ASGHARI-KAMRANI V. UNITED SERVICES AUTOMOBILE ASSOCIATION (Fed. Cir. 2018)
Today the Federal Circuit issued three parallel decisions all stemming from the patent case brought by Asghari-Kamrani. The first two decisions affirm the E.D.Va. judgment-on-the-pleadings. In those cases, the district court held that the patentee (Asghari-Kamrani) failed to state a plausible claim for relief within her complaint. In particular, the court found that all the asserted claims were invalid for lack of eligibility. On appeal, the Federal Circuit AFFIRMED in a R.36 Judgment Without Opinion. [Link].
The third decision is an order of dismissal of a parallel appeal from the PTAB (CBM Review). The PTAB had found all of the claims unpatentable as obvious or anticipated. On appeal, though the Federal Circuit dismissed the appeals as moot — and vacated the USPTO decisions.
These appeals [from the PTAB] (Nos. 2018-1040 and 2018-1041) are dismissed as moot, and the decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board are vacated in view of our affirmance of the U.S. District Court for the Eastern District of Virginia’s judgment of patent ineligibility in Asghari-Kamrani v. United Services Automobile Ass’n, Appeal Nos. 2016-2415, 2017-2101, and 2017-2191, and the parties’ agreement at oral argument that affirmance of the district court’s ineligibility decision has the effect of invalidating all claims of U.S. Patent No. 8,266,432.
I need to think through this further, but for some reason, the automatic vacatur of the PTAB decisions does not sit well with me.
= = = = =
Asghari-Kamrani’s claims are directed to a system for authenticating a user — using a first central computer to general a temporary dynamic code and a second central computer to validate the code when submitted.
25. An apparatus for authenticating a user during an electronic transaction with an external-entity, the apparatus comprising:
a first central-entity computer adapted to: generate a dynamic code for the user in response to a request during the electronic transaction, wherein the dynamic code is valid for a predefined time and becomes invalid after being used; and provide said dynamic code to the user during the electronic transaction; [and]
a second central-entity computer adapted to validate a digital identity in response to an authentication request from the external-entity, which authentication request includes a user specific information and the dynamic code as the digital identity which dynamic code was received by the user during the electronic transaction and was provided to the external entity by the user during the electronic transaction, and to authenticate the user if the digital identity is valid and to provide a result of the authentication of the user to the external entity during the electronic transaction.
The district court noted that the computers wouldn’t be necessary to run this invention (except for the fact that the claims expressly require a computer). In explaining the abstractness of the claims, the district court explained:
The claims are directed to the abstract idea of using a third party and a random, time-sensitive code to confirm the identity of a participant to a transaction. This formulation is admittedly verbose. It is verbose because the patent claims combine two abstract ideas: the use of a third party intermediary to confirm the identity of a participant to a transaction and the use of a temporary code to confirm the identity of a participant to a transaction. It is an obvious combination, and nothing about the combination removes the patent claims from the realm of the abstract.
As to Alice/Mayo step two – the addition of computers do not somehow turn this abstract idea into a patent eligible invention.
Thanks, no I was considering the import of “adapted to…” language relating more to function in method claims vs. “configured to…” relating more at structure in machine claims.
…difference without a distinction?
I have a question, instead of the “adapted to” language, would the result have been different perhaps were the language “configured to” employed, and some enabling code included in the spec when it was filed ? thx
Chris,
Why do you think that “some enabling code” is important? Are you confusing a legal document with an engineering document?
Dennis says:
>I need to think through this further, but for some reason, the automatic
>vacatur of the PTAB decisions does not sit well with me.
Technically, there was no basis to vacate the PTAB final written decisions. The CAFC should have simply dismissed the appeals as moot as the challenged patent was invalidated in a parallel judicial proceeding before the PTAB appeal was decided. The vacatur is a harmless thing, though, since the outcome is still the same, the patent is dead.
