Does Patent Eligibility Vary over Time? HP v. Berkheimer at the Supreme Court

by Dennis Crouch

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) is in my list of top-ten patent cases for 2018.  In the decision, Judge Moore vacated a lower court summary judgment ruling on eligibility — holding that a “genuine issue of material fact” as to whether the claims are directed toward a transformative inventive concept rather than merely a “well-understood, routine, and conventional” application of an abstract idea.  Thus, the decision gave some amount of respect to the traditional procedures associated with providing facts.  Practically, this means that is should be more difficult to challenge patent eligibility on the pleadings or on summary judgment. Likewise, it means that examiners must do a bit more work to ‘prove’ the lack of eligibility.

Now, HP has petitioned the United States Supreme Court on the fundamental law-fact divide:

Whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.

HP Inc., v. Steven E. Berkheimer, Supreme Court Docket No. 18-415 (2018).

A key claim of HP’s brief is that “patent eligibility does not change over time with the state of the art.”  The focus, according to HP is “analysis of the type of discovery sought to be patented.”  I totally agree that HP’s suggestion here should be the law — eligibility need not enter into the question of novelty and non-obviousness.  The difficulty is how to deal with the the Supreme Court’s focus on “whether the claims disclose an inventive concept” as step two of the eligibility analysis framework.

[Read the Petition]

An important aspect of this case is to consider whether HP is something of a wolf in sheep’s clothing. Although HP clearly does not want to be liable to Mr. Berkheimer, HP also may be examining its portfolio that includes tens-of-thousands of patents — many of which have questionable eligibility.

= = = =
In its decision, the Federal Circuit confirmed that claim 1-3 and 9 are ineligible, but that underlying facts are required to determine whether 4-7 are ineligible. U.S. Patent No. 7,447,713.

1. A method of archiving an item in a computer processing system comprising:

presenting the item to a parser;

parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith;

evaluating the object structures in accordance with object structures previously stored in an archive;

presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule.

2. The method as in claim 1 wherein the respective structure can be manually edited after being presented for reconciliation.

3. The method as in claim 1 which includes, before the parsing step, converting an input item to a standardized format for input to the parser.

4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy.

5. The method as in claim 4 which includes selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.

6. The method as in clam 5 which includes compiling an item to be output from the archive, wherein at least one object-type structure of the item has been edited during the one-to-many change and wherein the compiled item includes a plurality of linked object-type structures converted into a predetermined output file formal.

7. The method as in claim 6 which includes compiling a plurality of items wherein the at least one object-type structure had been linked in the archive to members of the plurality.

9. The method as in claim 1 which includes forming object oriented data structures from the parsed items wherein the data structures include at least some of item properties, item property values, element properties and element property values.

Factual Underpinnings of Eligibility: Federal Circuit Denies Rehearing in Berkheimer / Aatrix

Patent Eligibility: Underlying Questions of Fact

Proving the Factual Underpinnings of Eligibility

Berkheimer En Banc: HP Asks Whole Court to Consider whether Eligibility is Predominately Factual

Guest Post: Patent Office Shows New Respect for Software

52 thoughts on “Does Patent Eligibility Vary over Time? HP v. Berkheimer at the Supreme Court

  1. 11

    For those exhibiting and irrational fear of patents (especially patents for certain forms of innovation — the ‘0h n0es computing” innovation); here’s real world controls outside of any benefit of Quid Pro Quo exchange of patenting:

    Apple controlling the market:

    link to motherboard.vice.com

  2. 10

    Anon,

    I was just having a bag of Cheetos and admiring your brilliant analysis. Well done, sir (but I detect that you are actually a m’aam, so my apologies my lady). In particular, your personal attacks against anyone with differing ideas is, I believe, a very effective way to make a point.

    1. 10.1

      Your passive/aggressive attack is misplaced.

      And badly so.

