Legal Conclusion of Obviousness is Based upon a Structure of Factual Findings whose Foundation Must be Evidentiary

Elbit Systems v. Thales Visionix (Fed. Cir. 2018)

In its IPR final decision, the PTAB sided with the patentee – holding that Elbit had failed to prove that the challenged claims of Thales patent were obvious. On appeal, the Federal Circuit has affirmed – holding that “substantial evidence” supported the finding.

The challenged (U.S. Patent No. 6,474,159) is directed to a method for tracking motion relative to a moving platform. The claims basically require two inertial motion sensors and a processor “configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.” The particular claims here are limited to include “angular” measurements.

The decision focuses primarily on the standard of review of PTAB factual findings – substantial evidence. Substantial evidence is a very low standard – simply requiring “more than a mere scintilla of evidence.” In re NuVasive, Inc., 842 F.3d 1376, 1379–80 (Fed. Cir. 2016). Although obviousness is a question of law, that legal conclusion must begin with evidence that serve as the foundation for factual conclusions. The ultimate legal conclusion of obviousness then is based upon the structure built by those factual conclusions.

Here, the PTAB made the factual finding that the prior art reference (McFarlane) did not teach the claimed “relative angular rate signal.” That finding was based upon presented evidence: both the prior art document and expert testimony regarding what was taught by the document. The patentee’s expert explained that the prior art calculated relative angular orientation using a different approach than that claimed by Thales (i.e., did not separately create an intermediary “angular rate signal”). Although the competing expert testified to the opposite (that the prior art approach is mathematically equivalent without any practical difference), the Board chose to believe the patentee’s expert based upon its conclusion that the competing expert did not provide credible citations to support those conclusion.

On appeal, the Federal Circuit held that the PTAB was the best position to determine expert credibility and thus declined to disturb those credibility determinations. Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015) (“The PTAB [i]s entitled to weigh the credibility of the witnesses.”) The challenger’s attorneys attempted to support their case with an explanation that PHOSITA would understand the meaning the prior art – That argument was rejected on appeal, however, as attorney argument rather than evidence based. Rather, to make the argument, the party should have actually presented evidence on the level of understanding of a person of skill in the art.

= = = = =

Note, I’m not sure, but this may be the first precedential decision holding that PTAB has power to weigh credibility of expert testimony in IPR proceedings. The concept was previously stated in Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015) (“The PTAB [i]s entitled to weigh the credibility of the witnesses.”) VirnetX Inc. v. Apple Inc., 665 Fed. Appx. 880, 884 (Fed. Cir. 2016).

= = = = =

Challenged Claim 3 is listed below:

1. A system for tracking the motion of an object relative to a moving reference frame, comprising:

a first inertial sensor mounted on the tracked object;

a second inertial sensor mounted on the moving reference frame; and

an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors.

2. The system of claim 1 in which the first and second inertial sensors each comprises three angular inertial sensors selected from the set of angular accelerometers, angular rate sensors, and angular position gyroscopes.

3. The system of claim 2, in which the angular inertial sensors comprise angular rate sensors, and the orientation of the object relative to the moving reference frame is determined by integrating a relative angular rate signal determined from the angular rate signals measured by the first and second inertial sensors.

Consider whether this is patent eligible.

118 thoughts on “Legal Conclusion of Obviousness is Based upon a Structure of Factual Findings whose Foundation Must be Evidentiary

  1. 9

    Yes. Though it has a lot of problems in other areas and will likely be accused of being directed to an abstract idea. It is nevertheless directed to a statutory apparatus. One that currently exists in drones, cruise missiles and B777s.

  2. 8

    Haha, anon. I know, according to MM everything that has to do with information processing is just so easy as to not be worth mentioning.

    Of course, the reality is that we are facing 100’s of million of jobs being replaced by information processing algorithms that are run using a tool called a computer. That is reality.

    So, to MM he is the same as a squirrel. The information processor that we say separates us from the animals is our brain. But a squirrel and a human are both just sensors hooked up to a brain with some movement apparatuses.

    1. 8.1

      link to thehill.com

      People are starting to put together evidence that the burning of the patent system is hurting the US economy.

    2. 8.2

      One thing additional that is interesting about the squirrel and the human is structure. MM uses this ridiculous term (and Lemley) objective structure.

      But, anyone that knows anything about information processing knows that the structure of the solutions is to some degree controlled by the problem itself. So, the algorithms take on structure that is to some degree controlled by the problem, which is similar to brain structure.

      1. 8.2.1

        You give too much credit to Malcolm and why he uses the term “objective structure.”

        Malcolm only wants “picture claims” – and does not understand what the term “Ladders of Abstraction” even means – or how that term covers even the concept of Markush groups or ranges of items.

        Note how he disappears every time I bring this up to him and discuss the fact that his version of “proper claim” resolves down to a singular “objective physical structure” because the moment that you permit a single claim to cover more than one actual “objective structure,” you have climbed a rung on the Ladder, and you cannot have climbing on the Ladder AND have the version of “objective physical structure” that Malcolm feels should be a limit on patent claims.

        Note too that he OFTEN obfuscates and attempts to portray an optional claim structure as somehow NOT being optional and being a legal requirement when he intimates that proper claims MUST HAVE “objective physical structure.”

        Reality – and innovation – are simply different than Malcolm’s feelings.

        1. 8.2.1.1

          You give too much credit to Malcolm and why he uses the term “objective structure.” Malcolm only wants “picture claims”

          Not at all. I want what the law requires: claims to new compositions of matter recite objective structure that distinguishes those compositions from the prior art on that basis. I’ve said this hundreds of times already. And I’ll keep saying it.

          you cannot have climbing on the Ladder AND have the version of “objective physical structure”

          Sure you can. The range of objective structures encompassed by a term is still objective. The distinction is objective versus subjective and/or functional.

          he intimates that proper claims MUST HAVE “objective physical structure.”

          I don’t intimate that. I state so expressly. Of course, I’m assuming we’re all reasonably intelligent people who understand that the objective structures may be referenced in a claim indirectly, i.e., they can appear in a list or Table in the specification (or in an electronic file submitted with the application) and don’t need to be set forth “directly” in the claim. As I said, reasonably intelligent people understand this.

          They also understand that you kick up dust around this issue because I’m right, and plainly so. Go ahead and take your client’s money and claim functionality at the point of novelty. If stealing makes you feel great, then keep doing it! But dont’ pretend that you’re not stealing. Be proud of it. Put on those hot pants and strut about like only you can, “anon.”

          1. 8.2.1.1.1

            Malcolm you want others to watch out for malpractice while stating “want what the law requires: claims to new compositions of matter recite objective structure that…
            which is objectively and patently FALSE.

            You attempt yet again to turn an optional claim format into something that is not an option.

            You better inform your own insurance carrier that you are advising clients in this manner – if in fact you are actually doing so (and not just blowing smoke here in a blog, thinking that such is not advocacy that is controlled by attorney ethics).

      2. 8.2.2

        [A]nyone that knows anything about information processing knows that the structure of the solutions is to some degree controlled by the problem itself. So, the algorithms take on structure that is to some degree controlled by the problem…

        Er, fine, but what of it? The shape of an ice cream scoop is also controlled by the problem itself (how to create a ball of ice cream of sufficient diameter to sit easily on the top of a standard sized ice cream cone). That does not really stop one from describing the scoop in objective structural terms nonetheless (“a hollow semicircular hemidome with a diameter between 4 and 6 cm” or some such).

