Role of Preemption in Eligibility Analysis

Smartflash v. Samsung offers a set of backup arguments following Oil States.  Questions Presented:

  1. Whether Administrative Patent Judges of the Patent Trial and Appeal Board (“Board”) are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause. [DC – I discussed this argument in a January 2018 post]
  2. Whether retroactive application of Covered Business Method Review to patents on inventions disclosed before passage of the Leahy-Smith America Invents Act violates the Due Process Clause of the Fifth Amendment.
  3. Whether undisputed evidence that a patented invention is not unduly preemptive, presented to technically proficient judges of the Board, is relevant to the question whether the invention is patent-eligible under 35 U.S.C. § 101.

The third question here is most interesting to me and strikes to the heart of the purpose of the eligibility limitations.  Although the courts have written that preemption avoidance is a major function of eligibility limits, the Federal Circuit has repeatedly held that evidence of no-preemption is irrelevant.

Read the petition here.

Smartflash Patents at issue here: U.S. Patent Nos. 7,334,720; 7,942,317; 8,033,458; 8,061,598; 8,118,221; 8,336,772; and 8,794,516.

Claim at issue (Claim 1 of the ‘720 patent):

1. A method of controlling access to content data on a data carrier, the data carrier comprising non-volatile data memory storing content memory and non-volatile parameter memory storing use status data and use rules, the method comprising:

receiving a data access request from a user for at least one content item of the content data stored in the non-volatile data memory;

reading the use status data and use rules from the parameter memory that pertain to use of the at least one requested content item;

evaluating the use status data using the use rules to determine whether access to the at least one requested content item stored in the content memory is permitted; and

displaying to the user whether access is permitted for each of the at least one requested content item stored in the non-volatile data memory.

 

84 thoughts on “Role of Preemption in Eligibility Analysis

  1. 12

    So…

    The spotlight turns on satisfying the need to apply the exception in the first instance to any new claim as a condition precedent, and…

    …the conversation becomes one-sided.

    Too much of the “Wizard of Oz-like Pay no attention to that man behind the curtain.”….

    The cusp of ____ (fill in the blank)

  2. 11

    I am a bit surprised to not see Paul Cole weighing in on this topic.

    The “floor-like” presence of (properly) establishing the need to apply a judicial exception is the very type of thing that he espouses as a “careful read and application” of the High Court’s writing (and a point that does not [perhaps] impugn the Supremes).

    And yet, no view from Paul on any such “controlling” role as to when the sword of “Gist/Abstract” may be unsheathed…

  3. 10

    Kevin, scope of enablement is the way to police breadth.

    LizardTech goes through how to do this.

    Abstract was meant to stop claims like build a machine with fewer parts that operates as efficiently.

    We don’t need judges with warm moist clothes going back to their chambers and making “finding of fact” based on their own private little thoughts.

  4. 9

    “Controlling access to content data on a data carrier”

    So the invention does not control access to non-“content” data?

    That won’t even get past Judge Moore, although it would get past any number of district judges.

    1. 9.1

      C’mon, man.

      “Content data” is totally different from “non-content data”! The melting point, on average, of non-content data is like 20 degrees higher. Also it’s much harder to pack into inflexible containers. Do you know nothing about tech?????????????

  5. 8

    I like this argument. Shame it is buried.

    The logical foundation to the “judicial exception” is that granting a patent on an abstract idea would preempt development in the area. Sup. Ct. punts on any preemption determinations as “judges are not [] suited” to make preemption decisions, and instead gives a 2-part test.

    The Court should likely come back and say, yes ALJs (and examiners?) can make the decision on preemption via fact-finding, otherwise the basis of preemption fails.

    If the ALJs at the PTAB aren’t capable of identifying preemption, then who is? Accordingly, even if we believe there should be ineligible subject matter as a policy, we need to acknowledge that preemption can’t be the rationale for judges creating exceptions to eligibility.

    If preemption is not the foundation of eligibility questions, then I believe the only rationale for judicially disallowing certain claims, e.g., abstract ideas and fundamental economic theories, would be prior discovery. Which would indicate that 101 as currently applied might just be a watered-down 102/103 check.

    Any actual claim that uses a known idea and merely applies it to a computer should be disposed of with prior art and not under the rationale of a determination of preemption that no one is apparently capable of determining.

    1. 8.1

      no one is apparently capable of determining.

      Keep projecting.

      Why so many infantile patent attorneys in the profession? Oh wait — I answered that already, below.

      1. 8.1.1

        Keep projecting.

        Says the guy whose number one meme is Accuse Others Of That Which Malcolm Does.

        Stultifying.

      2. 8.1.2

        Any such “determination of preemption” would also require a determination of “sufficiency” (much opposite your post below at 4, which is merely your feelings untethered to anything that the Supreme Court may have actually stated).

        To that effect, then, this portion of my reply to Paul fits here as well:

        Such as, for example, given Paul’s description of this being a matter of factual issue, during examination, with the onus on the Office of properly establishing any assertion of a factual element, how exactly will the Office be able to do so (while adhering to APA requirements) for the future, subjective, conjectorial and undefined “sufficiently blocking” of any said future advances?

    2. 8.2

      Kevin,

      Do not forget the Supreme Court crashing through the guard rail in that development (in the form of the infringement exception of the “Experimental Exception”) already voids the supposition.

      You want to engage in research? No such thing as a granted patent blocking you.

      You want to engage in business based on research? Well, you have now transitioned into one of the very reasons why we have patents at all.