  3. 9

    “An important aspect of this case is to consider whether HP is something of a wolf in sheep’s clothing. Although HP clearly does not want to be liable to Mr. Berkheimer, HP also may be examining its portfolio that includes tens-of-thousands of patents — many of which have questionable eligibility.”

    Remove, “something of” …

    Such blatant, unquestionable hypocrisy is endemic among such goliath companies:

    Place the claims of their same-field patents next to those which they are infringing and voila! ; what’s the eligibility difference?

    Something most of us have known for some years now …

    1. 9.1

      Such blatant, unquestionable hypocrisy is endemic among such goliath companies

      LOL

      But hypocricy is totally absent from the maximalist crowd, right? Their motivations are pure as the driven snow and they never contradict themselves in their vacuous frothy attempts to obtain patents on logic and correlations and anything else that can be characterized by an attorney as “a useful process”.

      Place the claims of their same-field patents next to those which they are infringing and voila! ; what’s the eligibility difference? Something most of us have known for some years now …

      Well, thanks for the admission anyway. Yes, as I’ve been pointing out for about a decade now that the best arguments for eliminating cr @p logic “on a computer” patents from the existing utility patent system are not made because the defense’s lawyers hands are tied, i.e., there is a conflict between the best arguments and the defense’s own patent portfolio. A related reason is that the best arguments will win easily in the Supreme Court but there will be a struggle in the CAFC which is a costly proposition.

      Just follow the Court’s existing reasoning, which is bullet-proof: (1) judicially excepted subject matter is ineligible no matter how you describe it and regardless of the specificity of the context in which it is placed; (2) recitation of an inventive structurally defined context or an inventive physical transformation of matter will “save” a claim that additionally recites otherwise ineligible subject matter; (3) logic is ineligible for patenting; (4) instructable computers exist in the prior art and their sole purpose for existing is to process data according to instructions; (5) the “structure” of functionally or content-limited data is not patentable “structure.”

      Done. Note that I’ve made no assumptions here. The result flows from the existing legal realities like water off a snow capped mountain with the sun shining on it.

      The non-hypocritical thing to do if you don’t like the result is not to pretend that “data objects” are actual “objects”, or that math equations have physical “stuctures” or that “algorithms” (which are basically any logical process, explained at any level of generality, according to S00per Deep Judge Newman) have physical “structures”. But that’s the maximalist game. The non-hypocritical thing to do is to argue that non-obvious and useful logic, as logic, is patentable on its own terms because [insert your argument here], and the Supreme Court was wrong to ever suggest otherwise.

      So go ahead and make the argument, maximalists. Otherwise your whining about “hypocricy” is pretty much a giant obvious j 0ke to those of us who have been thinking about these issues for a long time. Or you can admit that you want a special judge made exception made for X because without that exception nobody will ever write a new program that uses rules and compares data to a look-up table. Go ahead! Admit it. Because you’re very very serious people.

      1. 9.1.1

        Your “5 point bullet proof” reasoning is NOT the court’s reasoning.

        All that you are doing is yet again vomiting your spin and fallacies.

  4. 8

    I totally agree that HP’s suggestion here should be the law — eligibility need not enter into the question of novelty and non-obviousness.

    I also agree with the should be aspects at issue here. One problem, however, is that the Court is (at least somewhat) constrained to decide these questions in view of an actual, existing, statutory text, and that text says “new and useful” (emphasis added). The word “new” implies that the analysis be conducted relative to a given date (what is “new” on one day is “old” on another).

    I do not like the fact that subject matter eligibility of a given claim can change according to filing date. Given the statutory text that they are interpreting, however, the Court is on fairly solid ground when they make it so.

    1. 8.1

      I do not like the fact that subject matter eligibility of a given claim can change according to filing date. Given the statutory text that they are interpreting, however, the Court is on fairly solid ground when they make it so.

      The issue of a time-sensitive eligibility determination is not the “new and useful” part of 101. As RG points out below, the issue is that in the US applicants are allowed to write claims without indicating in the claims what they believe to be inventive with respect to the prior art.

