Admitting to an Abstract Idea

by Dennis Crouch

Maxon v. Funai (Fed. Cir. 2018) (nonprecedential opinion)

In a sweeping judgment,the N.D. Ill. district court dismissed Maxon’s infringement case — finding the claims of the plaintiff’s four asserted patents to be invalid for claiming ineligible subject matter under 35 U.S.C. 101.   On appeal, the Federal Circuit has affirmed.

The patents here are all part of the same family — all directed to a seeming business method of providing an “electronic means of increasing user control over subscription entertainment content.”  U.S. Patent Nos. 8,989,160; 7,489,671; 7,486,649; and 7,171,194.  Although the bulk of the patents were issued pre-Alice (2014), the ‘160 was issued later in 2015.  During prosecution, the examiner did reject the claims originally under Section 101 — that was overcome however by amending the specification to limit “computer-readable medium” to only non-transitory storage.  Of course, that strict line-drawing does not work for the flexible eligibility analysis applied in court.

Claim 8 of the ‘160 patent is listed down below and is treated as representative.  The claim is directed to a device capable of sharing services with other devices.  In walking through the two-step Alice framework, the Federal Circuit first noted the patentee admitted that the patents were directed to an abstract idea — that of “decentralized delivery controlled by the owner of a plurality of devices.” Yes indeed, the opening brief begins with the following statement: “Maxon’s claims are indeed directed to an abstract idea: decentralized service delivery controlled by the owner of a plurality of devices.”  This is a strategy that I probably would have avoided — especially recognizing the strong correlation between the two Alice steps.

While is true that a claim directed to an abstract idea can still be patent eligible if they offer application of an inventive concept beyond the abstract idea itself, that did not work here for Maxon.  Rather, both the district and appellate courts found “the claims merely recite generic computer elements for their basic functions and thus do not transform the claimed abstract idea into eligible subject matter under Alice.”  Maxon had argued that the “ordered combination of the claimed elements” constituted an inventive step. The courts disagreed with that argument — holding that “[t]he only method of reaching the result the patent teaches is, in essence, use of generic computer components for their standard purposes to achieve the result.”

Invalidity Affirmed.

= = = = =

Representative Claim 8:

An audio-video device capable of sharing services with a plurality of other devices within a personal network, the audio-video device comprising:

a computer-readable medium having storage for a first address corresponding to the audio-video device, a second address corresponding to the personal network, and a third address corresponding to a service provider network;

input/output logic configured to receive from a user a desired change to a service capable of being provisioned to the audio-video device from at least one service available generally to the personal network;

a processor in communication with the computer-readable medium and the input/output logic, the processor programmed to prepare an inbound signaling word comprising at least the first address and payload data representing the desired change to the service capable of being provisioned to the audio-video device from the personal network;

and a transceiver providing the inbound signaling word to the service provider network where the service provider network comprises logic to process the inbound signaling word including modifying stored information in a subscriber database to effect the desired change to the service capable of being provisioned to the audio-video device from the personal network,

the transceiver further receiving an outbound signaling word comprising the first address corresponding to the audio-video device and data indicating the desired change to the personal network, the outbound signaling word responsive to the desired change to the service capable of being provisioned to the audiovideo device from the personal network.

41 thoughts on “Admitting to an Abstract Idea

  1. 8

    No tag for pedantry, but if software is not logic, and it’s not a writing, and it has no physical existence when in use, what exactly is it?

    I can actually accept the argument of software as manufacture, but it’s always claimed as a process. If claimed as manufacture, the barrier to a non-obvious invention in the art is going to be high- as it should be. You might lose for winning that particular argument. However, even as a manufacture, there are serious problems with classifying what exactly is being claimed, since you ought not to be able to claim a result.

    1. 8.1

      “I can actually accept the argument of software as manufacture, but it’s always claimed as a process.”

      No. What is claimed IS a process. In some cases, the process can be implemented using a computer or processor. Software can help configure the computer or processor to perform the process.

      A computer readable media carrying such software is an apparatus or manufacture and might be claimed as such.

      A computer or processor configured with such software is an apparatus and might be claimed as such.

    2. 8.2

      Whoever said that software is not a writing?

      Maybe you have missed all the conversations about the exceptions to the judicial doctrine of printed matter, and the fact that “a writing” is a manufacture (by the hand of man) as that term is understood in patent law.

      Further, I KNOW that you are aware (because I for one have set you straight): software is not a process. Software is not the execution of software.