      Couple this with the fact that having patents is meant to create new building blocks for future innovation, and one can see that the Supreme Court rhetoric is actually (and virulently) anti-patent.

    3. 8.3

      uses a known idea and merely applies it to a computer

      What exactly does this mean? I am not looking for the “shortcut” answer, or the “hypothesis” that the phrase is meant to indicate. I am asking what is the particular objective physical structure of the so-called “generic computer” to which the “merely apply” suffices to handle with NO actual physical change.

      After all, a machine with no such actual physical change naturally carries with it the (proper) patent doctrine of inherency, to which any (reasonable) view of “just apply it” would be easy to be met.

      1. 8.3.1

        I am asking what is the particular objective physical structure of the so-called “generic computer”

        You should ask the patentee in this case. I’m sure they have a very, very serious answer. Because they are very serious people! Lookie, they are whining all the way to the Supreme Court! Very serious indeed.

        1. 8.3.1.1

          Why should I ask the patentee when the one advancing this mythical “generic computer” is NOT the patentee?

          Your “so serious” is seriously misplaced.

          1. 8.3.1.1.1

            Gee, I wonder what the odds are that the patentee’s specification refers to a “programmable computer” (or something equivalent), in generic terms?

            1. 8.3.1.1.1.2

              Please identify ONE patented invention that you hold to be valid and we shall show you have it is made from “generic” components.

              Failing that, please admit that you believe all patents are invalid.

  6. 7

    … and yet again we see that the only one, true path through the current 101 morass … is the abolition of the cancerous 101.

    1. 7.1

      The Alice/Mayo two-part test is mostly harmless if one follows the flowchart and uses ordinary English definitions of terms.

      Unfortunately the courts including SCOTUS seem unable to follow the test.

      Let’s accept that “directed to” has the meaning presented in MPEP 2106. (It seems to have various other meanings in other CAFC and SCOTUS decisions.)

      Indeed, Prometheus Claim 1 is directed to a natural phenomenon just as the Diehr claims are, and also Prometheus Claim 1 recites much more than a judicial exception (step a) just as the Diehr claim does.

      Why are the Diehr claims 101-eligible, but the Prometheus claims are not?

      SCOTUS did not have the guts to say that Prometheus Claim 1 was anticipated and obvious. Or SCOTUS was unable to articulate the lack of patentability under 102 or 103 coherently.

      The Mayo v Prometheus decision is almost formulated correctly, but SCOTUS failed to understand its own words and overread the Rubber-Tip Eraser decision.

      When the Mayo v Prometheus decision points out that a medical treatment is associated with well-understood, routine, conventional activity like “modifying dosage according to patient response,” SCOTUS means but does not seem to understand that it has just identified an inherent limitation of the medical treatment (probably practically all medical treatments).

      So how is overreading Rubber-Tip Eraser relevant?

      1874 SCOTUS did not invalidate Blair’s patent because he was claiming an abstract idea (idea of itself).

      1874 SCOTUS was merely pointing out that a limitation of the abstract idea (or well-understood, routine conventional activity) of “joining by insertion” added nothing to the original device (or more correctly system), which consisted of lead-pencil cum India rubber.

      Likewise adding the step of actually measuring the natural phenomenon of thioguanine level adds nothing to the prior disclosed method with the inherent limitation of modifying treatment according to patient response.

      Thus SCOTUS broke the US patent system because it could not rationally explain why the Prometheus claims were unpatentable under 102 or 103.

      I try to explain this point in my response to the Berkheimer RFC, but my logorrhea probably ruined my articulation of the issue. Thus I probably should not utterly excoriate SCOTUS for the Mayo v. Prometheus decision. Of course, when I misarticulate a point in a comment on Patently-O or in response document sent to the USPTO, I don’t break the US patent system.

      Anyway, for more discussion just check out the sections “The Prometheus Claims” and “The Rubber-Tip Eraser Claim” in my Berkheimer response.

      1. 7.1.1

        I explain erroneous reading of Rubber-Tip Eraser v. Howard in SCOTUS Made Rubber-Tip Eraser into Hemlock for US Patent System.

        It’s time to bury Abstract Idea Eligibility Doctrine!

        When a judicial exception is not claimed but only explicitly or implicitly recited as a limitation, the examiner may have to determine whether to give the limitation patentable weight. That judicial exception is certainly not grounds for a § 101-ineligibility rejection.

    2. 7.2

      The true villains of this story are those lawyers to decided it was a good idea to put the claims of Alice in front of the Supreme Court.

      1. 7.2.2

        hose lawyers to decided it was a good idea to put the claims of Alice in front of the Supreme Court.

        What do you mean? It was so obvious that those claims were eligible because if you drop a computer on your foot you can feel it. <– actual arguments made by CAFC judges

  7. 6

    A “shotgun cert” [3 unrelated legal challenges here] is not usually considered effective.
    Number 3 has another problem. Preemption is not the only way to get a judicial 101 “exception rejection.” Was preemption really the only disputed factual issue on that subject here?

    1. 6.1

      And number 2 has the problem that all CBMs will soon automatically sunset, [and are infrequently used] so why is it worth the time of the Supremes?

    2. 6.2

      Was preemption really the only disputed factual issue on that subject here?

      An interesting question which displays an implicit condition: the answer ONLY has impact IF preemption is the single issue to be decided.

      But is that an appropriate perspective?

      Instead of an “if only and no other issue present, then decide” should not the perspective be one of “this is a necessary starting point?

      Reading HOW the Court described this, this is what empowers their action.