I hope the PTAB internal statistics don’t count this as a reversal or ding against the PTAB judges who issued the final written decisions, since the vacatur had nothing to do with the merits (and given the outcome of the CAFC decision, it suggests that PTAB was probably right).
LR,
Help me out here, based only on your comments of “the challenged patent was invalidated… before the PTAB appeal was decided.,” why in the world would the PTAB judges NOT be dinged for proceeding on such? Yet you want: “I hope the PTAB internal statistics don’t count this as a reversal or ding against the PTAB judges who issued the final written decisions”
Regardless of your attempt to insert “vacatur had nothing to do with the merits” IF the matter was already resolved, why are resources being needlessly wasted?
That’s some “patent quality” right there. Ed Tx dismisses on 101, the PTAB invalidates on 102 and 103. At least the fee and maintenance money spent well on that one… shouldn’t someone have to cough up something for such a cluster?
Section 101 has become the lazy-judge’s 103. A sign of change on the horizon: Ds and Rs are jointly crafting patent re-reform legislation.
Amen
“Section 101 has become the lazy-judge’s 103.”
It’s as if the Act of 1952 never was passed…
(most likely, Congress will need to do “substantially more” and exercise their Constitutional power of jurisdiction stripping and remove the non-original jurisdiction of patent appeals from the Supreme Court)
Ds and Rs are jointly crafting patent re-reform legislation
Go crazy.
You aren’t going to own “correlations” and computer-implemented junk will still end up in the t 0 ilet.
People need to get elected and while the patent glibertarian crowd is filled with hypocritical know-nothings who will do and say anything, normal people won’t put up with the h0rseshit.
The Silly C0n Valley Bros always think the world revolves around them. But they just aren’t that smart. [shrugs] Ah well. There will always be plenty of jobs out there for people who can write instructions for computers.
What a bunch of (typical) Accuse Others meme…
You might have a little too much emotion invested in this issue. Step away from using your “computer-implemented junk”, go mix up a Mai Mai, and find a hammock, BRO!
Section 101 has become the lazy-judge’s 103.
Says a lazy commenter who can’t wrap his head around some of the most basic logical constructions in patent law.
Says the commenter shouting so loudly with his eyes glued shut that he can no longer see or hear reason.
I’m not shouting.
I’d love to hear the “reasoning” that says you should be able to protect abstract and otherwise ineligible subject matter by reciting a prior art structural context for that subject matter (e.g., “wherein said useful and non-obvious information is viewable in a room, wherein said room has lead walls”).
Go ahead. Let’s hear it. I’ve been waiting fifteen years and all I’ve heard was whining about some rich people not getting richer. Dennis Crouch is almost surely smarter than you and he hasn’t been able to come up with anything. Nobody has. Maybe you’ll be the first. Make everybody’s day and save the world.
Are you done with your fit? your throwing around straw? your assuming your own hackneyed conclusion and then wanting others to make your case?
Save the world? Maybe save yourself from yourself, deal with the cognitive dissonance that appears to overwhelm you and get into a field in which you can believe in the work product produced. You are doing NO ONE any good being so anti-patent and being (purportedly) in a position trying to create product that protects innovation.
You just confirm my post. This simply sounds like someone with his whining with his head in the sand. As always, thanks for the entertainment.
“nobody has” because you wouldn’t admit it when you saw it. 101 doesn’t say anything about “abstract ideas.”
Methods are eligible subject matter, even if a machine performs the method. Deal with it.
“even if a machine performs the method”
I would daresay “ESPECIALLY if a machine performs the method”
no longer….?
More than 13 and a half years, Malcolm has been a consistent beacon of blight and lack of critical reasoning.
MM makes me laugh. That’s more than I can say for somepeople.
…and your laughter is all that matters…
that is literally true
only in your mind – and THAT is one of your biggest problems as you attempt to interact with other people.
This made me laugh (although it is a truth universally acknowledged that my laughter counts for less than a tinker’s cuss).
Re: “the automatic vacatur of the PTAB decisions does not sit well with me.”