        1. 8.2.2.1

          Greg >>> in objective structural terms

          What does that mean? The description of an information processing algorithm is not enough? A chart? Pseudo-code? College text books explain that functional language is often used to capture the set of known solutions.

          That is structure. (And, it actually defines how a special purpose circuit would be structured. I.e., the contacts, transistors, etc.)

          1. 8.2.2.1.1

            What does that mean?

            To my mind, an algorithm is enough. I can see the logic, however, to the argument that algorithms are not enough, and actual code is required.

            [F]unctional language… is structure.

            This seems like a cute slogan more than an actual argument. Surely, not.

            [F]unctional language… actually defines how a special purpose circuit would be structured. [(]I.e., the contacts, transistors, etc.)

            Well, now, that rather answers your question, does it not. If it is really the case that a given functional recitation bespeaks a certain arrangement of contacts, transistors, etc, then it follows that the structural description is to describe the contacts, transistors, etc.

            1. 8.2.2.1.1.1

              Please Pardon Potential (re)Post:

              Greg,

              Please show me in the law written by Congress where exactly it states that claim formats MUST be in this “objective physical structure” thingie.

              Having that avenue as an option is all fine, dandy, and wonderful.

              Pretending that a claim format that is optional is somehow “magically” NOT optional is quite the opposite.

              1. 8.2.2.1.1.1.1

                I think anon that the antis have invented a new term without a definition (other than it doesn’t apply to information processing) in objective structure.

                But, reality we should try to identify for all inventions what they actually are. Where is the structure.

                Actually, given quantum mechanics and the fuzzy nature of molecules I think that MM’s structure is less definite than the structure of information processing claims.

            2. 8.2.2.1.1.2

              Greg speaking the truth plainly here. Nice!

              Of course the twin brick walls will react predictably.

              1. 8.2.2.1.1.2.1

                That Accuse Others meme in action with “the brick” comment…

                So predictable.

            3. 8.2.2.1.1.3

              >>[F]unctional language… is structure.
              >>This seems like a cute slogan more than an actual argument. Surely, not.

              I just told you why it is not a “cute slogan.” I have provided links before to college textbooks that expressly state that functional language is used to capture the set of known solutions. Each of those solutions is structure.

              And–reality–each of those solutions define a set of special purpose chips.

              I really don’t get the argument that this isn’t structure. I spent years studying algorithms and as part of the Ph.D. program had to figure out how to make special purpose chips.

              1. 8.2.2.1.1.3.1

                I have provided links before to college textbooks that expressly state that functional language is used to capture the set of known solutions.

                Er, o.k., but to say that “functional language… capture[s] the set of known solutions” is not the same as to say that “functional language… is structure.” I can use a set of social security numbers to designate a group of people, and I can use a set of given names to designate the same group of people, but that does not means that the SSNs are the people, or that the names are the people, or that the SSNs=names. The fact that there are two ways of describing a given thing does not mean that those two descriptors are interchangeable.

                [F]unctional language is used to capture the set of known solutions.

                Oh, we are speaking of known solutions? Why did you not say so earlier. Carry on. You can indulge as much functional language as you like when describing the old elements of your invention. It is only the novel bits that require objective structural designations.

                1. >> It is only the novel bits that require objective structural designations.

                  Again, you did not define “objective structural designations.”

                  Of course you can use functional language for “novel bits.” The claim is supposed to be viewed as a whole, so your novel bits is wrong from the get go. Moreover, as long as the functional language is enabled—which is the test–then it is fine.

                  You really have some twisted logic that is not patent law, but a plaintive attempt to limit patents.

                  The way to control the functional language is that you can say if the scope is so broad as to include new non-obvious solutions that perform the same function then it could be invalidated. But even that is simplistic. Was it the function that was the invention? In some cases yes.

                  Anyway, you analysis is incredibly simplistic. You act very much like a judicial activist anti-patent person.

                  Plus, you are not even dealing with reality. When real inventions are considered, then it becomes immediately obvious that claims that do not include functional language are almost worthless. They are way too narrow and very easily designed around.

                  I have written plenty of real claims that are used for licensing and lawsuits. And I was a litigator too.

                  What you spout is from Lemley’s nonsense that only a person that is not a patent attorney could come up with.

                2. Greg, you come off as anti-patent judicial activist. Your views on claim construction are not realistic and shameful.

                3. [Y]ou did not define “objective structural designations.”

                  Fair enough. I am using the words in their plain, ordinary, English-language sense, so I did not suppose that a definition was really necessary, but if you wish one, I will happily oblige. “Structure” conveys that one must describe the invention by what it is rather than by what it does. Just as Morse was not permitted to claim “the use of… electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances,” but was rather limited to claiming the particular arrangement of machine parts that he had contrived to achieve that outcome, so too must all inventors describe the actual process, machine, material (etc) that they have invented. They may not simply claim “a material that achieves [outcome].” That is what is conveyed by “structural.”

                  “Objective,” being an adjective, modifies “structure” and conveys that the structure must be described in terms that are mutually intelligible to all people on equal terms. It is no good to describe a lever as “long” or “short,” because different people have different ideas about what is long and what is short. Rather, one must say that the lever is “at least 10 cm long” or “between about 14 dm and 15 dm,” or some such.

                  Of course you can use functional language for “novel bits.”

                  You are, of course, quite correct. One can describe the novel elements of one’s invention in functional terms. When one does so, however, §112(f) acts by operation of law to change those functional descriptors into structural designations, such that one ends up claiming no more than the structures that one has disclosed plus “equivalents.” In other words, you can use functional language if you like, but you really cannot achieve a functional claim. The law will simply turn your function into structure, whether you like it or not.

                4. Greg,
                  You err – and err badly with your leap immediately into 112(f) and:

                  One can describe the novel elements of one’s invention in functional terms. When one does so, however, §112(f) acts by operation of law to change those functional descriptors into structural designations, such that one ends up claiming no more than the structures that one has disclosed plus “equivalents.”

                  Think: Vast Midle Ground (as penned by none other than Prof. Crouch.

                5. [C]laims that do not include functional language… are way too narrow and very easily designed around.

                  If I claim “no more than 500 mg celecoxib” that is (1) objective (we all know what celecoxib is and how much makes 500 mg” and (2) structural. Now you might say that one can design around this claim by formulating a product that contains 550 mg celecoxib, but in real life 550 mg is a toxic dose, and this design-around strategy will open one to tort liability. So in practice, there is no commercially viable design around, even though the claim is phrased in objective, structural terms.

                  In other words, it is not the case that all claims set down in objective structure are “worthless.” You simply need to know your subject matter, so that you can write in the definitions that capture all of the commercially practicable subject matter. This requires more effort on the part of the applicant and/or the attorney, but it is by no means impossible. Such claims are not only not “worthless,” they are actually worth more than the lazy, functional claims, because the objective structural claims will hold up in court.

                6. Greg, you come off as anti-patent judicial activist.

                  As long as we are complaining about undefined terms, can I press for a definition of “anti-patent.” What does this mean? If I argue for a 100-year-from-issue patent term, does that mean that I get to deride the rest of you as “anti-patent” because you are content with 2o-years-from-filing? Are there “ladders” of anti-patentism, and each person gets to spit on the rungs below?