      Without this empowerment, no matter what else other factors may or may not be present, there is a lack of proper impetus.

      As the Court’s foundation of authority is not there, so then without that authority, procession along the path must halt.

      Leastwise, this perspective accords with “narrowly applying an exception” – less the exception swallow the rule.

      This consideration is but a first one, if this IS accepted as a “necessary” condition to even using the weapon of the “Gist/Abstract” weapon, other questions/considerations must naturally follow.

      Such as, for example, given Paul’s description of this being a matter of factual issue, during examination, with the onus on the Office of properly establishing any assertion of a factual element, how exactly will the Office be able to do so (while adhering to APA requirements) for the future, subjective, conjectorial and undefined “sufficiently blocking” of any said future advances?

      The fact of the matter is that if accorded a factual nature and if accorded a “floor” rather than a “ceiling” nature, this bit of scrivining by the Court implodes in the Executive Branch and simply cannot be processed.

  8. 5

    This psychotic talk. Can we stick to structure and prior art? You know, like patent law? Scope of enablement is all that is needed. Alice is a witch test.

    1. 5.1

      Just jabbering nonsense. There is no fighting a judge with their moist warm clothe telling you that the claim is abstract because there is no definition of abstract or what it means for a claim to be directed to an abstract idea.

      And the yapping below from MM is like trying to decipher what a dru nk person suffering from schizophrenia is saying.

      Just tell us that the Sun orbits the Earth and get it over with. Tell us how there is a spirit world where all the processing your mind does occurs.

      1. 5.1.1

        What I find unappealing about this PTAB opinion – and many cases – is that the analysis is structured like this:

        (1) State the conclusion under Step 2A or 2B.

        (2) Cherry-pick a claim element and describe how it supports the conclusion.

        (3) Describe the rest of the claim as generally consistent with (2).

        Here, as elsewhere, a lot of the claim elements seem to fall through the cracks – including the claim elements that specifically recite the point of novelty.

        I’d like to see Alice be reformulated like this:

        (1) Partition the independent claim into distinct subsets: elements that recite an “abstract idea” and the remaining claim elements.

        (2) Discuss the “abstract idea” provided by the first subset of elements.

        (3) Discuss the “significantly more” aspect of the remaining claim elements.

        This type of argument is closely tied to the claim language, and the rationale can be scrutinized in terms of the identified claim elements. Permitting courts (and examiners) to be vague and nebulous in their claim interpretation is a betrayal of Alice as well as an untenable legal framework.

        1. 5.1.1.1

          ESPECIALLY when definitions of either/or both of “abstract” and “significantly more” need not be presented.

          Heck, you may as well sound off on “claim elements are not eligible” (as if individual claim elements are ever supposed to be evaluated all on their own under 35 USC 101.

          If that were so, simply take whatever the claim elements are and distill them down to configurations of protons, neutrons, and electrons, and then tell the applicant “no patent for you.”

          But your last statement needs a correction for accuracy:

          “Permitting courts (and examiners) to be vague and nebulous in their claim interpretation is an affirmation of Alice as well as an untenable legal framework.”

          1. 5.1.1.1.1

            > Permitting courts (and examiners) to be vague and nebulous in their claim interpretation is an affirmation of Alice as well as an untenable legal framework.

            On the contrary:

            * Alice Section IIIA (pages 7 through 10) deals with “intermediated settlement.”

            * Alice Section IIIB (pages 10 through 16 and particularly page 14) identify and discuss the remaining elements of the independent claim

            * Alice Section IIIC (pages 16-17) addresses the other independent claims in view of the preceding analysis.

            Now, I disagree with the Court’s conclusions that the individual claim elements are routine and conventional – but that’s not my point. My point is the Court’s methodology, which I believe to be much more specific, detailed, and faithful to to the invention as claimed than most other courts and examiners are performing.

            1. 5.1.1.1.1.1

              Help me out David,

              Where did the Court define either of “Abstract” or “significantly more”…?

              1. 5.1.1.1.1.1.1

                anon, I agree with you – and those are serious and arguably fatal problems. I’ve been asking that question for four years now.

                The methodology issue is a separate one, though. And I think that it’s one that may be well-taken if we impress it upon the PTO.

              2. 5.1.1.1.1.1.2

                anon, I agree with you – I’ve been stating as such since June 19, 2014. These deficiencies are deeply problematic and arguably fatal to the proposed analysis.

                However, I don’t think we’ll get much traction with that argument. Like Bilski, the courts have chosen this path, and will remain committed to it until (and even after) its internal vacuousness becomes undeniable.

                But the methodology issue that I raised above is based upon Alice, and would reduce certain forms of subjectivity and speciousness in the analysis. I think we could gain traction with it if impressed upon the PTO.

                1. Avenues of “common law” law writing are not available to the members of the Executive Branch administrative agency.

            1. 5.1.1.1.2.1

              Mea culpa.

              That whole “directed to” nonsense is a direct override of the words of Congress by the Supreme Court when Congress designated explicitly which entity gets to define what an invention is.

        2. 5.1.1.2

          [T]he analysis is structured like this:

          (1) State the conclusion under Step 2A or 2B.

          (2) Cherry-pick a claim element and describe how it supports the conclusion.

          (3) Describe the rest of the claim as generally consistent with (2).

