where no evidence was considered necessary.
Ray, I do not think what you are suggesting could provide 101 decision at the preliminary 30(b)(6) motion stage, and even 101 summary judgment might be precluded absent at least a partial trial to decide contested extrinsic facts as to what is “well known and conventional.” I.e., much more expensive patent litigation, more and larger settlements, hence the significance of these two new Fed. Cir. decisions.
On the other hand, perhaps the INTRINSIC evidence of the specification could be a determinant in some cases? Merely alleging that a claim element is NOT well known and conventional seems inconsistent with not having any enablement at all for it in the specification?
see comments concerning Protons, Neutrons, and Electrons…
Well, I disagree. Nothing in this opinion requires any partial trial. The 101 question is an issue of law, and the Court can handle all the factual consideration with a briefing schedule – much like a venue determination.
If the bar for an en banc worthy issue was whether or not the PTAB or examiners would consistently apply Fed.Cir. law, then I dare say most of the opinions should be heard en banc…
Unsure what your reference to a “30(b)(6)” motion stage is. In my rule book, 30(b)(6) deals with depositions of a company. Is that a typo of some sort? No company depo is needed to determine the relevant facts for this issue.
“The 101 question is an issue of law, and the Court can handle all the factual consideration with a briefing schedule – much like a venue determination.“
Yes. All you need to do is rewrite the Federal Civil Rules of Procedure for every court in the country. Maybe a rule of evidence or two. Hey, who needs juries to determine issues of fact?
wut?
Venue, jurisdiction, indefiniteness, enablement, license…are issues of law based on fact that don’t require a jury trial.
101 falls right in line with these. No modification to the rules necessary.
“Venue, jurisdiction, indefiniteness, enablement, license…are issues of law based on fact that don’t require a jury trial.”
Hate to break it to you but indefiniteness and enablement are often contested and can require a jury trial based on the viewpoint of one of ordinary skill.
That said, we need YOU to make 101 factual findings, because you absolutely know what is and is not well-understood, routine and conventional. Hey, who needs FRE 702 in a patent case anyway?
Oh, Judge Moore called. She said: link to cafc.uscourts.gov
101 falls right in line with these. No modification to the rules necessary.
Jury trial is not required to adjudicate these issues, even if they are contested.
Yes, most judges will submit the issues to the jury, but the Court isn’t bound by the jury’s advisory decision.
Judge Moore didn’t say otherwise.
Whether or not juries get to hear “issues of fact” depends upon the nature of the item being adjudicated.
Make that item into a “public right” as opposed to a “personal property,” and you eliminate that whole “jury” thing, eh?
(and before Ned gets his undies in a bunch, Ned – this is NOT my view and merely reflects the [very active] view of a contingent of anti-patent “folk”)
B, you seem to miss what it means for something to be an issue of law and what factual findings a jury must decide.
Yes, juries are often submitted ultimate issues of law to answer on a jury form. If you think that makes that issue binding, you may want to get a refund on you law degree.
As Ned points out in another comment, issues of law may have factual issues that need a jury to answer – that does not, however, make the issue of law one for the jury.
Btw, you may want to read Markman for the Supreme Court to give you guidance on how claim construction is an issue of law, albeit with some factual findings based on intrinsic evidence and the knowledge of a person of ordinary skill in the art.
Please inform us on how often since Markman has a claim construction issue been submitted to a jury?
Attacking other based on your lack of understanding of the law doesn’t make you right. You may want to consider others here may actually have more experience and knowledge than you…
“B, you seem to miss what it means for something to be an issue of law and what factual findings a jury must decide.”
No, unlike you I actually know what I’m talking about.
Ray, the 101 issue is an “issue of law.”
However, if the ruling is that the subject matter claimed is not within 101, the patent is invalid. The 101 issue is a species of patent validity. As we all know, disputed issues of fact regarding patent validity are triable to a jury as a matter of constitutional right.
Issue of law are strictly issues that have no disputed facts.
Issues for the court are issues for which no right to a jury trial ever existed: procedural issues, claim construction, equitable issues that require balancing of harm and fairness.
If you disagree with any of this, please explain.
‘Ray, the 101 issue is an “issue of law.” . . . Issue of law are strictly issues that have no disputed facts.’
Where to even start on this nonsense?
First, get a law degree.
Ned, 101, enablement and obviousness are “issues of law.” While there may be some underlying facts that could be triable to a jury, the ultimate issue is not an issue for the jury to decide. A jury may be asked the ultimate issue, but it is actually the Court’s later issued judgment that decides that issue.