      Also, this use of “time-sensitivity” fuzzes up the issue in an unhelpful way. The “eligibility” of a particular claim does not change over time. The claim is either eligible or ineligible when it is filed. That’s the only time that matters.

      The issue is whether prior art can affect eligibility. And the answer is: of course it can. There is no way around it unless the law regarding claim drafting is completely changed (and the same folks who howl about 101 will howl just as loudly about that — please ask me why and I’ll explain to you).

      1. 8.1.1

        unless the law regarding claim drafting is completely changed

        claim drafting….

        Is that some type of “scrivener control?”

        (let me know what Congress actually wrote about that…)

      2. 8.1.2

        As RG points out below, the issue is that in the US applicants are allowed to write claims without indicating in the claims what they believe to be inventive with respect to the prior art.

        BOTH you and Random are off in trying to make the fact that Jepson claim format is but an optional claim format into some type of 35 USC 101 issue.

        What is it with you Malcolm and this desire to dissemble so on optional claim formats?

        1. 8.1.2.1

          Right on cue. LOL

  5. 7

    The eligibility of a given improvement does not vary over time, but because a claim is (rather inexplicably) not limited to claiming an improvement, the eligibility of a claim does vary over time.

    For example, contrast a Jepson claim that states “An improvement to a conventional book comprising: A fictional story” with the claim “A system comprising: a book, and a fictional story written within the book.”

    A fictional story is simply not a patent eligible improvement, and writing a fictional story is not a patent eligible act. But because claims include non-improvements (i.e. recitations of possibly conventional subject matter) the claims require a time-varying analysis. In the above example, if the claim was inventive of the book (i.e. this inventor taught the art how to make books in a world where there were no books before) the fact that the claim is further limited by an ineligible act is irrelevant. Once it is clear the inventive aspect is not the book (either because the book has become so conventional that we impute its knowledge to one of ordinary skill, or because the applicant evidences conventionality by failing to provide a technical teaching to achieve the feature) then both claims reduce to the same core logic – improving a book by writing a fictional story is not an inventive act.

    1. 7.1

      RG: The eligibility of a given improvement does not vary over time, but because a claim is (rather inexplicably) not limited to claiming an improvement, the eligibility of a claim does vary over time.

      Paying attention, Dennis? Gosh I hope so.

      Queue up the usual suspects now with some in@ne irrelevant screeching about how Jepson claims aren’t required, as if that changes (rather than supports) the irrefutable logic of RG’s statement.

    2. 7.2

      Once it is clear the inventive aspect is not the book (either because the book has become so conventional that we impute its knowledge to one of ordinary skill, or because the applicant evidences conventionality by failing to provide a technical teaching to achieve the feature)

      Just a friendly reminder to everyone that the issue of “conventionality” is Supreme Court dicta. Logic dictates that if I teach the public on day zero that “my eligible invention X is good for doing all species of ineligible subject matter Y” then on day 1 JoeSchmoe’s attempt to claim “Non-obvious ineligible species Y1 in the context of X” is doomed to fail regardless of the fact that X is radically “unconventional” (because I just taught it on day zero).

      How can it be otherwise? JoeSchmoe is going to make it illegal for me to use my own invention because it was “fresh” for Joe when he filed his patent claim? Give us a break already.

    3. 7.3

      Wolfgang Pauli: not even wrong.

      Try again with a meaningful example, please.

      Your “story” example is too loaded with fallacy to even reach the point you are attempting.

      1. 7.3.1

        Your “story” example is too loaded with fallacy

        Identify two such “fallacies”.

        1. 7.3.1.1

          Still waiting for you to identify these alleged “fallacies” you claimed to have identified in the example I provided.

          What’s the hold up? You commented quickly as if you knew what you were talking about.

          1. 7.3.1.1.1

            Still waiting?

            LOL – as if your “instant desires” mean anything, as years go by without you engaging on the merits of counter points presented.