      As to your rather odd notion of “ If claimed as manufacture, the barrier to a non-obvious invention in the art is going to be high- as it should be” – you are showing your high degree of lack of understanding of the terrain upon which you want to play. There is NO “lose for winning” there because you are rather clueless as to pass ANY type of judgment on the winning or the losing.

      As to the categories of innovation – OFTEN (and not just with software), innovation can be portrayed in multiple categories. Software innovation, then, is nothing special in that regard.

      As to “However, even as a manufacture, there are serious problems with classifying what exactly is being claimed, since you ought not to be able to claim a result.” you show the Kool-Aid stains of following the mantra of those that simply do not want to afford patent protection to software. Those people – like Malcolm – simply cannot get out of the way of themselves in their prevarications (note that claims are read as by a Person Having Ordinary Skill In The Art, and such a person has NO difficulty in understanding that how I have portrayer the legal positions is – and always has been – entirely accurate.

      There is simply no such “serious problems.”

      The only “serious problems” is that the propaganda and dissembling have been allowed to have been run unfettered (by supposed attorneys) advocating in this forum.

      1. 8.2.1

        Yea well tell it to Les in the comment above.

        And I have zero, none, nada, zilch doubt that your understanding of the software arts in re: what is obvious to PHOSITA is completely uninformed.

        Which PHOSITA by itself, is a huge problem. Is it the art of software, or is it the domain in which the software is deployed? Because there is a world of difference between them.

        1. 8.2.1.1

          Les comment is not incongruent with my comment.

          I suggest that you read through both in order to grasp that.

          As far as YOU making any legal determinations in the patent realm, well, you cannot be bothered with the basics, so your determinations have no value.

          That you think my view is uninformed – given how poorly you understand this stuff – is rather a compliment.

          Thank you.

    3. 8.3

      Software has no physical existence? Wow. Where is it then Martin? It exists in the spirit world?

      1. 8.3.1

        Believe it or not, but Martin (supposedly) works in the software business area.

        I can neither confirm nor deny that he is also a part time mystical shaman of dark magic.

  2. 7

    Very much “missed” in the headlines here (as well as by the trio of judges who seem rather oblivious) is that the claims are not claims TO an abstract idea, but instead are claims directed to (at least supposedly) an abstract idea.

    There is a world of difference between purely claiming an abstract idea, and claiming something (that even fits within the statutory categories) and to which the judicial muckery is swinging its “Gist/Abstract” sword and distilling that claim to what the claim “really” is to (and never mind the fact that Congress explicitly set out which party gets to “set” what the invention “really” is to – and that would NOT be the judicial branch).

    For a supposed professor of patent law, there are SO MANY teaching opportunities that are wasted here.

    1. 7.1

      Good points.

      What is an abstract idea? Something like build the machine to have fewer parts and to produce more widgets faster.

      The abstract idea of the SCOTUS has no meaning that is tethered to reality or the traditional use of the word “abstract.”

      1. 7.1.1

        I would posit that the Supreme Court made a reasonable choice in Alice to decline to “labor to delimit the precise contours of the ‘abstract ideas’ category in this case.” Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2357 (2014).*

        Could they have gone farther to try to specifically define what should or should not be characterized as an abstract idea for purposes of the abstract idea eligibility exception? Maybe. But I think that would have risked actually creating/exacerbating the very problem you allude to, in that it is very easy to accidentally articulate an overbroad definition of what constitutes an abstract idea for purposes of the exception.

        As it is right now, there are certainly some actors who have adopted an overbroad interpretation, but I am not sure that it is entirely fair to characterize it as SCOTUS’ view.

        In both Bilski and Alice, the Court applied the abstract idea eligibility exception to abstract ideas that it found to be “a fundamental economic practice long prevalent in our system of commerce” (Alice, 134 S.Ct. at 2356), and even provided evidentiary support that these practices were long prevalent.

        The Federal Circuit has recognized this, indicating that “[t]he Supreme Court has held that ‘fundamental … practice[s] long prevalent’ are abstract ideas.” Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016).

        There is a lot left to be settled with the abstract ideas eligibility exception. For example, there remains an interesting argument as to whether fundamental practices which are not long prevalent, or long prevalent practices which are not fundamental, can be characterized as an abstract idea for purposes of the eligibility exception.

        This uncertainty can be traced to the Supreme Court’s choice to decline to “delimit the precise contours of the ‘abstract ideas’ category” (Alice, 134 S.Ct. at 2357), but there are reasons to believe that this choice was a reasonable one, and it is not really fair to blame the Court for the fact that some actors have subsequently adopted an overbroad interpretation of the abstract idea eligibility exception.

        *As an aside, would I prefer if the claims in Alice had just been tanked under 103 – of course!