This is actually an important point regarding res judicata if the case is dismissed after verdict and prior to the Court issuing a judgment – been there in that battle…
I also disagree with you that issues of law are strictly issues that have no disputed facts.
For more discussion on it, you may want to review
Kinetic Concepts and Wake Forest University v. Smith & Nephew (Fed. Cir. 2012).
Ray, and for the under-educated B as well, let us talk fundamentals.
There are issues for court and issues for the jury. The jury decides facts. The court decides law But it is the court’s job to instruct juries about the law in considering facts that they decide the ultimate issue, which is a mixed question of law or fact.
When there are no substantial facts in dispute, a matter can be resolved as an issue of law.
When a matter has triable issues of fact but never-the-less is decided by a court, we say the issue is one of law, when it really is one for the court as there can be disputed facts.
Take obviousness. The Supreme Court said that it a question of law based on triable issue of fact. Did they really mean that the jury should not be given the issues to try? If they really meant this, they should have been clearer.
Before 1791, all disputed issues of fact involving patent validity or infringement were decided by juries, with the court instructing the jury on the law. Thus, to the extent that the Federal Circuit refuses to let a particular validity issue go to a jury based on its labeling that issue one of law, it ignores the constitution. The only exception to this rule to date has been claim construction that the Supreme Court could find no pre-1791 support for giving the issue to a jury. I think they were wrong in this as issues of construction were commonly given to juries when validity and infringement were at issue.
Back to 101, clearly it involves an inquiry into whether the otherwise eligible subject matter in a claim is inventive; and this, like obviousness, involves questions of fact. No doubt 101 cannot be an issue for the court because validity including inventiveness is an issue for the jury.
“Ray, and for the under-educated B as well, let us talk fundamentals.
There are issues for court and issues for the jury. The jury decides facts. The court decides law But it is the court’s job to instruct juries about the law in considering facts that they decide the ultimate issue, which is a mixed question of law or fact.”
Ned, you prove your vapid nature on a daily basis. What the heck do you think I’ve been arguing? EXACTLY what you stated. Seriously, you have mental issues.
“I also disagree with you that issues of law are strictly issues that have no disputed facts.”
Ray, on this we can agree. For example, if a complaint fails to recite all the elements of a tort, then the complaint may be dismissed as an issue of law regardless of any other facts at issue. Also, if there is a statute precluding the tort, the complaint may be dismissed as an issue of law.
Paul,
Regarding your comparison of “conventional” to enablement, I agree that they are similar in that you “may” need to look beyond the specification to the knowledge of a person of ordinary skill in the art to understand whether something is actually enabled or is conventional.
You may consider reviewing the Atmel decision regarding indefiniteness for how the factual issues underlying an indefinite charge rely on factual considerations requiring expert testimony.
I think this is exactly the approach 101 is going to encounter – in some cases. In other cases, the Court will be able to perform the necessary factual considerations from the specification – akin to judicial notice of conventional things. e.g. buy low, sell high is pretty conventional and doesn’t require expert testimony.
“In other cases, the Court will be able to perform the necessary factual considerations from the specification – akin to judicial notice of conventional things. e.g. buy low, sell high is pretty conventional and doesn’t require expert testimony.“
I once had a Judge take judicial notice that an act that happened in 2011 was adjudicated in a court in 2009? That said, for the 99% of cases were the specification is not filled with self-damning statements, and where there are facts not appropriate for judicial notice, your proposals fail.
It’s not my proposal. It is what the Courts are doing right now.
“It’s not my proposal. It is what the Courts are doing right now.”
Respectfully, yes and no. They weren’t taking judicial notice – they were merely assuming facts ipse dixit without giving patent holders an opportunity to be heard under FRE 201(e). The district court judge in Aatrix refused to even allow evidence in. He knew everything about the underlying technology, and didn’t even need a technical degree. Jimmy Reyna is similarly gifted.
Good discussion points B and Ray.
Of course, this brings back into focus the fact that in the first instance of examination, an examiner is very much constrained as to what and how she may make any such “official notice” in regards to.
For example (and it bears repeating): examiners may not take Official Notice in any way to establish the state of the art.
And this is precisely what is happening when an examiner – with no evidence – makes the bald conclusory statement that anything is “generic” or “conventional” as the support for the factual underpinning in a 101 analysis.
Two additional nuances here:
1) whether or not the equivalent of “judicial notice” could be taken – in general – (the buy low, sell high situation), the constraint prohibits that equivalent of “judicial notice” for the purpose stated – it does not matter if the equivalent of “judicial notice” is correct – it may not be used in that situation.