            Malcolm IS the epitome of hypocrisy.

            1. 7.3.1.1.1.1

              Okay, your retraction and apology is accepted. Thanks.

              1. 7.3.1.1.1.1.1

                Except not. Of course.

                But you already knew that.

                D0’H

      2. 7.3.2

        Try again with a meaningful example, please.

        How about:
        A machine, comprising:
        an internal combustion engine; and
        a shaft driven by the internal combustion engine to turn a wheel.

        Now, most people would think that was eligible under 101, though it has problems with novelty and obviousness. But some Examiners would argue that it’s claiming an abstract idea of “turning a wheel” as an “idea of itself” and that the remaining elements are conventional, so therefore it’s ineligible.

        1. 7.3.2.1

          some Examiners would argue

          I don’t care what “some Examiners” would argue. Some Examiners make silly arguments. Some attorneys make silly arguments.

          The fact that you can concoct some ridiculous argument that misapplies the law in an extreme way is not an argument against that law. Your argument here is a perfect example, in fact, of a silly argument that a desperate person makes when they don’t really understand “what’s going on.”

          Are novel non-obvious machines claimed in objective structural terms being tanked under 101 at some stunning rate? On the pleadings? No, they aren’t. So just stop it with the silliness. It’s as bad as “anon” arguing that “everything is ineligible now because everything is composed of existing protons and neutrons.” That’s just screeching nonsense. Literally there is no serious person on earth who believes that. No defendant in any chemical or biotech or manufacture case has *ever* made such an argument and gotten away with it for longer than two seconds. So put a freaking sock in it.

          1. 7.3.2.1.1

            misapplies the law in an extreme way

            You obviously miss the point, Malcolm.

          2. 7.3.2.1.2

            claimed in objective structural terms

            LOL – once again, the canard of Malcolm wanting something that is an optional claim format to be somehow not optional….

          3. 7.3.2.1.3

            I don’t care what “some Examiners” would argue. Some Examiners make silly arguments. Some attorneys make silly arguments.

            The fact that you can concoct some ridiculous argument that misapplies the law in an extreme way is not an argument against that law.

            Actually, it’s an argument that the guidance on the law – whether from the USPTO or from the courts – is unclear. Personally, I have no problems with 35 USC 101. I do have problems with Justice Thomas’ “we need not labor to define the precise contours of the ‘abstract ideas’ category,” and how it’s made a mockery of the court: link to patentlyo.com

            1. 7.3.2.1.3.1

              I have no problems with 35 USC 101. I do have problems with Justice Thomas’ “we need not labor to define the precise contours of the ‘abstract ideas’ category,” and how it’s made a mockery of the court…

              Well said. This is no way to run a rule-of-law system.

  6. 6

    Unremarked deletion of posts in a space that appears to have extremely limited moderation serves to shield the reputations of posters from their own comments.

    1. 6.1

      ?

      Not sure exactly what you are referring to Ben.

      Which poster’s reputation are you concerned with?

  7. 5

    Okay, Dennis, time for you to actually step up and put your brains where your mouth is for a change. You’ve spent years now stating what you want to be reality (i.e., “some software” should be eligible for patenting; “claims like Sequenom’s claim” should be eligible for patenting”) but you never bother to explain why you want these things so badly and you never bother to address the legal/logical issues that necessarily flow from our reliance on a system where patent claims are drafted using words that are (for the most part) freely chosen by lawyers.

    You write:

    A key claim of HP’s brief is that “patent eligibility does not change over time with the state of the art.”

    As written, this is a meaningless statement. It’s true that, in an ideal world, the law governing patent eligibility should not change over time. But it’s absolutely not true that the eligibility of any particular patent claim can or should be determined in a vacuum that ignores the state of the art. That’s a ridiculous proposition, as I will explain for the zillionth time below.

    Dennis Crouch: I totally agree that HP’s suggestion here should be the law — eligibility need not enter into the question of novelty and non-obviousness.