I think the issue there should be is whether or not a prior Fed. Cir. sustained invalidity of all claims in suit on Alice FULLY moots the IPR invalidity decisions on the same claims on 103? This is to suggest one situation in which it might not. Suppose a patent owner had a spec with some real meat in it re the same invention, that could have been claimed before but were not. Supposed they filed such amended narrower claims that would distinguish over Alice and the 103 art in a reissue. My understanding [which anyone is free to substantively rebut] is that the PTO would consider the patent owner precluded from now doing so by the IPR decision [if no claim amendment was even attempt there] but not by the Fed. Cir. decision?
All other conditions presumed to be passed (e.g., timing), how is EITHER IPR or court action preclusion of amendments in a reissue?
See, e.g., 37 CFR § 42.73: “A patent applicant or owner is precluded from taking action inconsistent with the adverse judgment, including obtaining in any patent: [] A claim that is not patentably distinct from a finally refused or canceled claim”.
Thanks JCD – but I am not sure that THAT helps, given the premise here that the reissue would be to claims that meet 37 CFR § 42.73 (and would do so in view of either IPR or court decision).
Thanks JCD.
Anon the “patentably distinct” requirement against recapture in 7 CFR § 42.73 means patentably distinct on a 103 basis from the prior cancelled claims of that same patent in the prior inter partes proceeding.
Not sure if we are talking about the same thing.
My question was to the preclusion of amendments – not the preclusion of amendments that may try to recapture material LOST as being not patent able.
I thought it self evident that a specific item deemed not patent able (no matter the forum) is, well, not patent able.
Why are the judges not castigating the attorneys for not being able to find prior art on these two well known ideas and then arguing 103? 101 is the free pass for lazy attorneys.
lazy attorneys
The lazy attorneys are the attorneys who are too lazy to make a good argument for ineligibility.
Because there is literally no “do it on a computer” claim that can’t be tanked under 101. Maybe not on the pleadings, but at some point.
All you need to do is make the right arguments. Of course, attorneys are not always allowed to make the right arguments for reasons that we’ve discussed here many times.
The big picture that is missing is that information processing is a physical process.
These claims can only be practiced by a machine that takes time, energy, and space to practice the invention.
The judges are just horrendous. IMHO their actions warrant impeachment.
Thinking is a “physical process” too according to your silly criteria.
Try again.
Machines do not think.
The continued zombification (proxy, anyone?) of the Mental Steps Doctrine is an affront on ACTUAL thinking.
LOL.
You’re still desperately missing the point. You realize that your game is transparent, right? “Machine” isn’t a magic word that confers subject matter eligibility. It never will be.
I am not the one desperately missing the point.
That would be you.
So very Accuse Others of you, Malcolm.
If you look at a fNMR scan, it’s evident that thinking really is a physical process.
, it’s evident that thinking really is a physical process.
….and? So?
Good point. A few observations:
(1) This patent nowhere defines “computer” or “code.”
(2) Claim 36 provides that the first and second entity computers can be the same computer.
(3) The claim only requires that the computer be “adapted to” generate or validate the code. They do not actually have to generate or validate. They must merely be “adapted to” performing that task.
A human brain is “adapted to” generating and validating code. Moreover, because the term “computer” is not defined, its BRI should be “something that computes,” which included human brains. Is it possible that this claim reads on human individuals, and it is thus anticipated by any printed description of a human being?
>>Moreover, because the term “computer” is not defined, its BRI should be “something that computes,” which included human brains.
Greg, this is ridiculous. No person skilled in the art —NOT ONE–would read these claims as including a brain.
A patent application is supposed to focus on what is new. It is not supposed to have to define the entire field.
> (3) They must merely be “adapted to” performing that task.
Again ridiculous. If they put in that it actually did generate the result then it would be mixing methods with apparatuses.
No person skilled in the art —NOT ONE–would read these claims as including a brain.