                7. Your views on claim construction are not realistic and shameful.

                  Hm, I do not feel ashamed. No doubt this reflects a defect in my character. I shall have to remember to discuss this with my priest next time I go to confession.

                8. Sorry Greg, but wrong again.

                  “no more than” REMOVES the “objective nature, as you now have a range and when you have a range, you are no longer limited to any one single actual “objective” item.

                  As I noted, this is part of the ability (even necessity) of using the Ladders of Abstraction.

        2. 8.2.2.2

          Greg,

          Please show me in the law written by Congress where exactly it states that claim formats MUST be in this “objective physical structure” thingie.

          Having that avenue as an option is all fine, dandy, and wonderful.

          Pretending that a claim format that is optional is somehow “magically” NOT optional is quite the opposite.

  3. 7

    These 101 arguments from Ned and MM below just seem to get more and more ridiculous as the judges slowly ramp up on information technology.

    Again, 101 simple. Figure out the structure. And, then go through the list of witches to make sure you don’t have a witch. If you have a witch, then you are going to get burned most likely if you run into a medieval judge.

    Ned and MM would exclude all information processing.

    1. 7.1

      “Again, 101 simple. Figure out the structure. And, then go through the list of witches to make sure you don’t have a witch. If you have a witch, then you are going to get burned most likely if you run into a medieval judge.”

      I support this method of finding facts for 101.

      1. 7.1.1

        I support this method of finding facts

        Pop quiz for you, 6.

        As an examiner, I am sure (?) that you are well aware of the limitations to which you (as an examiner) must abide by when it comes to ANY method of finding facts.

        Can you explain these to the readership here?

        Thanks

        1. 7.1.1.1

          ” the limitations to which you (as an examiner) must abide by when it comes to ANY method of finding facts.”

          Yes, they must involve witches and witchcraft. The “goddess mother” must be given her due.

          1. 7.1.1.1.1

            Caught in the “don’t have a dialogue” filter, 6, is the link to the Office official memorandum on “Taking Official Notice.”

            That – rather than any glib “witch” reference was what I was asking you to comment upon.

    2. 7.2

      Ned and MM would exclude all information processing.

      Definitely I would exclude all claims that protect information processing being performed by prior art machines that were built to perform information processing.

      That’s because information processing (otherwise known as logic applied to data) is ineligible subject matter.

      This isn’t a radical concept, nor is it new.

      But boy does it upset a certain tiny class of patent attorneys! Wow. I mean you’d almost think that they have no other skills except scrivening g@ rbage. And that’s just not true. At least not for some of them.

      1. 7.2.1

        Well, at least you are being honest about your position.

        1. 7.2.1.1

          There is NOTHING honest about his position.

          It is the epitome of inte11ectual DIShonesty.

          1. 7.2.1.1.1

            Well, anon, not if taken as an advocacy position.

            1. 7.2.1.1.1.1

              I completely disagree Night Writer.

              EVEN IF taken as an advocacy position, the manner in which Malcolm proceeds with his position (ignoring reality and engaging in purposeful obfuscation) so taints the position being advocated as to make it untenable from an inte11ctual honesty perspective.

              It might be different if the counter points raised (time and time and time again) were actually integrated into his advocacy (as opposed to his drive-by monologue internet-style “shout down”), but we both know that not only does that not happen, but that Malcolm absolutely refuses to engage in anything close to an inte11ectually honest manner.

              Twelve years now.

              1. 7.2.1.1.1.1.1

                if the counter points raised (time and time and time again) were actually integrated into his advocacy

                I address those alleged counter-points time and time again, rebutting them reason and logic. I don’t even wait for the counter-points to be made.

                Sure, I also use sarcasm and humor, especially when the dialog begs for it. I also don’t shy away from harshly criticizing dissembling and hypocrisy and willful ignorance and, let’s face it, that’s what really peeves people off — especially the l i a r s and hypocrites out there.

                And just in case it isn’t clear, it’s a strange kind of “advocacy” where you advocate for your opponent’s positions, which is what you’d really like me to do. And I could do it, too, if only your positions weren’t so ridiculously self-serving and full of fatal holes in logic and reasoning that a truck could drive through.

                1. I address those alleged counter-points time and time again, rebutting them reason and logic.

                  Pure B$.

                2. don’t shy away from harshly criticizing dissembling and hypocrisy and willful ignorance”

                  Except of course your own – which is rampant (along with your number one meme of Accuse Others Of That Which You Do.)

              2. 7.2.1.1.1.1.2

                Yeah, the manner, yes. But just that one statement as advocacy is not dishonest.

  4. 6

    This case further illustrates the vital importance of adequate declarations in IPRs.
    ————-
    Re: “… PTAB has power to weigh credibility of expert testimony in IPR proceedings.” That has always been so for the Board in interferences or any other inter party patent or trademark proceedings with conflicting evidence.

    1. 6.1

      The assertion leads to a question that has long puzzled me.

      Why do I often find that a patent litigator is often reluctant to file a Daubert motion?

      I am an MIT, Harvard, and Yale credentialed engineer and physicist. I reviewed the credentials of the patent owner’s expert and the petitioner’s expert in Tinnus Telebrands PGR.

      Both were MIT credentialed.

      The patent owner’s expert had relevant expertise in the engineering of toys. The petitioner’s expert had no relevant expertise whatsoever. His research lay in the rheology of granular solids — something completely irrelevant to the issues of the case.

      [BTW, I had much more relevant expertise because in the past I have worked as a plumber.]

      IANAL but I certainly could have written a first draft of a motion to exclude the petitioner’s expert.

      I think a patent owner should always make a Daubert motion to exclude the petitioner’s expert if it is in any way possible. If the PTAB excludes the expert, it seems good because the it screws up the petitioner’s case. If the PTAB does not exclude, the patent owner’s litigator can argue obvious error in not excluding before the CAFC.

      [BTW, if I work for the petitioner, I make sure the petitioner’s expert is invulnerable to a Daubert motion.]

      I have found the USPTO tends to accept the analysis of an unprincipled expert willing to argue what the USPTO wants even if the expert is an obvious clown.

      In the evaluating the arguments or findings of an expert, the CAFC certainly should not defer to the USPTO, and nowadays we should give the CAFC as little justification for Chevron deference to the USPTO as possible because the USPTO is showing serious evidence either of agency capture or of agency corruption.

      1. 6.1.1

        Even weirder, the PTO regularly relies on inventor decs for establishing what the prior art — not just the prior cited art — fails to teach. Think about that.

        1. 6.1.1.1

          The inventor has a positive duty of due diligence in finding and in disclosing prior art. Conscious withholding of disclosure of prior art during examination is grounds for invalidation of an issued patent.

          If you have not read MPEP 2800 Supplemental Examination, you probably should.

          If a patent owner discovers new prior art after issuance, he is foolish not to disclose it to the USPTO because a defendant in an infringement proceeding or a plaintiff seeking declaratory judgment almost certainly will find the prior art.

          1. 6.1.1.1.1

            Malcolm was merely exhibiting his cognitive dissonance and disdain for his “clients” again.

            As is his “habit” that is marked this month with a 12 year anniversary.

            He was not adding anything meaningful and frankly won’t give a rip about your attempt to help him.