        1. 7.1.1.1

          I would point blank refute your characterization that “there are reasons to believe that this choice was a reasonable one.”

          You appear NOT to grasp the problem with Void for Vagueness.

          Maybe do more than vacuously assert that some fair reasons may exist for fashioning a weapon that is so open to a “I know it when I see it” LACK of guidance before you claim that it is unfair to blame those fashioning this weapon for that very feature OF the weapon.

          1. 7.1.1.1.1

            I believe that we have had this discussion re a “void for vagueness” argument. See, e.g.: link to patentlyo.com, comments 6.2.1.1.1.1 and 6.2.1.1.1.1.1.

            I’m not opposed to seeing a challenge on this theory, but it feels like a steep uphill climb to get this issue treated.

            1. 7.1.1.1.1.1

              Just as I am sure that it would be a steep uphill climb, I am sure that my position is correct.

              You should note that no one has ever provided a cogent rebuttal.

            2. 7.1.1.1.1.2

              JCD,

              Click on the date for the comment at the top of section that you want to link to.

              Like thus: link to patentlyo.com

        2. 7.1.1.2

          The reason the SCOTUS did not explain it further is because there is no reasonable explanation possible.

          The SCOTUS is using “abstract” to mean the trier of fact thinks this claim is really obvious.

          (And just because something is old and well-known does not make it abstract in any definition that is other than from the SCOTUS.)

          1. 7.1.1.2.1

            I think it’s a fair point that eligibility analysis which asks whether a concept represents an improvement (at step 1) or whether a claim contains an inventive concept (at step 2) frequently seems to effectively collapse into an inquiry as to whether a claim is inventive or nonobvious, only without the constraints that have evolved around a §103 inquiry. Further, the eligibility question is seemingly forever troubled by the fact that there is no clear framework for distinguishing between a patent ineligible abstract idea and an inventive concept which signals patent eligibility.

            Does this mean that the abstract idea eligibility exception should be abandoned and the overbreadth concerns raised by the Morse Court addressed under §112? Maybe, but it seems like a tall order to get there from here.

            1. 7.1.1.2.1.1

              Maybe, but it seems like a tall order to get there from here.

              It is NOT such a tall order if people only pay attention and hold the Court accountable for its mockery (instead of pretending that the Court can do no wrong).

              As I have also posted – EVERY state attorney oath (with the exception of the Commonwealth of Massachusetts) clearly sets an attorney’s duty to the Constitution ABOVE even the judicial branch.

      2. 7.1.2

        1st of all
        ALL ideas
        ARE abstractions.

        1. 7.1.2.1

          So are concepts.
          So are transformed concepts.

          Point here is that the courts continue the butchering started by the Supreme Court (and show that the CAFC, the court intended by Congress to bring order to patent law, has succumbed to the brow-beatings of the Supremes).

          Time for the “nuclear” option of Congress exercising its Constitutional power to apply jurisdiction stripping from the Supreme Court of the non-original jurisdiction of patent appeals and (to preserve Marbury, which provides for Article III – and not necessarily Supreme Court – review) set up a new (non-brow-beaten) patent court.

  3. 6

    At least they were honest.

    1. 6.1

      Take note of exactly what they were being honest about….

      Then read (and understand) post 7.

  4. 5

    Ineligibility by estoppel makes sense. Everything else about this opinion (like all subject-matter-eligibility opinions) makes no sense.

    Meanwhile, in conclusion, praesidens impedicandum est.

  5. 4

    The physical components.. are.. input/output logic… management logic (2x), communications logic

    Let’s pause and think about that.

    Instead of pausing, let’s just immediately recognize that the CAFC includes some truly cl00less people who can’t get the k00l-aid stains out of their br@ins.

    Whether or not the term “logic” in those passages arguably includes some objectively cognizable physical structure, there is no question that the term “logic” in the following phrase does not: where the service provider network comprises logic to process the inbound signaling word

    How much does the typical “input/output logic” weigh, by the way? More or less than the typical “management logic”? How many “management logics” can I fit into the trunk of my car? What’s the smallest unit of “management logics”? Do I get a discount on shipping if I buy two?

    LOL

    Remember, folks: software isn’t logic! Nope. Totally different.

    LOLOLOLOLOLOLOL

  6. 3

    From the decision (by Prost, Hughes and Stoll):

    The physical components of claim 8 are a computer readable medium, input/output logic, a processor, and a transceiver. The other representative claims include similar physical elements: claim 6 of the ’671 patent contains a computer-readable medium, management logic, and a processor; claim 6 of the ’649 patent contains a computer-readable medium, management logic, and a processor; and claim 8 of the ’194 patent contains a user interface and communications logic.