Fair enough. This is your art field, not mine, so I will defer to you on this point.
They must merely be “adapted to” performing that task.
Again ridiculous. If they put in that it actually did generate the result then it would be mixing methods with apparatuses.
Hm, here I am going to disagree about the ridiculousness of the assertion. Yes, I agree that reciting “generate” in an apparatus claim would mix method with apparatus, which one must not do. Still and all, any computer is “adapted to” any outcome that the computer can do.
This merely as much as to say that what the patentee invented here was a method, not a computer, so the patentee should have claimed a method, not a computer. If you invent a method and claim a machine “capable of” or “adapted to” performing the method, you have no one to blame but yourself when the claim later fails because it turns out that a prior art machine is “capable of” or “adapted to” the performance of the (genuinely novel) method.
“Still and all, any computer is “adapted to” any outcome that the computer can do.”
See the Grand Hall Experiment.
One cannot “just use” a computer (for any new capability by way of software) until first that computer is changed and configured with the software.
This not being your art field, you should be especially wary of the anti-patent banal rhetoric.
computer is changed and configured with the software.
Changed in what manner? Describe these structural changes. For example, describe the structural change to a computer that is configured by software to “authorize” a transaction involving real estate versus a computer that is configured by software to “authorize” a transaction involving car parts.
Go ahead.
[falls asleep for a million years]
Still waiting. Is there a problem? This should be easy for you.
Again Malcolm with your canard of wanting an optional claim format to be more than merely optional…
“Still and all, any computer is “adapted to” any outcome that the computer can do.”
My computer at home may be capable of certain things, but unless configured or adapted to do so via appropriate software and hardware, it simply can’t and won’t.
Also, the Fed Circuit has been explicit recently about the difference between “capable of” and “adapted to.” See e.g. In re Giannelli.
[T]he Fed Circuit has been explicit recently about the difference between “capable of” and “adapted to.” See e.g. In re Giannelli.
You might want to go back and re-read In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). It really does not get you where you want to go here.
In other words, ordinarily “capable of” and “adapted to” would be interchangeable. As it happens, Giannelli troubled to craft his written description in a manner that gave “adapted to” a narrower import than “capable of.”
Did Asghari-Kamrani also craft his written description with such care? If not, then your observation is beside the point.
This is all merely academic, however. Night Writer’s earlier point about the meaning of “computer” obviates my remarks about anticipation, quite regardless of the “adapted to” issue.
My computer at home may be capable of certain things
Derp derp derp derp.
Greg, what this is is anti-patent judicial activist judges using any means to invalidate claims.
“adapted to” to one skilled in the art means that the machine has structure to perform the functions described.
This whole business of ‘capable of” reminds me of the movie Bedazzled from 1967 with the judges being the devil.
Some good (and ironic) advice for Greg may be found in the Giannelli decision as he himself attempts to use a device in an art field that he admits he does not know or understand:
Physical capability alone does not render obvious that
which is contraindicated. And, on this record, it is not
obvious to modify a machine with handles designed to be
pushed to one with handles adapted to be pulled. A chest
press machine is not a rowing machine, nor has evidence
been shown that it is. In fact, anyone who has used
exercise machines knows that a sure-fire way to cause
injury is to use a machine in a manner not intended by
the manufacturer.”
See the Grand Hall Experiment.
Just because a processor exists that may be made to be changed to any number of different configurations does NOT make all (or even any) of those configurations per se obvious.
What you have stumbled into Greg is the canard of the television show House argument, which employs the opposite takeaway of the Morse case.
In essence, you want to point to the blank machine and say that the blank machine contains within it – as a matter of patent doctrine of inherency – ALL future innovations possible with the blank machine.
As to your pincite for wanting a different takeaway (as if the Giannelli case dictates some special treatment), that pincite actually belongs to Aspex Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir.
2012), the context of that case being vastly different than the legal point in focus here (the “capable of” being an item of actuality, and not an item of potentiality — and the actuality of the items being compared was found to exist, without any “more” to bring the potentiality into being).