          Exactly right. Using this sort of analysis, any clever chimp armed with a keyboard can direct the outcome of any given case to any conclusion one likes. Given that the author of the opinion gets to pick which claim element(s) will receive the focus, it is always possible to set the analysis to be more specific (if the writer wants to sustain the claim) or more abstract (if the writer wants to tank the claim). The fix is in as soon as the adjudicator sits down with quill in hand.

          This is no way to run a legal system.

          1. 5.1.1.2.1

            it is always possible to set the analysis to be more specific (if the writer wants to sustain the claim) or more abstract (if the writer wants to tank the claim)

            Which demonstrates why the analysis you are referring to is a strawman analysis.

            The “specificity” of a particular claim is not a shield against ineligibility. The case law is crystal clear on that point.

            1. 5.1.1.2.1.1

              Do I need to post (AGAIN) the definition of “strawman”…?

              Hint: it is NOT what you are calling a strawman

              1. 5.1.1.2.1.1.1

                Do I need to post (AGAIN) the definition of “strawman”…?

                No, you need to take a flying —- at a rolling donut.

        3. 5.1.1.3

          David Stein finds a giant n u t:

          I’d like to see Alice be reformulated like this:

          (1) Partition the independent claim into distinct subsets: elements that recite an “abstract idea” and the remaining claim elements.

          (2) Discuss the “abstract idea” provided by the first subset of elements.

          (3) Discuss the “significantly more” aspect of the remaining claim elements

          Nothing about this analysis is inconsistent with Prometheus or Alice. Assuming you understand how the “discussion” goes when only the ineligible/abstract is new and the “remaining claim elements” are in the prior art, then your analysis should lead you to the correct result.

      2. 5.1.2

        There is a way to deal with motion for summary judgment on 101-ineligibility (or an abstract idea rejection from an examiner) thanks to the only useful element of the Mayo v. Prometheus decision.

        Even though I am a patent agent, most of my experience comes from expert consulting in infringement cases.

        If one is the defendant in an infringement case, one always motions to dismiss on a number of grounds.

        If 101-invalidity is one of the grounds, nowadays thanks to Berkheimer I can recommend arguing in the alternative:

        1) that there is no abstract idea at all;

        2) that the defendant misdefines a well-known, routine, conventional element to be an abstract idea and that a factual determination is required; and

        3) anything else necessary to convince the judge to deny the motion.

        (Responding to an abstract idea rejection in an office action would be handled differently, and trial follows a slightly different path if declaratory judgment of invalidity is sought against a patent owner.)

        Most everything commonly called an abstract idea can be reconstrued as a well-understood, routine, conventional element.

        Please read SCOTUS Made Rubber-Tip Eraser into Hemlock for US Patent System — it’s short. I am trying to control myself because the issue is important.

        Because it’s time to drive the stake through the heart of Abstract Idea Eligibility Doctrine, I will try to put together a short video to explain how to win on an issue of 101-eligibility.

        [BTW, I work on both sides of the issue — at least until Abstract Idea Eligibility Doctrine is consigned to the garbage dump of legal history.]

        1. 5.1.2.1

          To be more precise I would argue that the opposing party or examiner mistakenly believes that a substantial limitation is a well-understood, routine, conventional element but calls it an abstract idea in order to escape factual determination.

          1. 5.1.2.1.1

            In other words, the opposing party or examiner:

            1) picks a well) understood, routing, conventional element;
            2) calls it an abstract idea; and
            3) tries to map it to a substantial limitation of a completely valid claim.

    2. 5.2

      Can we stick to structure

      Show everyone the new structure described in that g@r bage patent claim.

      1. 5.2.1

        According to you information processing with new functions is possible without structure. Or you add something about objective structure or some other term that has no meaning. Seems like all you anti’s play the same game of using terms without meaning.

        1. 5.2.1.2

          …or he pretends that an optional claim format is somehow not optional, while discounting and denigrating an area of innovation most accessible to the non-wealthy.

  9. 4

    The phrase “unduly pre-emptive” misses the point. Why does it miss the point?

    Because a claim that pre-empts (i.e., that covers) any ineligible subject matter is “unduly” pre-emptive.

    This is basic, fundamental patent law. It’s the easy stuff and there is no reason to make it difficult. If I’m practicing a method that is ineligible for patenting (e.g., typing instructions for carrying out logic into a machine whose sole purpose is to receive such instructions) and you come along and tell me I’m infringing your patent claim then guess what? Your patent claim is ineligible. It’s that simple.

    You say that when I think about some “new” correlation while I adjust a patient’s dosage of a drug exactly as I did before I read your patent that I’m now infringing your patent claim? Well, guess what: your claim is ineligible.

    It doesn’t matter at all for the analysis that “I could be thinking about something else” when I change the drug dosage, or “I could have instructed the machine to use a look up table on a local server instead of a remote server.” Those facts are utterly beside the point which is that the claim is ineligible because (it doesn’t get much simpler than this, folks) it takes some ineligible subject matter out of the public domain where it belongs.

    To break it down further for even the slowest minds out there: the concerns about “pre-emption” are not limited to the subject matter protected by the particular claim at issue in any given case (although such concerns could be weighty depending on how awful the claim is). The expressed concerns about “pre-emption” are concerns about the effect that thousands, or tens of thousands, or hundreds of thousands of such claims would have on the ability to access and understand the fundamental building blocks of technological progress (i.e., facts, correlations, logic, reasoning, etc).

    The bizarre (and already miserably failed) approach of maximalists like “anon” and his cohorts is exactly akin to arguing that a Federal law banning the word “truth” doesn’t violate the First Amendment because, hey, you could always use the word “acccurate”. If that sounds ridiculous to you, then rest assured that’s how these arguments about “pre-emption” sound to people like me who understand why we have an eligibility requirement in the first place.