    The physical components.. are.. input/output logic…
    …similar physical elements: … management logic (2x), communications logic

    Let’s pause and think about that.

    Continuing in the case:

    (2) whether the claims contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible concept

    Contain… concept… transform… idea into… concept

    So….

    Is the concept an abstraction?
    Is the transformed concept any less an abstraction?

    Continuing:

    Nothing about the order of the elements, or the way they are combined, suggests inventiveness.
    J.A. 11–12.

    We agree that the representative claim does not recite anything beyond the application of routine and conventional computer components.

    The application…. The court here aimed at the wrong thing – the piece parts of the claim.

    It is NOT whether or not the objects of what is being applied are themselves routine or conventional. It is whether the ordered combination in the application is itself routine or conventional.

    This is nothing more than the Big Box of Protons, Neutrons and Electrons “logic” at work.

    NOWHERE does this case attempt to square its result with other PRECEDENTIAL cases that allow for conventional piece parts to not stand in the way of eligibility.

    About the only thing good about this case is the designation of non-precedential.

    1. 3.1

      What, these claims are “conceptual” definitions which refer to concrete things which “fall within” their scope, but hence do not have as referents any “abstractions”?

      Anon, what is the name for the “I could have thought have that” legal test for inventiveness?

      1. 3.1.1

        Whatever be that name, Congress opted for a different path in the Act of 1952, removing the authority previously allowed to the Court to develop the definition of “invention” by Common Law evolution and instead opted for the concept of “obviousness” creating from what was once a single paragraph the multiple and different sections of law of 101/102/103.

    2. 3.2

      “anon” It is NOT whether or not the objects of what is being applied are themselves routine or conventional. It is whether the ordered combination in the application is itself routine or conventional.

      Pure unandulterated gobbledyg 0 0k. Nonsensical on its face.

      What matters is whether the physical components — the only eligible subject matter in the claim — are “ordered” in a novel, non-obvious fashion. Every case that suggests anything to the contrary is an indefensible insulting j 0ke. Or you can call it call an “exception” or a “special entitlement for certain industry sectors because, hey, rich entitled whiners gotta be satisfied because reasons.”

      Everything else is just noise, or worse.

      Logic is ineligible for patenting. That includes data processing logic. That’s the fundamental starting point.

      The starting point isn’t “software must be protectable with patents.” That’s just the wish of the entitled whiners who want to patent the ineligible logic (or worse — the ineligible “functionality” resulting from the application of that logic to data) that they type out on their keyboards.

    3. 3.3

      NOWHERE does this case attempt to square its result with other PRECEDENTIAL cases

      LOL

      Every single one of those “precedential cases” finding that computer-implemented logic is eligible for patenting because [insert arbitrary irrational unsupported reason here] are complete g@rb@ge.

      Treating them otherwise is a l o s e r’s game. There are no logic patents — NONE — that will stand up to a decent argument by a competent attorney who’s hands aren’t tied behind his/her back.

      1. 3.3.1

        Wow, who knew evaluating these cases to match my desired outcome was so easy. Let me try:

        Every single one of those “precedential cases” finding that computer-implemented logic is ineligible for patenting because [insert arbitrary irrational unsupported reason here] are complete g@rb@ge.

        Thus, just left with the ones that find them eligible. Voila!

        1. 3.3.1.1

          The key distinction, Bguy, is that the cases finding logic eligible for patenting do — in fact — always rely on either a made-up self-serving mythology (e.g,. data is the “essence of electronic structure” <–LOLwut?) or they engage in circular reasoning or there is no reasoning at all.

          If you want to argue that logic is eligible subject matter for patent protection, go right ahead. You'll be the first to make a convincing sensible argument. If you concede that point, however (which is something that every Supreme Court Justice would do, and I'm pretty sure 90% of the CAFC as well) then you'll be hard pressed to explain why inserting a context such as "on a conventional computer" changes the result. Unless of course you want to simply assert that It Must Be Because Entitled Rich People Want It.

          But go ahead and give everyone some other explanation that's consistent with reality and the rest of the patent statutes. Make my day.

          1. 3.3.1.1.1

            Malcolm’s own “logic” (and legal argument) is itself: always rely on either a made-up self-serving mythology <–LOLwut? or they engage in circular reasoning or there is no reasoning at all.

            His Accuse Others meme hard at work here…

  7. 2

    Truly cringe worthy:

    Of course, that strict line-drawing does not work for the flexible eligibility analysis applied in court.