    Are you prepared to defend this statement, Dennis? I mean defend it in terms of section 101 and the judicial exceptions and the US law regarding the scrivening of claims in general. Let everybody know if you’re prepared to defend the statement or if it is just something that The Great Dennis Crouch is pronouncing from his perch in Missouri because … there’s just not enough patents on correlating stuff or applying logic to data. Or something.

    The difficulty is how to deal with the the Supreme Court’s focus on “whether the claims disclose an inventive concept” as step two of the eligibility analysis framework.

    Actually, the “difficulty” is more fundamental than that. Heck, the “difficulty” is recognized pretty much universally in patent systems around the world. Also, this alleged “eligibility analysis framework” is not something that the Supreme Court has carved into stone. Not even close. It’s just one way of approaching the more fundamental issue(s) which don’t disappear because some CAFC judges or a PTO Director propose some “framework” that fits some claims well and other claims less well.

    The fundamental issue is that if eligibility is completely divorced from considerations of the prior art, then subject eligibility is turned into a meaningless drafting exercise where all that is required is a “magic word” (e.g., process, composition of matter, manufacture). A claim drafter need only recite a prior art context to avoid a glaring eligibility problem. Consider the claims:

    1a. Thinking about [insert useful non-obvious correlation].
    1b. A correlation, wherein said correlation is [insert description of useful non-obvious correlation]

    Both these claims are ineligible. It’s a judicial exception (grounded in the First Amendment). For the moment I’m ignoring the fact that we could write this as a “process” and — in some truly radical circles of ign 0rami — that would be enough to satisfy the eligibility requirement (of course, 112 and 103 are also satisfied by the claim which demonstrates how out to lunch the maximalists are).

    Now consider an alternate reality that is (apparently) fully supported by Dennis “Watch Me Flush My Credibility Down the T0 ilet” Crouch). In the world where the prior art can’t be used in an eligibility consideration, anyone can protect the ineligible subject matter above merely be reciting an eligible prior art context. For instance,

    1. A method comprising measuring the length of a little fingernail with a ruler and thinking about [insert useful non-obvious correlation between fingernail length].

    People in the prior art measured their little fingernail lengths with a ruler. You could never protect that step with a patent claim, assuming that 102/103 are doing their jobs. But now those people will be turned into patent infringers if they should dare to think about the ineligible correlation. Note that this isn’t conjecture on my part. I’m not making any assumptions. This is just elementary logic coming down on your proposition, Dennis, like a sledgehammer in the shape of the First Amendment.

    Pretending that the issue doesn’t exist doesn’t make it go away. It just makes the person doing the pretending look like an idi 0t or a li @r (or both). You’re free to choose your path but, dang, seems like the right thing to do would be honest. It’s very unclear to me what’s to be gained by ignoring the problem unless it’s a purely Machievellian stunt (grab as much cash as possible before the “little people” realize they’ve been scammed by the usual suspects).

    Of course, you could go ahead and argue that the First Amendment permits the government to hand out to private citizens (or itself!) exclusive rights to valuable thoughts about correlations. Go ahead and make that argument, Dennis. You’ll be …. famous.

    LOL

    1. 5.1

      1a. Thinking about [insert useful non-obvious correlation].
      1b. A correlation, wherein said correlation is [insert description of useful non-obvious correlation]

      Both these claims are ineligible. It’s a judicial exception (grounded in the First Amendment).

      That’d be a statutory exception, not a judicial one. Neither of those are processes, machines, compositions of matter, or articles of manufacture.

      1. 5.1.1

        That’d be a statutory exception, not a judicial one.

        Thinking is a species of process so by definition it’s not a statutory exception.

        A correlation is something under the sun made by man, i.e., a manufacture. It’s information and, if transmitted or stored, could be detected as a signal (also something made by man). It was the Supreme Court, not Congress, which took signals out of the statute.