    Look, I’ve been in this patenting business for decades now. I’ve seen it all. I’ve seen charlatan clients end up in Federal prison, where they belong. There are limits on the subject matter that can be protected with a patent because when you remove those limits the least innovative people on the planet — at least from a technological perspective — will rush in and try to grab up as much land as possible. And then what are they going to do? They’re going to make me pay for it. Been there, done that. Seen it. The experiment was tried. It was a catastrophic failure and we’re still cleaning it up and we will still be cleaning it up decades from now.

    Patent attorneys that are confused by this need to get out of the business. Find another grift.

    1. 4.1

      “Controlling access to data” using “rules” is ineligible subject matter.

      Period.

      The specificity of the rules is irrelevant, and the context is irrelevant, whether that context is a computerized database or whether it’s the kindergarten classroom where every crayon-handed “attorney” involved with that cert petition belongs.

    2. 4.3

      You are oversimplifying the issue. Of course a claim that covers ineligible subject matter is unpatentable. The disputes arise when the claim looks almost like it covers ineligible subject matter while it literally falls under one of the 4 categories allowed by statute. The question asked in the petition is about whether the scope of the claim plays a role in evaluating whether a claim “looks almost like it covers ineligible subject matter.”

      1. 4.3.1

        PiKa The disputes arise when the claim looks almost like it covers ineligible subject matter while it literally falls under one of the 4 categories allowed by statute.

        “Literally falling under one of the 4 categories” does not resolve the question of eligibility because literally anyone with a minimum understanding of patent law and the English language can write a claim that “literally falls under one of the 4 categories” which is, nevertheless, so undeniably ineligible that it would take a judge or an Examiner five seconds to tank the claim as such.

        The question asked in the petition is about whether the scope of the claim plays a role in evaluating whether a claim “looks almost like it covers ineligible subject matter.”

        Of course the “scope” of the claim can “play a role” in such an evaluation. But it’s not dispositive.

        Consider:

        1. A method comprising drinking rehydrated milk while riding in a rocket and thinking about recent political events in the Midwest US.

        1. A method comprising drinking rehydrated milk while riding in a rocket and thinking about the likelihood that James Gabolinski will win the election for mayor of Flagville by more than 200 votes.

        Look how narrow claim 2 is!!!! Wowee zowee. How does it affect the eligibility analysis? Assume in your answer that drinking rehydrated milk on a rocket is in the prior art.

        Likewise,

        1. A method of controlling a user’s access to content in a database, said method comprising gathering data regarding a user’s underwear purchase choices and comparing said data to data in a look-up table.

        2. A method of controlling a user’s access to content in a database, said method comprising gathering data regarding a user’s underwear purchases choices, wherein said underwear purchase choices are stored on a server remotely connected to said database, wherein said server is controlling a plurality of parameterized data displacement protocols in a password-protected pseudomemory, and wherein said underwear purchase choices are selected from a group consisting of white, silver-striped, pre-streaked, and rainbow polkadotted varieties, none of which are copyrighted.

        Assuming the only new aspect of claim 2 vis-a-vis the prior art is the underwear purchase choices. Look how narrow those choices are! Does that matter for eligibility purposes? Nope, not at all. Does it matter that a judge could be confused by all the other verbiage in the claim? Nope. Does it matter that a l0 w life “attorney” could create a giant cloud of choking dust by continually beating on the “doesn’t pre-empt all underwear choices” drum? Or beating on the fancy “technology” recited on the claim to show that it’s “not abstract”? Nope.

        None of that matters. And this isn’t difficult stuff. It’s easy. And the results are predictable.

        The problem that a tiny tiny fraction of well-heeled entitled folks out there have is that they don’t like the result. Well, boo hoo hoo.

        1. 4.3.1.1

          Done with your rant yet?

          Maybe you want to realize what I have told you before: there are two aspects to 35 USC 101. There is the statutory category aspect and there is the utility (of the Useful Arts) aspect.

          Your strawman counter here (and yes, feel free to look up the meaning of the word and see that YOU are using a strawman with your “hypos”) conflates the two different aspects of 101, and wants to pretend that statutory categories needs to be more to protect for the other aspect.

          Such conflation is neither necessary nor desirable.

          It is also not what the law plainly states.

        2. 4.3.1.2

          MM, it can’t be as easy as you tell. Even you could not predict that McRo, Enfish, or DDR would be held eligible.

          1. 4.3.1.2.1

            Even you could not predict that McRo, Enfish, or DDR would be held eligible.

            LOL

            Right. But those cases are the exceptions that prove the rule. They are also completely incoherent and filled with erroneous, internally contradictory and self-serving statements. That’s why their results could not be predicted beforehand.

            Most of the cases that are rejected by the PTO (or that have been rejected by the PTO) are very predictable and the claims fail for one or more of the usual set of sensible reasons. And that doesn’t even get to the claims that are proposed by know-nothing applicants and which most attorneys won’t touch because they are ineligible g@ rbage.

            1. 4.3.1.2.1.1

              A stopped clock is right twice a day.

              Back in 2015 I read through the DDR Holdings case documents and the patents in question. The claims were clearly drafted by someone that had little grasp of the technology.

              The claims all protect effectively calculable operations, i.e.,
              computerization of pencil and paper calculations.

              I understand why Chen found the claims valid. No one in the courtroom (either by presence or by writing) understood computability theory, and in such a case good lawyering trumps judicial consistency.