    Way to NOT recognize the patent profanity from two different sources and conflate the issues.

    You have managed to r e tard the progress by not elucidating that one driver of patent profanity (of the In re Niutjen family) is a separate bit of patent profanity from the “Gist/Abstract” sword family.

    Maxon had argued that the “ordered combination of the claimed elements” constituted an inventive step. The courts disagreed

    The only way to achieve ANY result for ALL items in the statutory categories of the hard goods is to have an ordered combination of the elementary particles of Protons, Neutrons, and Electrons (and not even coming up with anything NOT a law of nature to combine them). Last I checked, both the law of nature for combining the particles and the particles themselves are only a “use of generic [ ] components for their standard purposes to achieve the result.”

    Lode_Runner,

    because that claim 8 looks a lot less “abstract” than many of the claims the Federal Circuit has upheld

    It has become a “luck-of-the-draw-of-panel” ping pong match to which NO matter can be truly determined a priori (FOR the panel to be drawn – not those pundits who would “sniff” a claim).

    Can you say “Void for Vagueness?”

    1. 2.1

      Illogic (definition):

      1. Determine if A is directed to a type of Y. If No, A is “really” directed to a type of Z. If “yes” go to 2. (btw YZ)

      2. Now that A has been determined to be directed to a type of Y, “really” determine if A is directed to a type of Z….

      If “yes”, (i.e. A IS directed to a type of Y and IS [really] directed to a type of Z) then A is “really” directed to a type of Z and not really a type of “Y”.

      If “no” then A was “really” a type of Y all along.

      1. 2.1.1

        That should say (btw Y != Z)

  8. 1

    Yeah, Dennis, you can come right out and say it. The patent owner goofed big time by conceding that the claim is directed to an abstract idea. Maybe there was something in the record that all but required that the patentee make that concession, because that claim 8 looks a lot less “abstract” than many of the claims the Federal Circuit has upheld against a 101/Alice challenge.

    It has enough jargon-like technical language (like “inbound signaling word,” “provisioned,” “address”) to make it sound like something technical and not abstract. That kind of language is good enough to bamboozle many district judges to punt on the 101 issue. So who knows, but the concession sure looks like a poor strategy call to me.

    1. 1.1

      A party cannot admit to a legal question. Nor can a party stipulate to a legal question.

      Like, I cannot “admit” that I have no duty of care if I operate a hotel. And “admitting” that I do have a duty of care is irrelevant; I’m not Congress or the Supreme Court.

    2. 1.2

      Some patentees are just honest people.

    3. 1.3

      If they would have won, it would have been a grand strategy. Risky, but not altogether suicide to attempt a frame/anchor job by admitting to step one (i.e. forcing a narrowing of the field to the step 2 analysis).

      But really, the Alice two-step is utterly malleable. Judge Moore can trample it at will, as can any number of district judges. It’s in the eye of the beholder.

      Either logic/information is patent-eligible, or it is not….nobody will say. In this case, there wasn’t even any new logic or information at hand. An utter lack of invention on all fronts- just (re)claiming the basic operations of any network.

      1. 1.3.1

        But really, the Alice two-step is utterly malleable. Judge Moore can trample it at will, as can any number of district judges. It’s in the eye of the beholder.

        We are in agreement on this point.

        Of course, the legal terrain of Void for Vagueness follows this exercise of the Supreme Court to write patent law from the Bench with its intrusion and gift of the “Gist/Abstract” sword….

        Either logic/information is patent-eligible, or it is not….nobody will say.

        Here we will not agree. You fall to the fallacy as advocated by Malcolm. Software is not logic (as that term is used in the common vernacular). One cannot obtain copyright protection on pure logic. Software is not information. Information – in and of itself – has not utility in the manner that software has utility.

        This is NOT a matter then of “nobody will say.” What NEEDS to be said – IS said.

        What needs to happen is that the propaganda and dissembling of those who do not want patent protection for the utility aspect of the manufacture of the hand of man known as software needs to stop.

        Your last comment (“wasn’t even any new logic or information“) merely repeats your error of the first order. If instead, you had wished to express the view that the manufacture was not new (lacked novelty) or merely “(re)claimed” that which already existed (again, lacked novelty), there is a different section of law to be applied. Patent eligibility and patentability are distinct concepts, and it does no one any good for THAT teaching lesson to be lost.

        1. 1.3.1.1

          I see that patent law has not advanced at all since I left the practice years ago.

          Pathetic.

          1. 1.3.1.1.1

            IBP,

            In many ways, it have become far worse.

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