Thus, this is NOT an item for which applicant would “need” to choose to limit a meaning, as it is an item that is dictated by PHOSTIA. Such are clearly art field specific considerations that are important to recognize and understand. Much like not attempting to use exercise equipment in a manner not intended.
>>Thinking is a “physical process” too according to your silly criteria.
MM, what is the relevance of that statement? In Deener a human body could carry out the method of grain processing. Irrelevant. The process was for machines to carry out.
Of course, thinking is a physical process. We know that there a bunch of medieval thinkers that are anti-patent that believe they have a mind where the information processing is performed in the spirit world and that information has an ethereal form.
I will put you down in the medieval thinker category–in pen.
A better example of “medieval thinking” would be the sort of thinking where wealthy/powerful/entitled people are permitted to tax or jail others who dare to use reasoning in the process of making a decision (because that reasoning is the “exclusive property” of those entitled wealthy people).
Lovely strawman of “using reasoning.”
You forgot some critical elements of any claim that anyone would (in non-strawland, aka reality) need to have in place — things that would make it so that any actual reasoning would entirely be STILL permitted.
In Deener a human body could carry out the method of grain processing. Irrelevant.
Information and information processing is different than processing physical/structural materials.
Everybody knows this, even if they can’t bring themselves to admit it.
For example, literally nobody thinks that methods of thinking about data are eligible for patenting or should be eligible for patenting. Nobody.
That’s because information processing is different.
It’s why we have a First Amendment protecting “free speech” and not a First Amendment protecting “free material processing.”
I feel like I’m talking to a fricking kindergartner when I explain this stuff to maximalists. And probably in some cases I am talking to actual kindergartners. That would explain a lot.
Lovely strawman you make for those kindergartners that you want to kick.
Come back to reality.
“Information” per se and as such is certainly “different;” but no one is stating otherwise.
Where you have your leave of reason is how you next want to move from “Information” being some “keep out,” to “automatically” making anything at all to do with information processing necessarily something that is outside of patent law protection ON a per se and as such basis.
All you do after that point is employ your feelings and ad hominem.
Regardless of how one may feel about authentication or encryption or other computing-intrinsic issues (in whole or as applied), THIS ought to scream out for its Orwellian nature:
“The district court noted that the computers wouldn’t be necessary to run this invention (except for the fact that the claims expressly require a computer).”
Who cares if Congress wrote a statutory law providing authority/responsibility to the applicant for defining the invention (the claims, as a whole, without picking and choosing and eliminating claim elements), the courts (thanks to the Supreme Court) will decide what the invention “really is” by “Gisting.”
Ignoring the Means here in order to celebrate a desired Ends should be repulsive no matter how (if!) “noble” those Ends may be.
Agreed
Agreed.
Also, I would add the unbelievable ignorance of the statement. Saying that a human could perform the method (given 10 followed by one billion zeros years) is meaningless. This is building machines to perform information processing tasks.
Imagine in Deener if the justices had said these claims read on what a human body could do. These claims will prevent people from processing grain in this way.
Agreed No. 3
I’m more repulsed that the PTO thought, “Use a daily codeword provided by a third-party computer,” was patentable in the first place.
ID,
Patent ABLE of patent eligible….?
Oops “of” ==> “or”
Your “argument” is nothing more than a debunked rhetorical game.
All the grown ups have moved beyond your spewage. The fundamentals of the analysis are never going to change for reasons that have been explained countless times already.
You sound like an idi 0t and that goes for Paul Cole too.
Your feelings are noted – as is the absence of any actual “debunking.”
>I need to think through this further, but for some reason, the automatic vacatur of the PTAB decisions does not sit well with me.
Wasn’t there a case where the dist. ct. said the patent was valid and infringed, but then the PTO invalidated the claims under 103 and the CAFC vacated the dist. ct. decision?
So I guess res judicata to invalidate the claims.