          2. 6.1.1.1.2

            Just so we’re at least kind of on the same page … what I’m talking about usually has nothing to do with the declarant’s “diligence” because the declarant (expert or not) in most instances before the PTO will not have done any focused searching (there is no requirement for doing so). Rather, the declarant, in most instances, will rely on his/her own background and experience to “give weight” to his/her opinion.

            The issue I’m drawing attention to is the PTO’s habitual willingness to accept the most biased possible declarations on their face. I recall that there is some lip service in the MPEP about self-serving inventor declarations. That’s all it is, however. Lip service. I’d guess that the number of inventor decs that are rejected by the PTO as hopelessly biased and self-interested and which are, in effect, “proving a negative” about the prior art (or about PHOSITA’s understanding of that art), are less than 10% of all that are submitted.

            This is the kind of self-evident fact that should give patent attorneys and “small inventors” (LOL) pause before they ramble on and on (and on and on and on…) about the PTO’s conspiratorial “anti-patent” prejudices. But of course it won’t stop those people. Nothing will. Because that kind of rant is pretty much all those people know how to do.

            1. 6.1.1.1.2.1

              Let’s get on the same page.

              Are you, Malcolm, referring to an Inventor’s Declaration, a 130 declaration, a 132 declaration, a declaration in support of a petition, or an Affidavit-not covered under specific rule?

              All are scrutinized. Sometimes the Office requests supporting evidence and then decides how much wait to give an affidavit or declaration.

              1. 6.1.1.1.2.1.1

                As I said, Joachim,

                Malcolm was merely exhibiting his cognitive dissonance and disdain for his “clients” again.

                As is his “habit” that is marked this month with a 12 year anniversary.

                He was not adding anything meaningful and frankly won’t give a rip about your attempt to help him.

                He constantly whines about others “constantly whining” as if his own constantly whining is enough to dismiss what others are complaining about – with NO regards to what those others are actually complaining about.

                He
                Just
                Does
                Not
                Care

                …and yet he purports to be an attorney in service to the very types of people that he holds in such disdain – he purports to have a job helping those he despises.

                What do you think that must do to his mental state?

            2. 6.1.1.1.2.2

              Declarations by named inventors are NOT alone sufficient in interferences, and declarations in IPRs are subject to live cross-examinations which should challenge state of the art allegations made without any serious prior art investigation.

          3. 6.1.1.1.3

            The inventor has a positive duty of due diligence in finding and in disclosing prior art.

            Er, this is not correct. The inventor has a duty to disclose art of which the inventor is aware, but the inventor has no “positive duty of due diligence in finding… prior art.”

            It is an open question whether the inventor should have such a duty. It is black letter law, however, that the inventor does not presently have such a duty. American Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1362 (Fed. Cir. 1984) (“Nor does an applicant for patent, who has no duty to conduct a prior art search, have an obligation
            to disclose any art of which, in the court’s words, he ‘reasonably should be aware.'”)

            1. 6.1.1.1.3.1

              but the inventor has no “positive duty of due diligence in finding… prior art.”

              Absolutely correct.

              It is an open question whether the inventor should have such a duty

              Absolutely Incorrect.

              “open question” is not the term to use.

              That would imply that THAT question is actually being asked. It is not. In fact, I do not recall that question EVER being asked (in the sense that anyone in the legislature has even floated that idea).

      2. 6.1.2

        Speaking about clowns….

        The clown Malcolm will be most unhappy about this: link to ipwatchdog.com

        Of course, he will whine about people wanting patents (to – gasp – make money), and his whining may even stir up the old canard about “making a better ec(h)osystem here (ALL THE WHILE we “celebrate” this month of February as the twelfth year of Malcolm’s documented blight (of which, the attempts at “ecosystem” correction never seem to be able to “pick” that low hanging fruit).

        Goodness knows, suggestions for handling that blight have been provided (and implementation would be easier than finding some college students in a coffee shop and offering a free pizza for a weekend’s work to “just do it”).

      3. 6.1.3

        Very good comment Joachim Martillo. I wouldn’t let MM bait you. I’ve been blogging with him for 13 years. He has little interest in an intellectually honest debate.

        1. 6.1.3.1

          You are being far too generous with the characterization of “little.”

          “Less than zero” would be more accurate.

  5. 5

    “structure of factual findings”

    Is that like “objective physical structure”…?

  6. 4

    Also, claim 3 is somewhat poorly written which may play into either 112 (think IPXL) or 101 arguments. Note that claim 3 does not recite “wherein the controller is configured to determine [the object’s orientation] by integrating”, and indeed does not recite ANY further structural or functional limitations on the controller. Rather, it recites that something “is determined by integrating”, without requiring that it be the controller (or any other previously recited element) that does the integration.

    1. 4.1

      J, indubitably. In the reason for this vagueness is that the invention is in the calculus because all the hardware is old and old in combination; it only provides input to the calculating means whatever that is. The calculating means outputs a number which is interpreted as an orientation of the target. This is very much like Benson.

      It is not that integration of angular rate signals is new in context, but that the algorithm uses an intermediate step that calculates what the algorithm describes to be a “relative angular rate signal.” The prior art never calculated such.

      While this intermediate calculation may be new, the subject matter is not patentable.

      1. 4.1.1

        Ned, What you are attempting is your old “Point of Novelty” for eligibility determinations.

        We both know – and you are being unethical pretending otherwise – that for eligibility, it is the claim itself, taken as a whole that is “the subject matter.”

        1. 4.1.1.1

          Anon, as the courts have explained, simply including ineligible subject matter in a claim does not render the claim ineligible. However, if the eligible subject matter of a claim is not improved in some fashion, then the claim presents no patentable invention even if the ineligible subject matter in the claim is new and nonobvious.

          1. 4.1.1.1.1

            simply including ineligible subject matter in a claim does not render the claim ineligible.

            That is exactly what you are trying to do though with your vapid (even if you no longer use the term) “Point of Novelty” for eligibility Windmill Chase.

            if the eligible subject matter of a claim

            “of”

            Once again Ned – the subject matter for eligibility is the CLAIM ITSELF, taken as a whole.

      2. 4.1.2

        outputs a number which is interpreted as an orientation of the target. This is very much like Benson.

        This is nothing at like Benson.

        This is VERY MUCH like Alappat.

        That “just a number” which you are falsely crowing about is very much functionally related to the NON-conventional treatment of the sensors in relation to what the sensors are sensing.

  7. 3

    For my understanding of the discussion of the prior art, the only novelty over the prior art is the alleged production by these sensors of an angular rate signal that permits a two-step calculation instead of a three-step calculation. But this novel subject matter is not introduced into the claims until dependent claim 3. I don’t know why or even how claims 1 and 2 are valid because they must necessarily read directly on the prior art and must be anticipated as they are not limited to sensors producing an angular rate signal.

    1. 3.1

      “Something something specification something improvement.” – with love, the CAFC

    2. 3.2

      On further reading of the case, the Federal Circuit was determining patentability of claims 3, not necessarily of claims 1 and 2.

  8. 1

    Dennis,

    FYI, re: “Consider whether this is patent eligible.”

    See Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017).

    1. 1.1

      My apologies, as I should have included a synopsis in my prior post. The Federal Circuit found that “[t]hese claims are not merely directed to the abstract idea of using ‘mathematical equations for determining the relative position of a moving object to a moving reference frame,’ as the Claims Court found”, but instead “are directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.” Thales Visionix Inc. v. United States, 850 F.3d 1343, 1348-49 (Fed. Cir. 2017).