2) the bar – or level of what is being proven by the required evidence is a higher one than mere “presence” (novelty) or even similarity (obviousness). “Conventional” means more than just “there” and requires the widespread adoption of the item. Arguments and evidence thereof that may be sufficient for a 102 or 103 position are not necessarily adequate for a 101 factual underpinning.
The ultimate take-away from Green Shades, imo, is to plead facts in the complaint supporting the 101 validity.
At the 12(b)(6) stage, the Court is forced to takes the facts alleged in the pleadings as true. As such, even if there is something the Court could take JN of – it can’t in the face of facts in the pleadings.
While the patent holder may just be kicking the can down the road, because the 101 analysis requires “some” factual findings, alleging such facts in the complaint “should” forestall adverse rulings on the pleadings – and will likely become the new norm.
Just calling balls and strikes
Ray, but if one contends that the alleged invention improves the functioning of a computer or computer system when it plainly does not, what then?
Thanks Ray – I do not disagree with you (merely emphasize a different part of the battle)
“when it plainly does not”
Oh please, Ned – not your canard of “just use” (while simultaneously somehow – “by magic” – your NON-CHANGED computer can “obtain” the new functionality that only comes from the software component…)
Ned – you need to adhere to a minimum level of inte11ectual honesty in this conversation.
@Ned,
If the facts are pled in the pleadings and one disagrees with the facts, the response is first to deny them in an answer.
Next, develop the facts in litigation.
Then, file a motion for summary judgment.
Pretty much the same process when you think the patent is invalid because of a 103 or 112 issue…
Reyna’s belief expressed in his dissent is not reflected in any other court cases (he cites none for supporting his beliefs).
I do not see a divide among the court.
I see one person expressing a dissenting opinion in one case.
Are you aware of any other cases within the CAFC that actually is on point discussing this very issue?
(I ask in this particular manner so as to distinguish other cases that may have come to other conclusions but have not actually addressed the point explicitly – other cases “by inference” do not – cannot – cogently establish the divide.)
“Reyna’s belief expressed in his dissent is not reflected in any other court cases (he cites none for supporting his beliefs).” Yep.
“Are you aware of any other cases within the CAFC that actually is on point discussing this very issue?” McRo v. Bandai (Reyna holding for patent eligibility for lack of evidence supporting Nintendo’s assertions that certain claim limitations were well-known, routine and conventional)
LOL – I meant in opposition to this current trend – you know, something that would actually “set the divide” and mot something that shows that Reyna is beginning to recognize the unraveling of the “no facts needed” mantra.
None in opposition then?
That rather proves my point, does it not?
Respectfully, no. Two weeks doesn’t make a “trend,” and the CAFC has an annoying habit of ignoring limitations and asserted advantages they feel entitled to ignore. Judge Linn commented upon this in his dissent in Smart Systems.
I will grant you that the CAFC is run poorly in how they allow different panels to ignore the binding effects of previous panels.
I will also grant you that “two weeks” makes a rather week “trend.”
I will further grant you that the combination of these two things leaves a high degree of uncertainty for future decisions (and the “luck of the draw” aspect remains not only for the factual predicates, but for the larger picture of the legal aspects of 101.
But my point proven here is that the pronouncement of Reyna’s dissent somehow “sets the divide” is false.
No divide has been set. Let’s see a true decision in direct opposition on the explicit point before we make that “set the divide” statement.
Read again my post at 13. That post remains entirely accurate.
Respectfully, there is always some level of uncertainty for almost all cases. Rarely are any two cases squarely the same.
Having some uncertainty, alone, does not warrant an en banc decision. There needs to be a true split.
I believe the “trend” we are seeing is 101 can be handled on the pleadings unless there is an actual dispute whether something is conventional and therefore needs some fact finding to support a decision.
So far, I am unaware of any case that says you never need any fact finding or any case that says you always need fact finding. This is entirely consistent and the reason why as anon states, there is no divide.
Dennis, is the decision that is the subject of this blog AATRIX SOFTWARE, INC. v. GREEN SHADES SOFTWARE, INC.? (Fed. Cir. 2/14/18) [I did not see it cited in the blog.]
It definitely is
Anyone already reading the opinion would likely know the answer to the question provided, so perhaps the question was more to generate a link…
Here is the link: link to cafc.uscourts.gov
now added, thanks.
Even if the “conventionality” of otherwise eligible (but old) claim elements was some sort of “eligibility test” (and it’s not, because such a test leads to absurd results) it’s not up to the challenger to prove “conventionality”.