        Yes, we can quibble over this. No, it doesn’t matter one bit for the analysis because it’s the Constitution that gives me the right to think about correlations without fear of being hauled into court. Or maybe you think differently about the Constitution? Because you’re a very serious person, after all. We could have a very serious discussion about that, and maybe we could also discuss whether black people and women are sub-human animals because that seems to a very serious topic in some quarters as well. Freedom! Can you smell it? It’s very strong in Missouri, or so I am told.

        1. 5.1.1.1

          A correlation is something under the sun made by man, i.e., a manufacture.

          I- and I think most scientists- would argue that the correlation preexists the discovery, and is not “made by man”.

          1. 5.1.1.1.1

            I- and I think most scientists- would argue that the correlation preexists the discovery, and is not “made by man”

            Now you’re getting into some purely philosophical territory which is where discussions about abstractions usually end up (SURPRISE!). Sophistry is sooooo much fun, ain’t it?

            On a certain level, anything can be “correlated” with something else. Flapping butterfly wings and all that. Do all those “correlations” really “exist” prior to me (or someone else) “making” the (intangible) “link” between them? Do concepts exist before we create words to describe them?

            Surely the answer to this question would be easier to answer if we had more patents protecting information and logic. Right? That’s what’s standing in the way of the art of correlating stuff. Not enough patents. Right?

            1. 5.1.1.1.1.1

              Move the goalposts back please (and try to stay on point).

        2. 5.1.1.2

          we could also discuss whether black people and women are sub-human animals

          Hey, Dennis, is this really the sort of thing you want representing your allegedly educational blog?

          1. 5.1.1.2.1

            (It’s not as if that was a rare occurrence)

            Happy 13 and 3/4 years of the same blight.

        3. 5.1.1.3

          Thinking is a species of process so by definition it’s not a statutory exception.

          Malcolm’s eternal strawman and attempt to move the goalposts by turning possible claim elements into an eligiblity analysis by parsing a claim from how it must be viewed for eligibility (claim as a whole).

          It’s not as if Malcolm hasn’t been corrected many times now for his attempted dissemblings.

    2. 5.2

      Time for Dennis to step up…?

      How many years now have you Malcolm failed to step up to the counter points presented to you?

  8. 4

    The headline here makes a normative assumption.

    A question of:

    Does Patent Eligibility Vary over Time?

    takes on a different normative tone if asked as:

    Should Patent Eligibility Vary over Time?

    A focus on what the intention of the wide open welcoming gate was meant to be (versus how legislating from the bench has attempted to turn it into being) comes from an understanding of what Congress did in 1952 (and why they did as they did in response to an anti-patent Supreme Court of the 30’s and 40’s that had yielded the self-descriptive phrase of “the only valid patent is one that has not yet appeared before us.)”

    Eligibility was never intended to be a “time-shifting” item, and it is only through the scrivining of the Court itself that such “time-dependency” has been written into (contrast with “interpreted”) the current version of 35 USC 101.

    1. 4.1

      Eligibility was never intended to be a “time-shifting” item

      If that’s the case, then whoever drafted the patent statutes was a complete id i 0t.

      So which is it?

      1. 4.1.1

        Your feelings are noted.

        Also noted is that your feelings do not dictate any reality.

        Shall we dredge up your posts reflecting that you simply disagree with the law — as written…?

        1. 4.1.1.1

          your feelings do not dictate any reality.

          Reality: thinking is a useful process.
          Reality: statute says process is eligible.
          Reality: statute’s Constitutionality rests on judicial exceptions, which are based in long-standing understanding of what is and what isn’t eligible and the reality that Congress never indicated it wanted to make mental processes eligible for patent protection, regardless of whether those processes are nakedly presented as useful non-obvious mental processes or couched in some unpatentable (but otherwise eligible) prior art context

          Conclusion: whoever wrote the patent statute was an id i 0t or, generously, hopelessly naive, when it came to drafting the patent statute

          This really isn’t that hard. It’s pretty easy, in fact.