      1. 1.1.1

        JCD, I wonder what the result would be if the apparatus were demonstrated to be entirely old, generating conventional signals from inertial sensors where the only improvement was in the calculus? I have no idea what this “angular rate signal” is without looking at the spec. But I believe that it is the same signal that is produced by conventional inertial sensors. If that is the case, then there is nothing new about the sensors and the improved result, a number, would depend only upon improved mathematics.

        But the claims claim a system that produces a number, not unlike a computer produces a number. That system is improved by the improved calculus. Thus I believe the claims may be eligible nevertheless because of their structure. But, methinks, this case is more like Benson than not.

        1. 1.1.1.1

          Are you suggesting (but not using the words) an inherency doctrine use, Ned?

        2. 1.1.1.2

          Anon, not inherency.

          What this is, if the signals produced by the sensors are not new, are a pair of sensors that feed a computer that has new programming that computes the old result in a new way. Nothing physical is changed by the calculus.

          Such a system cannot be distinguished from Benson or from Mayo.

          It seems that it is easy to confuse the Federal Circuit or that they are confused the begin with an have to be coaxed see that the Emperor has no cloths.

          1. 1.1.1.2.1

            No Ned – it IS inherency that you should be using.

            Otherwise what you are attempting to do is the “it must be magic” or as Night Writer would put it: “it’s a witch” – and nothing more than that.

        3. 1.1.1.3

          Ned,

          My understanding (based on a brief review) is that a conventional approach would involve “tracking an object, such as a person’s head, relative to a moving platform, such as an aircraft, [using] a locally level, ground-based navigation frame (n-frame) … such that both the moving platform (p) and the user’s head (h) could be tracked relative to the ground (n)”. Thales Visionix Inc. v. United States, appeal no. 15-5150, Corrected Principal Brief for Plaintiff-Appellant Thales Visionix, Inc. filed March 2, 2016, p. 13 (document 51, p. 21) (Fed. Cir. Mar. 8, 2017). For example, “the pose of the vehicle would be tracked with respect to the ground, the pose of the user’s head would be tracked with respect to the ground, and the pose difference could then be computed.” Id. That is, it seems that “conventional understanding in inertial navigation systems … was to resolve all pose estimates to a ground-based navigation frame (n-frame) that was a locally-level frame with its vertical axis aligned with the direction of local gravity.” Id. at 15, (document 51, p. 23).

          Notably, “inertial measuring systems in the prior art needed to maintain a clear path between the head or tracked object and an external reference point (n-frame), fixed in the environment, for determining drift-correcting measurements.” Id. at 14 (document 51, p. 22). “[I]f a clear line of sight between the vehicle, i.e., moving platform (x), and the ground, as well as the head, i.e., the tracked object (y), and the ground, could not be maintained, such as when flying an aircraft, these error correcting measurements could not be made directly, even with a supplemental sensor, but rather were calculated based on independently estimated and then transformed pose data” and “[a]s that data became more inaccurate, even more so did the results of the multiple coordinate transformation calculations.” Id. at 14-15 (document 51, pp. 22-23).

          The patent discloses an approach that, “[i]nstead of trying to calculate that force based on the moving platforms tilt angles with respect to ground, … us[es] a reference inertial sensor mounted on the
          moving platform to directly measure the gravitational force on the moving platform [which] remove[s] the problems of compounded transformation errors.” Id. at 15 (document 51, pp. 23). This approach “move[s] the traditional navigation reference frame (“n” frame) away from the ground and affixe[s] it to the moving platform, while also allowing it to re-orient (and move) freely with the moving platform.” Id. at 15-16 (document 51, pp. 23-24).

          This approach involves a “new reference tracking system on board a moving platform, or aircraft, that transforms the raw inertial sensor data directly from a ‘tracking’ IMU mounted on a moving object to be tracked and the raw inertial sensor data directly from a ‘reference’ IMU mounted on a moving platform into relative orientation and position data, minimizing the compounding transformation errors.” ID. at 16 (document 51, p. 24).

          The Federal Circuit seems to have addressed distinctions over conventional approaches in its opinion, noting that “[t]he inertial sensors disclosed in the ‘159 patent do not use the conventional approach of measuring inertial changes with respect to the earth”, “[i]nstead, the platform (e.g., vehicle) inertial sensors directly measure the gravitational field in the platform frame” and “[t]he object (e.g., helmet) inertial sensors then calculate position information relative to the frame of the moving platform.” Thales Visionix Inc. v. United States, 850 F.3d 1343, 1345 (Fed. Cir. 2017).

          Here, although there may be nothing new about the hardware of the sensors themselves, there would seem to be a strong argument that the positioning/placement of the sensors is innovative, in that the claims can be argued to be directed to an improved system which “us[es] a reference inertial sensor mounted on [a] moving platform to directly measure the gravitational force on the moving platform” and “transforms the raw inertial sensor data directly from a ‘tracking’ IMU mounted on a moving object to be tracked and the raw inertial sensor data directly from a ‘reference’ IMU mounted on a moving platform into relative orientation and position data, minimizing the compounding transformation errors.” Corrected Principal Brief at 15-16 (document 51, pp. 23-24).

          This can be argued to be an improvement over conventional systems in that, “[b]y changing the reference frame, one can track the position and orientation of the object within the moving platform without input from a vehicle attitude reference system or calculating orientation or position of the moving platform itself.” Thales, 850 F.3d at 1345. For example, “relative orientation can be determined in the claimed environment, without the need for further extraneous manipulation of data taken from additional structure on a fixed reference frame”. Corrected Principal Brief at 45 (document 51, p. 53).

          The Federal Circuit found that “[t]here are multiple advantages of the disclosed system over the prior art”, including that “it increases the accuracy with which inertial sensors measure the tracked object on the moving frame”, “the disclosed system can operate independently, without requiring other hardware on the moving platform that determine the orientation or position of the moving platform itself”, and “because the whole system is installed on the inside of the moving platform, installation is also simpler than previous inertial systems.”

          This is a very fact and technology specific way of looking at this case and the eligibility question. I think your line of questions is really interesting. I think that this very fact-specific analysis and inquiry in the present case can brush past or aside some of the issues with current eligibility jurisprudence, but I think many of those same issues remain to eventually be dealt with.

          If there was not a strong argument that the positioning/placement of the sensors is innovative, then this could become a much more difficult question (or maybe it would be simple). I think everyone has interesting thoughts on such a question, but I mostly just have more questions. I think the current abstract ideas eligibility exception as it is currently articulated leaves open fundamental questions that need to be addressed at some point.

          1. 1.1.1.3.1

            JCD, I take this is an agreement that if the only novelty is a method of calculation based upon the input of two conventional sensors where the output is a number that is not otherwise used for anything as in Flook or Benson in contrast with Diehr, then the subject matter is not patent eligible.

            In contrast, if the novelty is using two sensors as claimed, then not only is there patentable subject matter, the probably also is a nonobvious invention.

            It is a shame that after two cases, we have no clear information on whether the prior art showed the use of two sensors, one mounted on the reference in one mounted on the target.

            1. 1.1.1.3.1.1

              Mounting sensors on anything is obvious. Good grief people wake the eff up.

              Sensors. For sensing stuff. And then you perform math or logic on the data. This is older than the hills.

              1. 1.1.1.3.1.1.1

                Know what is older than the hills?