It’s up to the patentee or applicant to prove that there is “significantly more” recited in the claim beyond the ineligible subject matter. “Conventional” is just a base line for complete failure.
Of course, we all know what “significantly more” means. It means the recitation of novel non-obvious physical structure or physical transformation, recited in objective structural terms, sufficient to distinguish the claimed invention from the prior art on that basis. Anything less than that is a failure.
This is also why eligibility issues can arise at any time during the course of challenging a claim. There was never any reason — and there will be — for requiring that it be carried out first (i.e., before the 102/103 analysis). In some cases it will be most efficient to do it that way; in other cases it will be less efficient to do it that way (in which case it should be done another way). Basic stuff.
And in case for some reason it’s still too difficult for some readers to follow, look at it this way.
If a series of combined steps/elements are obvious, you can’t “fix” that failure by tossing in some non-obvious ineligible subject matter. Why can’t you do that? Because by doing so you are using the patent system to protect (i.e., own, i.e., take out of the public domain) the ineligible subject matter in the context defined by your recited unpatentable subject matter. That’s not permitted, for reasons that should be clear. But — as always — happy to break it down into even smaller child-size bites for the strugglers out there.
“If a series of combined steps/elements are obvious, you can’t “fix” that failure by tossing in some non-obvious ineligible subject matter. ”
You must definitely CAN “fix” that so-called failure.
NOT only can an additional element – no matter whether that element all on its own is eligible or ineligible, but one may also (still, always) even obtain an eligible claim comprised entirely out of obvious elements. Such entirely depends on the claim as a whole.
Your error here is profound.
NOT only can an additional element – no matter whether that element all on its own is eligible or ineligible, but one may also (still, always) even obtain an eligible claim comprised entirely out of obvious elements. Such entirely depends on the claim as a whole.
LOLOLOLOL
You want to try that again in English, Billy? Wow.
Do you really need someone to hold your hand on this fundamental patent law point?
A valid and eligible patent claim can be comprised entirely out of obvious elements.
Therefore, your statement about the “status” of some additional element is clear and unmitigated error.
A valid and eligible patent claim can be comprised entirely out of obvious elements.
Billy stands on his lawn at midnight and screams at the sky. The neighbors lock their doors.
Meanwhile, the fact remains: If a series of combined steps/elements are obvious, you can’t “fix” that failure by tossing in some non-obvious ineligible subject matter.
Try asking your m0 mmy to help you with this one. She can read it slowly for you and hold your trembling hand.
Your “fact” is not so.
No screaming needed – just an ability to understand the actual law and how a claim – as a whole – works (thus, a claim, as a whole, may indeed be made up of entirely “non eligible” elements, entirely “eligible” but obvious elements, entirely “eligible and non-obvious elements, or any combinations thereof.
Your starting point is itself a failure as you do not take this fact into consideration.
Still.
(is this where that [shrug] thing comes in handy?
)
If MM even bothers to read KSR, he would see anon’s statement clearly supported in the opinion…
Ray,
As I noted to Malcolm recently,
Reading is merely step 1.
He also needs to acknowledge, understand, and incorporate.
12 years now of objective evidence shows that THAT is something that Malcolm is simply unwilling to do.
There was never any reason — and there never will be — for requiring that [the eligiblity analysis] be carried out first (i.e., before the 102/103 analysis), and only first.
Fixed my typo, and edited for clarity.
Lovely strawman – note that NO ONE except you is putting that concept at issue.
note that NO ONE except you is putting that concept at issue.
Remember, folks: this is the same hypocritical doooosh who spends every other post filling his shorts because the rest of us don’t spontaneously address his silly arguments before he makes them.
Look, Billy, we know that the maximalists are struggling and that they are going to continue to struggle. Just dance around in your cl 0wn shoes and s t f u for a change.
Not sure just why you seek to divert any “folks” out there to remember anything (much less your mythical nonsense about what others do) in response to my pointing out your use of a strawman here.
“continue to struggle. Just dance around in your cl 0wn shoes and s t f u for a change”
That would be wonderful advice – for you. As is abundantly clear, the issue concerning the factual predicate of the 101 issue has YOU continuing to struggle and dancing around in cl own shoes. You have provided exactly ZERO meaningful comments on the (actual) patent law issue and instead have sought to kick up as much NON-patent law dust as you can.
Do you really think that you are f00ling anyone capable of even the minimal amount of critical thinking?
You have provided exactly ZERO meaningful comments on the (actual) patent law issue and
LOL
Except I wrote the most insightful comments here, as usual.