          1. 4.1.1.1.1

            It is always easy for you to be wrong, dissembling, heck, even both.

            So what?

            (none of that changes the statute as written, now does it?)

          2. 4.1.1.1.2

            Reality: statute’s Constitutionality rests on judicial exceptions

            Wow.

            That is not how Constitutional law works (nor how the exceptions work).

            Go back to the basics, Malcolm.

    2. 4.2

      Aside from the issue of how 35 USC 101 should be interpreted, it is worth posing a slightly different question:
      “Is it a good idea to allow patent eligibility to vary over time?”

      Put another way, this question essentially asks whether a patent system that allows for such variability is fit for purpose, in terms of providing predictable outcomes for all parties (patent applicants, patentees, competitors and the public) that are based upon robust logic.

      My view is that the answer to this question is “no”.

      In all other patent systems, the question of eligibility is simply used as a filter to weed out applications relating either to abstract concepts or to subject matter deemed “undesirable” (such as any of the categories covered by TRIPS Art. 27.2 or 27.3). If an application passes the eligibility filter, then it is subjected to an array of tests (for novelty, inventive step, sufficiency, etc.) that are time-variable, ie that depend upon prior publications and actions, as well as the (common) general knowledge attributable to those skilled in the art.

      Making eligibility time-variable blurs boundaries. That is, it imports into the test for eligibility concepts that, in reality, have more to do with novelty and inventive step. It also makes it impossible to construct a robust chain of logic that allows eligibility to be time-variable but yet retains clear distinctions between ineligibility and lack of novelty, inventive step, etc. The lack of a robust chain of logic then makes the patent system highly unpredictable … to the detriment of everyone (other than lawyers). Indeed, the current controversies over the precise boundaries of patent eligibility (especially relating to methods of medical diagnosis or treatment) provide a perfect illustration of the kind of unpredictability that will arise.

      Another aspect to this is that using a time-variable concept of eligibility can lead to (and has in fact led to) refusal / revocation of patents directed towards subject matter that would otherwise meet the requirements of patentability. To me, that looks very much like a violation of the obligations of the US under TRIPS.

  9. 3

    Who knows how this reads to the generalist SCOTUS folks, but the petition looks weak to me.

    And I have to say that I am somewhat shocked by the clearly bad faith allegation that a fact-based “inventive concept” inquiry would somehow lead to more uncertainty than the alternative gut reaction approach.

    1. 3.1

      the alternative gut reaction approach.

      As you suggest, there is no “gut reaction” alternative.

      There is a reasonable analysis in view of the law (which necessarily will take the prior art into account in certain situations) and there is analysis that is less reasonable (because humans are doing the analysis and not all humans are equally reasonable).

      The suggestion that it is somehow “illegal” to tank a case on the pleadings when the patent claim recites only admitted prior art and some allegedly “non-obvious” but plainly ineligible vapor is a laughable suggestion.

  10. 2

    Something happened in 1952.

    Those not willing to learn from history are bound to repeat it.

    1. 2.1

      Judges love their distilleries so they don’t have to drink those raw patent claims.

      1. 2.1.1

        Apparently, some of them like beer too.

  11. 1

    How is it that this case wasn’t doa’d before trial with strong prior art (at least with respect to claim 1)? Dividing an object into sub-objects and finding how those sub-objects differ from other objects (“archive” adds no meaning), according to a rule, and presenting the difference? I’m all for software eligibility, but the breadth of claim 1 should have made it a buck at a salt block with a prior-art target pinned to its flank.

    Anyway, the article and case highlight the importance of requiring facts to constrain the broad judicial discretion available under current 101 precedent.

    1. 1.1

      the article and case highlight the importance of requiring facts

      Which nobody has ever disputed.

      Dividing an object into sub-objects and finding how those sub-objects differ from other objects (“archive” adds no meaning), according to a rule, and presenting the difference?

      99% of logic innovations are variations on this theme, using different words to describe the data being “processed.”

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