                Protons, neutrons and electrons.

                (I know that you find that shocking)

            2. 1.1.1.3.1.2

              Ned,

              I haven’t thought through that proposition enough to be able to categorically agree, although it sounds right upon my initial consideration.

              I’m certainly in agreement that the Supreme Court has made clear that “the discovery of a novel and useful mathematical formula may not be patented” (Parker v. Flook, 437 U.S. 584, 585 (1978) (citing Gottschalk v. Benson, 409 U.S. 63 (1972)). I’m also certainly in agreement that the Supreme Court has made clear that where “[a] formula is the only novel feature of [a] method”, “the discovery of this feature [does not] make[] an otherwise conventional method eligible for patent protection.” Flook, 437 U.S. at 588.

              Previously, I had just briefly reviewed the eligibility case (Thales Visionix Inc. v. United States, 850 F.3d 1343, 1345 (Fed. Cir. 2017)) and was outlining the assertions and conclusions presented in there vis-a-vis conventional approaches.

              To be clear, this is a rabbit hole in that I could spend a lot of time reviewing this case and then equally as much time outlining my thoughts vis-a-vis both §101 and §103. As interesting as I find this stuff, I have only done a very brief review and am going to try to offer some thoughts without diving in too deeply.

              In now looking over the IPR as well, believe it or not, from my very brief review it seems like the result may actually have involved an argument that a “signal” from an inertial sensor is different from “position information” from an inertial sensor.

              In Thales’ brief to the CAFC, Thales indicated that “[t]he Board based its decision on” factual findings that “the relative inertial sensor signal element critical to the new way is missing from Elbit’s prior art references” and that “Elbit’s evidence does not address the absence of the relative signal element in the prior art”. Elbit System of America, LLC v. Thales Visionix, Inc., appeal no. 2017-1355, Appellee’s Brief, p. 10 (document 29, p. 19) (Federal Circuit February 6, 2018).

              Thales noted that “McFarlane teaches to combine the input from the ship or aircraft’s inertial platform at processor 22, after the helmet’s sensor data has been processed to calculate azimuth (‘AZ’) and Elevation (‘EL’) in ‘detector signal processing circuit 21.'” Id. at p. 11 (document 29, p. 20). Thales argued that “the inputs to processor 22 from the ship or aircraft’s inertial platform provide position information, the ‘frame azimuth’ and ‘frame elevation,’ rather than the signals from inertial sensors” and that “[t]his contrasts with the ‘new way’ claims in the ’159 Patent, which require combining signals from the inertial sensors, not position information, and operate ‘independently without any inputs from the motion-base controller or the vehicle attitude reference system.'” Id. at p. 12 (document 29, p. 21).

              Thales thus seems to argue that “the relative inertial sensor signal element critical to the new way is missing from Elbit’s prior art references”. This argument does find some accord with the recitation in the claim that “an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors”, although I don’t think many casual readers would attribute any particular significance to the recitation of “signal” upon first reading the claim.

              Did the prior art disclose “an element adapted to receive signals from said first and second inertial sensors and configured to determine an orientation of the object relative to the moving reference frame based on the signals received from the first and second inertial sensors”? If it did not, is this an improvement over conventional systems such that the claim can be characterized as being directed to an improved system rather than a mathematical formula?

              Alternatively or additionally, if the addition or repositioning of a sensor would be enough to suggest eligibility of an improved system, would the removal of a sensor from the system analogously be enough to do so? If the system can “operate ‘independently without [a] motion-base controller or [a] vehicle attitude reference system'” (Id. at p. 12 (document 29, p. 21)), is this akin to removing a sensor from the system, and is this sufficient to suggest eligibility?

              I’m not sure that I know the answer to all of these questions, but they are very interesting.

              1. 1.1.1.3.1.2.1

                I find it hard to believe that nowhere in the IPR submissions, depositions, briefs, expert reports, responses, replies, etc. did anyone point out that transmission engineers use signal to noise ratio and information to noise ratio interchangeably.

                1. Engineers used applied math.

                  As I have noted previously, one needs to be aware of the differences between:

                  math
                  applied math
                  and
                  Math(S)

                  Those who are anti-patent (be that in flavors of anti-software patent or anti-business method patent) are the sAme ones who refuse to hew to those differences.

              2. 1.1.1.3.1.2.2

                JCD,

                Your quotes attributable to Flook ALONE are not appropriate, as Flook (and Benson) were cabined by Diehr.

                It is pure legal error to pretend otherwise.

          2. 1.1.1.3.2

            Of course there’s always the possibility — so slim! — that the Fed Cir panel which wrote Thales was completely out to lunch.

          3. 1.1.1.3.3

            Aarrgghh.

            The prior art also disclosed mounding inertial sensors on both the object and the reference platforms. Thus the novelty is completely in the calculus and no new arrangement of hardware is deployed. There is no use given for the results of the calculus except possibly for a field of use limitation.

            The best conclusion is that the subject matter here is ineligible. This never should have gotten to a test of obviousness because whether or not a particular algorithm is new or old, and/or obvious, is totally irrelevant.

            I was thinking that the PTAB should independently assess whether the subject matter of the IPR is eligible before institution. If it is not eligible, then the IPR is a waste of everybody’s time. They should decline institution on the basis that the subject matter is not eligible.

            1. 1.1.1.3.3.1

              Aarrgghh yourself, you need to reread Bilski:

              “Diehr explained that while an abstract idea, law of
              nature, or mathematical formula could not be patented,
              “an application of a law of nature or mathematical formula
              to a known structure or process may well be deserving
              of patent protection.” Id., at 187. Diehr emphasized
              the need to consider the invention as a whole, rather than
              “dissect[ing] the claims into old and new elements and
              then . . . ignor[ing] the presence of the old elements in the
              analysis.”

              As a whole, Ned, not at the point of novelty. That is why you fail.

              1. 1.1.1.3.3.1.1

                DRJLaw: Diehr emphasizedthe need to consider the invention as a whole, rather than “dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis.”

                As a whole, Ned, not at the point of novelty.

                You might have been sleeping the last 10 years but there’s been a few other decisions since Bilski which leave zero room for the argument that comparing the claim to the prior art and focusing on the eligibility of the recited and allegedly “novel” contributions to the prior art is somehow not permitted in a 101 analysis.

                All that the passage above is pointing out it is that courts can’t establish a one-size-fits-all eligibility determination rubric that says, in effect, find new subject matter in the claim and if the new subject matter is ineligible, then the claim is ineligible. Nevertheless, as we all know, in practice it often is (and should be) just about that simple because in most cases the claimed invention is a simple pile of ineligible g@ rbage that doesn’t merit a more detailed analysis.

                Put another way: recognizing that a claim recites only the prior art and then tosses in some ineligible subject matter (e.g., “think about the meaning of the data”) is not the same as “ignoring” the prior art recited in the claim. To the extent that you believe that the passage from Bilski mandates another result, you are mistaken. Mayo/Alice/Myriad wiped that concept out (27-0) which was a necessary and essential reaction to what the patent maximalists were proposing. Good riddance.

                Stop committing malpractice and stealing money from your clients.

                1. Wow – contradict yourself and then throw out the other person is (somehow) committing malpractice…

                  Oh wait this is Malcolm and this is typical for him.