C’mon, Billy. You need to just let go and walk away.
The most insightful…?
The legend in your own mind continues to grow.
(there – and only there)
s u c k s to be you!
Hmmm.
I have noticed an additional fallacy in your misstatements at post 12.
“It’s up to the patentee or applicant to prove that there is “significantly more” recited in the claim beyond the ineligible subject matter. “Conventional” is just a base line for complete failure.”
This is not so.
You appear to need to understand the very basic premise in patent prosecution of prima facie case – and the onus being first on the Office.
When you grasp that FACT – then grasp the FACT that the Office is constrained (by each of the Administrative Procedures Act, it’s own memorandum of how to take Official Notice, and case law which interprets the law as written by Congress) as to just how the Office – in the first instance – can go about its duty to prove that the applicant does not – by law – get a patent.
Your “zeal” against patents pervades your every post. The cognitive dissonance – if in fact your work includes obtaining patent rights for clients must truly be…
…stultifying.
Also,
Your “baseline” comment is woefully inadequate for the point under consideration.
Not only is it the Office that has to prove the matter – as a prima facie point – the LEVEL of what needs to be proven (and by “proven,” actual substantial evidence and NOT mere hand waving is required) is more than merely “not novel” or even “obvious”, but rather must be such as in widespread use or adoption.”
Conventional – rather than some type of “de minimus” item that you wish to intimate – is a substantially higher bar of evidence that needs to be provide; and provided by the Office.
If you were a real attorney with real clients that were seeking patent protection, you would be celebrating this (very just) developing interpretation – instead of bemoaning it and attempting to obfuscate the clear meaning.
You really should get into a line of work in which you could believe in the work product and want what the client wants.
‘Not only is it the Office that has to prove the matter – as a prima facie point – the LEVEL of what needs to be proven (and by “proven,” actual substantial evidence and NOT mere hand waving is required) is more than merely “not novel” or even “obvious”, but rather must be such as in widespread use or adoption.”’
Actually, I know first-hand that, regarding 101, that wasn’t the law 1.5 years ago. Sometimes hand-waving is okay, sometimes it is not. Hopefully, Berkheimer and Aatrix are the start to the end of that nonsense.
Me, I made the mistake of believing Reyna’s and Hughes’ evidence-based proclamations in McRo and Enfish. Apparently, between Moore, Taranto and Hughes, only Moore read the Enfish opinion. Similarly, between Reyna, Taranto and Stoll, only Stoll could be bothered to actually read what was written in McRo.
Unfortunately, B, your experience may have been ultra vires.
Judge Taranto is as consistent as a Washington D.C. winter. Sometimes evidence is important; sometimes it is not; its up to the world to guess which way he will rule in the next case. Funny, however, that whenever the CAFC looks at evidence and every limitation as an ordered combination (rather than making up inane categorical rules) the holding come put patent eligible.
whenever the CAFC looks at evidence and every limitation as an ordered combination (rather than making up inane categorical rules) the holding come put patent eligible.
Where on earth did you dig this up fake “fact” up?
The CAFC, district courts and PTO look at evidence all the time, including looking at “ordered combinations”, and the claims are still ineligible.
That should surprise nobody, of course, when the “ordered combinations” are older than the hills and recognized as such by everyone above the age of ten, including the applicants (who admit as much, expressly or implicitly, over and over and over again in their specifications).
to MM
‘The CAFC, district courts and PTO look at evidence all the time, including looking at “ordered combinations”, and the claims are still ineligible.’
I know this from countless decisions having no basis in evidence and from personal experience. That said, you need only read Reyna’s dissent in Aatrix Software. Reyna is quite upset about the whole idea of basing a 101 rejection on evidence.
Those “countless decisions” don’t exist except in your mind. Can you count higher than ten?
If you have some cite re “evidence is bad” let’s see it. And let’s see the context.
Perhaps you need to read Electric Power Group, MM, as well as Smart Systems and every other decision based on a categorical exception. The word “evidence” doesn’t appear in any of those decisions. That said, just read Judge Jimmy Reyna’s dissent in Aatrix.
B: The word “evidence” doesn’t appear in any of those decisions.
The word “evidence” doesn’t appear in two (LOL) cases and therefore “whenever the CAFC looks at evidence and every limitation as an ordered combination (rather than making up inane categorical rules) the holding come put patent eligible” <—B's original claim.
You see, folks, it's this kind of nonsense that makes us chuckle at the maximalists. They really are always the least intelligent people in the room. Always.
…us?