              I have skimmed McRO. Those claims also seem to protect effectively calculable operations while the Enfish patents seems to have included patent-eligible and patentable claims.

              I gave the USPTO some feedback on DDR Holdings back in 2015:

              101 Eligibility and WWW or Distributed Program Systems.

  10. 3

    The third question here is most interesting to me…

    To each, his own, as they say. Question 1 is the most interesting to me, and question 3 the least interesting. Incidentally, if I were betting on which question is most likely to beget a cert. grant, I would put my money on Question 1. These justices are done with § 101 for the foreseeable future (that is my perception, not a quote from anything that they have said, just to be clear), and this particular case is not a good vehicle for question #2.

      1. 3.1.1

        Given the facts averred to on the record, how is this not a good vehicle for question 3?

        On this record, you have an abject admission by an opposing party that pre-emption is not in fact reached. You have an abject denial of the lower court to apply (if taken at face value, at least the argument of) the direct requirement of the Supreme Court – and in an apparent “bright line” manner at that.

        This eminently looks like a way to reel back some of their own damage while BOTH slapping the CAFC AND removing a bright line test.

        1. 3.1.1.1

          you have an abject admission by an opposing party that pre-emption is not in fact reached.

          Pre-emption of what, exactly? What exactly was “admitted”?

          Rules aren’t eligible subject matter. You can’t get an eligible patent on a method of “evaluating” something by comparing what is observed to a table.

          What on earth would be the point of handing out patents on cr @p like that except to make a bunch of entitled rich people even richer?

          Serious question. Amazing that some patent attorneys have a difficult time with this but then again we know that the profession was infested by glibertarians and con artists when the CAFC laid down the welcome mat for them many many years ago.

          1. 3.1.1.1.1

            You want to focus on the pre-emption issue there Malcolm?

            I know that you would rather rant on and on and not talk about substantive legal issues and instead focus on your feelings, but quite frankly, your feelings bore the living S out of me.

        2. 3.1.1.2

          On the scale of abstractness, IMHO the claim in question is closer to abstract than I would like for an evaluation of question 3 to consider.

      2. 3.1.2

        When I first read the claim in isolation of the specification (i.e., like an examiner would), I thought: This is a memory device storing data and a record of permissions. How is that novel?

        When I read the specification, I understood the objectives of the patentee a little better.

        The application was filed in 1999 – peak Napster, really – when DRM was a hot issue. Remember how software licensing was uniformly accomplished back in 1999 (and is still common today): You buy a DVD-ROM that comes with a case or jacket bearing a sticker with your serial key. You type in the serial key to complete software registration and activate the product, and optionally to associate it with your online account.

        The point of novelty in this patent is encoding each user’s specific license rights and restrictions on the nonvolatile portable media. I can imagine three advantages to this:

        (1) It avoids the hassle of manual-entry serial keys. Nobody likes typing those things in.

        (2) Might also be more secure. Unique serial keys that are simple enough for manual entry are mass-produced by a generator algorithm, which are routinely cracked – allowing people to generate new, unique serial keys. An on-media license encoding doesn’t require manual data entry and can use stronger encryption techniques.

        (3) Encoding the license restrictions on the (nonvolatile) media also addresses another type of copyright-protection evasion. Some software clients in 1999 were designed to contact a key server over dialup or the internet, where the key server informs the software of the user’s rights and limitations. Some clever people evaded that system by setting up a proxy server that told the software client to grant all permissions to the user. Encoding the rights and limitations on the nonvolatile media (which, presumably, features validation mechanisms to guarantee its authenticity) may be more resistant to proxy-based cracking mechanisms.

        Is it novel? I can’t think of any example of nonvolatile-media, per-user license encoding that exists today, let alone back in 1999. Of course, novelty isn’t what’s at stake.

        The question is whether the claim is preemptive of encoding user permissions. Given the context, the claim limitations that recite the encoding of license rights and restrictions on nonvolatile media are legitimate and well-chosen. However, the last limitation (“displaying to the user whether access is permitted…”) is a peculiar way to end this sequence of steps. The claim may have been stronger if that limitation and provided a more meaningful use of the encoded licensing restrictions: granting or restricting access to the content based on the evaluation. But based on the PTAB decision, I don’t think that it would have mattered.

        Step 2A: The claim recites the abstract idea of “payment for and controlling access to data,” which is characterized as an “abstract idea.”

        This conclusion, like many others by many courts, demotes the “abstract idea” step of Alice to a mere identification of a field of use. Any claim where its field of use can be described as an “abstract idea.” Diehr recites the “abstract idea” of computerized control of an industrial process. Chakrabarty recites the “abstract idea” of genetically modifying bacteria for selected purposes. PlanetBlue recites the “abstract idea” of adding voices to animated avatars. We can do this all day.

        Alice did not propose a Step 2A test that was so facile and pointless. Rather, Alice identified an “abstract idea” that fairly described the point of novelty: not just the field of financial transactions, but intermediated settlement.

        I don’t think that this distinction will change the outcome of Step 2A. But I do think that it changes the analysis for Step 2B in ways that might change the outcome.

        Step 2B: The PTAB held that the “nonvolatile media” elements are merely a field-of-use limitation. Here’s the clincher:

        With respect to the recited “data carrier” and “payment validation system” in claims 3 and 14, the specification notes that the data carrier may be a generic, known hardware device such as a “standard smart card,” and that “the payment validation system may be part of the data supplier’s computer systems or a separate e-payment system.”