                2. Again: there is nothing in Bilski — absolutely nothing — that can be relied on in 2018 for the proposition that Ned’s analysis is somehow “unlawful.” Because it’s not.

                  Since Bilski, the Supreme Court has spoken in Mayo, Alice and Myriad with a unified mind 27-0 against what “DRJLaw” is suggesting.

                  So-called “claim dissection” and the analysis of what is new and what is not new and what is eligible and what is not eligible is absolutely essential to any scheme for screening claims that protect ineligible subject matter out of the system. This is a matter of elementary logic. It’s the kind of thing that a 12 year old can understand in two minutes. Only a tiny subclass of patent attorneys can still twist its collective mind around any other conclusion in 2018. Grow up already.

                3. claims that protect

                  is a canard of the “Gist” variety.

                  Relying on Supreme Court “fingers in the wax nose” and completely disregarding the broken scoreboard of a series of decisions which are self-contradicting is very much part of the problem.

                  Pull your head out Malcolm.

                4. Everyone who disagrees with Malcolm is, of course, committing malpractice.

                  File a complaint, Malcolm. See how far you get.

              2. 1.1.1.3.3.1.2

                From Alice:

                ” The invention in Diehr used a “thermocouple” to record constant temperature measurements inside the rubber mold — something “the industry ha[d] not been able to obtain.” Id., at 178, and n. 3, 101 S.Ct. 1048. The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. Id., at 178-179, 101 S.Ct. 1048. These additional steps, we recently explained, “transformed the process into an inventive application of the formula.” Mayo, supra, at ___, 132 S.Ct., at 1299. In other words, the claims in Diehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.”

                What I have been saying. There was structural modification and the process of curing rubber, otherwise eligible, was improved. Here, the process is computing a number that is not otherwise eligible. The Federal Circuit case relying on Diehr with respect to this patent pointedly ignored a requirement to like the claimed invention to an improvement in something otherwise eligible.

                1. If I use the MPEP 2106 Alice Mayo flow chart,

                  In step 1 inventions patentable — yes (a method or process claim).

                  In step 2a directed to a judicial exception — no (“A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer” does not seem like an “abstract idea” whatever that is).

                  Go to eligibility.

                  I suppose one might argue that the claim is directed to a judicial exception (“using the Arrhenius equation in curing rubber”) but the novelty lies in much more than using the Arrhenius equation and following the “yes” path from step 2a, one finds “something more” — continuously measuring the temperature and opening the mold at exactly the correct moment.

                  For jollies here is a link to the patent issued.

                  link to google.com

                2. “1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:

                  providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,

                  initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,

                  constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,

                  constantly providing the computer with the temperature (Z),

                  repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which is ln v=CZ+x where v is the total required cure time,

                  repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and

                  opening the press automatically when a said comparison indicates equivalence.”

                  Show me the thermocouple element. Diehr remains Diehr, not what Alice and Mayo, in dicta, attempt to change Diehr to be.

                  ” It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”

                  Malpractice that, Malcolm.

                3. Let’s try that again:

                  In Diehr, there was a structural modification to the mold required by the claim. Further, the claim was directed to an otherwise eligible process of curing rubber. That process was improved by the claim modifications that included constant recalculation of mold time using an existing mathematical algorithm.

                  Here, the claim, nominally directed to a system, is substantially directed to a process of computing a number, interpreted to be an orientation, that is not otherwise eligible. In Thales, the Federal Circuit case that upheld the eligibility of the claims at issue here, the court relied on Diehr for the improvement aspect of the claimed invention in this case, but did not seem to understand that what is improved must be something otherwise eligible, not something that itself is ineligible, as is the case here.

                  I have been thinking about how to claim the invention in this case in a way that is eligible. The central problem here is that nothing is done with the resultant number and there is no difference in any structure from the prior art.

                4. DRJ, read the above-quoted except from Alice.

                  Further, “constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,” was new. It was enabled by mounting a thermocouple in the mold.

                  The Diehr invention provided for a higher yield of perfect cures and improved a process that was otherwise statutory.

                  In Thales, the invention provided for a reduced-step calculus, an improvement in the mathematics of computing orientation from inertial sensor inputs, one sensor mounted on the reference, another on the target. Math is not statutory.

                5. @Ned Heller,

                  No thank you, I’ll read the actual claim and the actual Diehr decision. Dicta in Alice does not control.

                  Please answer the question – where is this modification required in quoted Diehr claim?

                6. DRJ, what Alice said was the holding in Diehr is the holding in Diehr.

                  Regarding the structural modification, asked and answered. See, once again the Supreme Court’s statement regarding Diehr in Alice. They were construing the claims to require the thermocouple disclosed in the specification mount in the manner required.

    2. 1.2

      “The Claims Court granted the defendants’ motion for judgment on the pleadings and held all claims directed to patent-ineligible subject matter under 35 U.S.C. § 101. . . . We hold that the ’159 patent claims at issue in this appeal are not directed to an abstract idea. The claims specify a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform. The mathematical equations are a consequence of the arrangement of the sensors and the unconventional choice of reference frame in order to calculate position and orientation. Far from claiming the equations themselves, the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed. As such, these claims are not directed to an abstract idea and thus the claims survive Alice step one. . . . Because we find the claims are not directed to an abstract idea, we need not proceed to step two. Alice, 134 S. Ct. at 2355; Enfish, 822 F.3d at 1339. The claims are patent eligible under 35 U.S.C. § 101.”

      1. 1.2.1

        Using sensors and math to process the data is never “non conventional.”

        1. 1.2.1.1

          MM, the novelty cannot be in the math here. It has to be in the new inertial sensors producing a signal, the so-called “angular rate signal,” that is new. Otherwise, this is Benson.

          1. 1.2.1.1.1

            Actually, the sensors or conventional and angular rate signal is calculated from the raw data. Therefore, there is nothing new here except a difference in calculation based upon conventional data from to inertial sensors. Obviously, this cannot be eligible subject matter otherwise Benson in Mayo are both wrong.

            1. 1.2.1.1.1.1

              Contrast Diehr in which the only “Point of Novelty” there was the computer program….

              Oops.

              1. 1.2.1.1.1.1.1

                Contrast Diehr in which the only “Point of Novelty” there was the computer program….

                Where was that finding made or recognized by the majority in Diehr?

                1. Apply just a little critical thinking all on your own.

                  Or maybe just pay attention, as the comment has been on these boards for discussions for several years now.

        2. 1.2.1.2

          Using sensors and math to process the data is never “non conventional.”

          Once again we see the “logic” of “Using protons, neutrons and electrons is never ‘non conventional.'”

          After all, it has been convention to do so since the Universe was what, about 1.2×10^13 s (380 ka) old – or about the end of the photon epoch…. (see link to en.wikipedia.org )

      2. 1.2.2

        Was the Thales court the first to introduce “unconventionality” into step 1 of Alice? Usually, that is a step 2 inquiry. (Application of laws of physics to an unconventional arrangement is non-abstract)

        1. 1.2.2.1

          NotPaidto_Comment,

          Arguably, Bilski and Alice suggested the importance of conventionality at step 1 of the Mayo inquiry. The Supreme Court in both Bilski and Alice went out of their way to cite evidence to establish that the concepts the claims were indicated to be directed to were fundamental economic practices long prevalent in our system of commerce.

          The Supreme Court in Alice offered evidentiary support for its assertion that “[l]ike the risk hedging in Bilski, the concept of intermediated settlement is ‘a fundamental economic practice long prevalent in our system of commerce.’” Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014). The Court in Alice cited Emery, Speculation on the Stock and Produce Exchanges of the United States, in 7 Studies in History, Economics and Public Law 283, 346-356 (1896), Yadav, The Problematic Case of Clearinghouses in Complex Markets, 101 Geo. L.J. 387, 406-412 (2013), and J. Hull, Risk Management and Financial Institutions 103-104 (3d ed. 2012) to support its conclusion.

          Similarly, in Bilski, the Supreme Court offered evidentiary support for its assertion that “Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010). The Court in Bilski cited D. Chorafas, Introduction to Derivative Financial Instruments 75-94 (2008), C. Stickney, R. Weil, K. Schipper, J. Francis, Financial Accounting: An Introduction to Concepts, Methods, and Uses 581-582 (13th ed. 2010), and S. Ross, R. Westerfield, B. Jordan, Fundamentals of Corporate Finance 743-744 (8th ed. 2008) to support its conclusion.

          1. 1.2.2.1.1

            Thanks, JCD.

          2. 1.2.2.1.2

            When the purported invention, the novel subject matter, is not eligible, the claim as a whole is probably not directed to patentable subject matter and it should fail Alice step one. Example: CD-ROM with new music.

            Bilski went off the rails, in my humble opinion, when it spoke of conventionality with respect to ineligible subject matter. No matter how novel and nonobvious methods of calculating risk could be, the claims still would not be eligible.

            When we talk about a factual inquiry concerning novelty and conventionality, it can only be when the inquiry is directed to an whether the otherwise statutory subject matter in the claim is conventional or not. In Mayo, the blood test was entirely conventional. In Alice, the computers and computer systems were entirely conventional. When, however, the otherwise statutory subject matter is not entirely conventional, but has been modified in some fashion, then it is entirely possible that the claim may contain a patent-eligible invention.

            This is why I so heavily criticize Versata. The purported invention in that case was not directed to a new mathematical way of calculating Price, but to a new computer process that was more efficient and that greatly reduced to time to calculate Price. I believe Versata was directed to an improved computer process as opposed to a method of calculating. As such, it was directed to in improved machine and machine process.

            1. 1.2.2.1.2.1

              music…

            2. 1.2.2.1.2.2

              When, however, the otherwise statutory subject matter is not entirely conventional, but has been modified in some fashion, then it is entirely possible that the claim may contain a patent-eligible invention.

              Ned – yet again – is pretending that is by pure “magic” that a computer can be “just used” WITHOUT FIRST changing that computer and reconfiguring that computer WITH the addition of the software.

              Somehow, Ned is able to make both computers in the Grand Hall operate the same – the one without ANY software and the one that has been changed with the addition of software.

              Maybe Ned is the witch….

              1. 1.2.2.1.2.2.1

                Anon, you are still arguing the position that Judge Rich took in Benson. It won’t wash.

                Programming a stored program computer with a new program does not generate a new computer, nor does it provide a new use for an old computer. Had this ever been true as a matter of law or fact, Benson in all the other cases involving programs would have been decided differently by the Supreme Court. That they were decided differently by the Federal Circuit can be attributed largely do you know who.

                1. No Ned – I am NOT doing as you indicate.

                  Further, EVEN IN Benson, we have this quote:

                  It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

              2. 1.2.2.1.2.2.2

                anon,

                I’m playing catch up here, so my apologies if I’m asking dumb questions. With respect to an argument that “programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software” (In re Alappat, 33 F.3d 1526, 1545 (Fed. Cir. 1994)), even assuming arguendo that this makes the programmed computer an improved machine, does that really address the relevant question of whether a judicial exception to §101 bars patenting? The Supreme Court has made clear that falling within one of the statutory categories doesn’t automatically confer eligibility, so how are you hoping to leverage this argument?

                1. JCD,

                  Your question is not a “dumb question,” but does highlight the fact that certain people are playing fast and loose with the reality of what software is.

                  The leverage comes from first accepting reality, and then forcing those who would twist the law to suit their Windmill Chases to accommodate that reality in their positions.

                  As it is, every time the issue comes up, there is a cessp00l of obfuscation from anti-patentists that needs to be waded through.

                  Further – as I have posted many times, 35 USC 101 has but two prongs, and your comments reflect (albeit skewed by a Court with a broken scoreboard) the notion that both prongs must be passed.

                  One prong is the statutory category.

                  The other prong is utility (being of the proper utility, or within the Useful Arts, that is to say, NOT being of the Fine Arts).

                  That is what 101 is about.
                  That is ALL that is what 101 is about.

                  101 has indeed become a mashed nose of wax, bent and twisted to serve a purpose that it simply was not intended for.

                  Starting then with a proper understanding (legal and reality) that there is NO “magic” involved in how a machine can obtain new capabilities through the design choice of one “ware” or another “ware” (be that software, hardware, or firmware), and making sure those advocating WHATEVER position do so with a modicum of inte11ectual honesty will necessarily make for a better dialogue.

                  That is not too much to ask, is it?

            3. 1.2.2.1.2.3

              Ned,

              I don’t have your knowledge of the historical context, so all I can do is read through the case law and try to synthesize what the Supreme Court says into a coherent framework. I have spent a ton of time doing so, but I don’t even pretend to have any certain answers.

              I think there’s a fundamental issue with the current jurisprudence surrounding the abstract idea eligibility exception in that the Alice/Mayo test offers no way to distinguish between a patent-ineligible abstract idea and an inventive concept which signals patent eligibility. This issue can be dodged if you only consider conventional abstract ideas (as these clearly aren’t inventive concepts), which could be why the Supreme Court took care to make clear that the concepts in Bilski and Alice were long prevalent. I will try to put together a longer write up on this.

              1. 1.2.2.1.2.3.1

                try to synthesize what the Supreme Court says into a coherent framework.

                That’s just it. If one takes an objective view, the Supreme Court has written itself into a Gordian Knot of conflicting directives.

                ANY attempted synthesize will thus fail. This is not the fault of the person attempting to do the synthesize. This IS the fault of a nanny Court attempting to stick its fingers into the wax nose of 101 and legislate from the bench as to what it feels is a “proper reach” of patents instead of merely providing any actual interpretation (as needed, and not merely “desired”) of the controlling statutory law.

              2. 1.2.2.1.2.3.2

                JCD, is not really all that hard if one keeps in mind the ultimate objective. The claims have to claim an invention that is a new or improved machine, etc. Thus if a claimed invention is not itself directed to in improved machine etc. or a traditional process but merely uses an existing machine etc. where the use is of a kind that previously existed (new music to the CD-ROM), then the claim as a whole is ineligible.

                A mathematical algorithm is not made eligible by using pen and paper, an Abacus, or computer to perform the calculations.

                The inquiry has to always be as to whether there is improvement to conventional machine functionality or that a process, including a machine process, is improved.

                The only way to successfully overcome a 101 rejection where the novel subject matter is not directed to a new machine, etc., should be to demonstrate that the claim provides an improved machine, etc. Ditto a response to a 12(b)(6) or summary judgment motion in court.

                When the claimed invention is only claiming result, in contrast, I do not believe that the claim should be declared invalid. I think the law has provided that it be construed to cover the corresponding structure, steps, etc. described in the specification and equivalents. This is almost mandated by §112(f).

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