        Okay, fair enough, but what about the point of novelty? –

        Patent Owner has not argued persuasively that any of the other potentially technical additions to the claims performs a function that is anything other than “purely conventional.” The use of a data carrier and the linkage of existing hardware devices appear to be “well-understood, routine, conventional activities” previously known to the industry.

        …which demands the response: So what? If I build a mousetrap with a novel feature, it doesn’t matter if it is a collection of purely conventional parts exerting their purely conventional functions: a spring, a metal platform, a bar, etc.

        I’m not sure whether the patentee failed to explain the invention adequately – as I understand it – or whether the PTAB just blew off the explanation. The PTAB opinion, at least, implies that the patentee did not focus on the technical aspects I noted above.

        Lastly: The patentee invoked DDR Holdings for the notion that this case is centrally about a problem arising in technology: copyright protection mechanisms. The PTAB dismissed that analogy because “data piracy exists in contexts other than the Internet… for example, data piracy existed in the contexts of compact discs and DVDs.” But DDR Holdings isn’t exclusively limited to novel problems in the context of the Internet, but novel problems in a technical field – such as: portable digital media.

        1. 3.1.2.1

          DS: So what? If I build a mousetrap with a novel feature, it doesn’t matter if it is a collection of purely conventional parts exerting their purely conventional functions: a spring, a metal platform, a bar, etc.

          If the novel feature of the mousetrap is “wherein the picture on the trap is a picture of a winged mouse with a halo” then you will, in fact, have a huge eligibility problem if the all of the other features are conventional features, performing conventional functions. And that’s as it should be. You can’t turn an obvious claim into a patentable claim by reciting ineligible subject matter, regardless of how non-obvious that ineligible subject matter is.

          Now is when most maximalists would say “But that kind of claim limitation will just be ignored and it’s a proper 103 question then.” Which is, of course, the silliest response ever and totally exposes the game being played by the world’s biggest whiners.

          The ineligible abstraction in the claims at issue here is properly characterized as “granting access based on comparing data X to a look up table”. There is nothing — absolutely nothing — that amounts to “significantly more” in the claim. Put data X on a non-volatile storage media? Seriously? That’s “significantly more”? Give us a break already.

          Here’s the deal: if you have “significantly more” in your claim, then you should be claiming that stuff without the ineligible abstrac g@ rb age.

          1. 3.1.2.1.1

            Your strawman is disposed of with the notion of “functionally related.”

            But you already knew that, having made such admission against your interests long ago.

        2. 3.1.2.2

          The patentee invoked DDR Holdings for the notion that this case is centrally about a problem arising in technology: copyright protection mechanisms.

          And they should be sanctioned for that because it’s complete donkey dung.

  11. 1

    The section on “undue preemption” is short, just three paragraphs of the petition (emphasis added, case italics omitted) – with the third paragraph addressing a procedural matter, omitted from comment here:


    This Court’s Alice inquiry is aimed at ensuring that a patent will not “‘inhibit further discovery by improperly tying up the future use of’ the[] building blocks of human ingenuity.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 85 (2012)). Yet the Board in these cases refused to consider undisputed evidence that Smartflash’s patents did not “tie up” any “building blocks” of future innovation. On the contrary, respondents’ experts repeatedly admitted that there are a variety of ways to implement the alleged abstract idea of conditioning and controlling access to content based on payment. See supra pp. 7-8.

    The Board’s approach here reflected the Federal Circuit’s own erroneous approach to implementation of the Mayo/Alice framework, one that rejects the need to show undue preemption to find ineligibility under § 101***. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 2511 (2016); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1375 (Fed. Cir. 2017). That approach may be an (improper) extension of this Court’s observation, in Mayo, that “[c]ourts and judges are not institutionally well suited to making the kinds of judgments needed” to determine whether a claimed invention is unduly preemptive. 566 U.S. at 89. But, if that is the rationale, it has no application in a case like this one, where the evidence of preemption was presented to a panel of APJs who are chosen for their technical competence. See 35 U.S.C. § 6(a) (“administrative patent judges shall be persons of competent legal knowledge and scientific ability”) (emphasis added). To invalidate a patent under § 101 in these circumstances without considering evidence of lack of undue preemption finds no support in this Court’s decisions.

    This case offers an appropriate vehicle to take up the question whether evidence of preemption is relevant to the PTO’s evaluation of patent eligibility**. To be sure, the Federal Circuit did not write any opinion, and respondents did provide an alternative basis for affirmance of the challenged administrative determination – namely, that Smartflash was collaterally estopped from defending the patent eligibility of its inventions based on the Federal Circuit’s decision in Smartflash I. See supra note 4. But if petitioner is correct about the significance of evidence of lack of preemption in a CBM proceeding, that would undermine any collateral estoppel ruling as well.

    In a nutshell: The petition seeks to have the Court hold the lower court to the upper Court’s admonition as to why “ineligibility” needs to be wielded like a sword. Absent that reasoning (and evidentiary support for that reasoning) – absent THAT need – the sword must be sheathed.

    NOT stated here though is the basic notion that ANY such futuristic, projective, subjective conjectural attempt at GUESSING what (merely) MAY happen in the future violates the Constitutionally limited authority of the Supreme Court (lack of present case or controversy) – “MAY” necessarily includes the possibility of “MAY NOT.”

    Also not stated here is that the very purpose of granting patents is that such BECOME the building blocks of future innovation.

    That’s how innovation works.
    That’s the PURPOSE of having a patent system in the first place
    .

    If taken at its word (fully), the words of the Court yield the nonsense that patents – as building blocks – are not patent eligible. NO patents (at all) are patent eligible.

    Be that as it may, the line of attack here IS that what seems clear here is that the admission against interest in this case was improperly omitted from the deliberation. And that omission bears on the executive office SHOWING that the need for the judicial exception TO BE APPLIED – being absent – forecloses the application of that exception.

    ** It should be emphasized (but was not), that the executive branch during examination does not have the power of the judicial branch to apply “common law” law writing (EVEN IF we were to accept that such may be used for patent law by the judicial branch). Additional comment on this to follow.

    This then may be seen as a (yet another) natural offshoot much like the Berkheimer (You cannot ignore items of a factual basis) case. Evidence as to a factual basis in asserting that “undue preemption” occurs must – in order to make a prima facie case – be presented by the Office making any such rejection. If the Office omits that “showing,” or omits providing the evidentiary basis of that “showing,” then the “required need” of applying the exception is not present.

    *** Is this calling out for a new “additional” step to the Alice/Mayo two-step? Is there a “must meet” requirement step that eliminates the exception if some BASIC building block can be shown to not be entirely pre-empted? Further yet, as noted above, does not the Office have the burden to show that such “entire” pre-emption is evidenced?

    What this might do is curb the “Gist” effect. “Gist” too much and all of a sudden your weapon is removed because the rest of the claim provides that total pre-emption (of the larger “Gist”) is no longer obtainable. “Gist” too small and there will be NO match to a Supreme Court case.

    1. 1.1

      additional view:

      Of course, another fallout of this is to highlight the LAW WRITING aspect of any lower court (as admitted to by the CAFC) or even law writing by the executive branch (as currently being done).

      The executive branch should not – cannot – be confused with the judicial branch when it comes to writing law by way of “common law” law writing.

      Absent an EXACT factual match with an adjudged case), any new case is having law written by way of common law development. This is what the CAFC has defined as the application of the Supreme Court’s Alice/Mayo two step (now three step?) process.

      In the examination phase then, in the executive branch, to AVOID the (improper) law writing approach, “Gisting” must result in an exact match with a Supreme Court case, OR common law law writing is being undertaken. The problem is obvious: NO case being examined will present the exact same fact pattern.

      As should be appreciated by the typical lowly scrivener, the scrivinings of the Supreme Court implode under critical review.

      1. 1.1.1

        You will forgive us if we don’t hold our breath until such critical review makes an appearance in this comment section.

    2. 1.2

      GUESSING what (merely) MAY happen in the future violates the Constitutionally limited authority of the Supreme Court (lack of present case or controversy)

      This makes no sense whatsoever.

      When arriving at a judgment, the Supreme Court, like every other court, is perfectly free under the Constitution to use logic and reason to extrapolate and consider the future effects of its judgment. To suggest otherwise is, to put it bluntly, id i 0 tic.

      1. 1.2.1

        It is NOT a consideration of a present item unfolding into the future as much as it is taking a view of some (unknown – and unknowable) future item which may never come to pass as BEING the basis of the authority NOW.

        Wake up son.

    3. 1.3

      Also not stated here is that the very purpose of granting patents is that such BECOME the building blocks of future innovation.

      McRO provides some helpful guidance here.

      The district court opinion included a preposterous statement: “While the patents do not preempt the field of automatic lip synchronization for computer-animated 3D animation, thy do preempt the field of such lip synchronization using a rules-based morph target approach.”

      The Federal Circuit responded:

      McRO argues that its claims cannot preempt the field because other techniques exist that automate facial synchronization by capturing actors’ facial motions and applying those motions to 3-D animated characters.

      Defendants claim broad preemption occurs because the rules only reflect relationships “that any intelligible lip-synchronization process must consider.” The relationships expressed by these rules, Defendants argue, inevitably capture “a preexisting fundamental truth” about how a human mouth looks while speaking certain sounds over time, preempting all possible rules-based methods.

      (However,) claim 1 requires that the rules be rendered in a specific way: as a relationship between sub-sequences of phonemes, timing, and the weight to which each phoneme is expressed visually at a particular timing (as represented by the morph weight set). The specific structure of the claimed rules would prevent broad preemption of all rules-based means of automating lip synchronization, unless the limits of the rules themselves are broad enough to cover all possible approaches. There has been no showing that any rules-based lip-synchronization process must use rules with the specifically claimed characteristics.

      1. 1.3.1

        Thanks David, but your reply does not address the point that I raised.

        The reason WHY we have a patent system (including the “limited times” proscription) is because we WANT those things that are patented to provide the foundation for future inventions.

        The “logic” of the Court drives directly into a brick wall when the very purpose of having patents is realized.

        1. 1.3.1.1

          Of course, even to slam into that brick wall, the Supreme Court had to drive through the guard rail of the fact that patent law already has an experimental use exception to Infringement, which renders moot their “authority” from the supposition of “inhibit further discovery.” Exploitation and money making are of course different, but the Court really should try to get it right.

        2. 1.3.1.2

          The Lord Chancellor in Earl of Oxford’s Case (1661) observed that “the cause why there is a Chancery is, for that men’s actions are so diverse and infinite, that it is impossible to make any general law, which may aptly meet with every particular act, and not fail in some circumstances

          1. 1.3.1.2.1

            Too bad that THAT does not apply to US and US statutory law and US statutory law especially designated by the Constitution as belonging solely to one specific branch of the government.

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