En Banc Petition: What Evidence and Facts are Useful to the Eligibility Analysis

In their petition for en banc review, Nader and Kamran Asghari-Kamrani ask the Federal Circuit to come together to explain the facts (and the law) of patent eligibility under 35 U.S.C. § 101.  In particular, the new petition filed by Antigone Peyton raises two questions:

1. Is the threshold inquiry for patent eligibility under 35 U.S.C. § 101 a pure question of law without underlying factual issues relating to the question of whether the claims transform an abstract idea into a patent eligible application, including whether they are directed to improvements in computer technology or merely describe well-understood, routine, and conventional activities known in the industry (the Alice Step Two inquiry)?

2. Can a district court conclude, when considering a Rule 12(b)(6) motion, that a computer-based invention’s claims directed towards authenticating a user during an electronic transaction with an external entity by way of a central entity—using a digital identity and dynamic code—fail to recite an improvement in authentication technologies implemented on a computer network and merely recite well-understood, routine, and conventional activities without construing the claims or applying the patentee’s proposed construction, considering the patent’s teachings, or considering relevant fact evidence such as expert testimony on the nature of the invention and state of the art, prior art teachings, or industry practices?

[Read the petition: 2018-10-11 0069 Petition for en banc rehearing filed by Appellants Kamran Asghari-Kamrani and Nader Asghari-Kamrani]

The case at issue here stems from the CAFC’s affirmance of the lower court’s Rule 12(b)(6) dismissal — finding that the claims of U.S. Patent No. 8,266,432 are invalid as directed an abstract ideas.  The claims here are directed to a user authentication system that uses using a central computer to send a temporary dynamic code to a user and then validate the code when submitted by a third party (who is conducting a transaction with the user).

The patentee argues that the facts would show that its approach is an innovative implementation — but the district court dismissed the case without considering any submitted evidence. The district court issued its decision prior to Berkheimer and Aatrix.  However, on appeal, the Federal Circuit affirmed the dismissal without considering the impact of those decisions (R. 36 Judgment without Opinion).

Although the claims expressly and repeatedly require computer intervention, the district court noted that invention would still work for its purpose even without the computer technology.  That setup led the court to find the claims directed toward an abstract idea:

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.

Intra-Circuit Split: In its brief, the patentee highlights the current intra-circuit split among the Federal Circuit judges on the issue of when facts are relevant and important to the eligibility inquiry.

[The Berkheimer analysis] has been alternatively characterized by some members of the Court as an “unremarkable proposition” that
is consistent with the Court’s precedent, Aatrix, 890 F.3d at 1355 (Moore, J., concurring), and by others as “contrary to that well-established precedent” with “staggering” consequences, id. at 1362, 1365 (Reyna, J., dissenting). Other members of this Court have explicitly suggested that it should wait for help or guidance from Congress or the Supreme Court. Berkheimer (Lourie, J., concurring).

. . . This Court should join the USPTO’s current effort to roll up its sleeves and bring more certainty, predictability, and clarity to the Section 101 analysis.

It is unlikely that the court will take the bait with this case, but we shall see.

 

Claim 1 below:

1. A method for authenticating a user during an electronic transaction between the user and an external-entity, the method comprising:

receiving electronically a request for a dynamic code for the user by a computer associated with a central-entity during the transaction between the user and the external-entity;

generating by the central-entity during the transaction a dynamic code for the user in response to the request, wherein the dynamic code is valid for a predefined time and becomes invalid after being used;

providing by the computer associated with the central-entity said generated dynamic code to the user during the transaction;

receiving electronically by the central-entity a request for authenticating the user from a computer associated with the external-entity based on a user-specific information and the dynamic code as a digital identity included in the request which said dynamic code was received by the user during the transaction and was provided to the external-entity by the user during the transaction; and

authenticating by the central-entity the user and providing a result of the authenticating to the external-entity during the transaction if the digital identity is valid.

 

 

53 thoughts on “En Banc Petition: What Evidence and Facts are Useful to the Eligibility Analysis

  1. 7

    “It is an obvious combination, and nothing about the combination removes the patent claims from the realm of the abstract.”

    Once again, it is abstract because it is declared to be obvious without consideration of 103 or the opposite conclusion of the Examiner.

    1. 7.1

      Reliance on “it’s obvious” (or even “it’s not novel”) does NOT rise to the level of “it’s conventional.”

      EVEN IF we “get past” the obvious attempted conflation of 101 with 102/103, the factual predicate is not reached with merely showing obviousness or lack of novelty.

      You can thank the Supreme Court scrivining for introducing a HIGHER factual burden to have to be met: that of showing (with proper factual basis, as would be required by at least the APA for an executive agency) of widespread adoption to which “conventionality” speaks of.

      The factual predicate simply is not — and cannot be — resolved at the 102/103 level to which examiners are familiar with.

      1. 7.1.1

        showing (with proper factual basis, as would be required by at least the APA for an executive agency) of widespread adoption

        Anyone who relies on this fabrication is in for a great big disappointment.

        But talk about “judicial activism”! Billy’s going to embrace it with a big moist bear hug this time. Go figure.

        1. 7.1.1.1

          What about the controlling notions that conventionality is more than mere non-novel or obvious do you think to be “fabrication?”

          And make no mistake – my position on THIS point does not change my position on judicial activism. Try not to obfuscate, ok? Being clear on what terms Means has no implication for “hugging” that you want to make.

          1. 7.1.1.1.1

            What about the controlling notions that conventionality is more than mere non-novel or obvious do you think to be “fabrication?”

            The notion that it’s “controlling” is fabricated. It’s Supreme Court dicta and the idea that the prior art needs to be in “widespread use” before it falls into the public domain is (1) disgusting and (2) legally d.o.a. for reasons that are plain as paint to everyone who isn’t drunk on the patent maximalist kool-aid.

            I win. You lose. Take it to the bank, Billy.

            1. 7.1.1.1.1.1

              This is plain English Malcolm.

              If you want the words to mean something else, merely claiming so and then saying “I win. You lose” does not help you, as it is not me that is setting the meaning to the words.

              Your “fight” is not with me.
              Your “fight” is not with ANY “patent maximalist.”
              As I noted to you, this is what the Supreme Court has provided.

              Your “fight” is with them.

              Further, the word – and the context of the word – is NOT “prior art” as you attempt to implicate in your reply. It is “conventional” and the courts themselves have stated that “conventional” does not have the same meaning as “prior art.”

  2. 6

    “It is verbose because the patent claims combine two abstract ideas …”

    Yet as the Supreme Court clearly, explicitly, and unambiguously repeatedly instructs in Alice, Mayo, and Bilski (note just one stated idea / concept in each Court decision with said one idea / concept being directed to all the claims at issue):

    “We hold that the claims at issue are drawn to the abstract
    idea of intermediated settlement …” Alice at 2352

    “First, we determine whether the claims at issue are directed to
    one of those patent-ineligible concepts.” Alice at 2355

    “We must first determine whether the claims at issue are
    directed to a patent-ineligible concept.” Alice at 2355

    “The claims at issue in Bilski described a method for hedging against
    the financial risk of price fluctuations.” Alice at 2355

    “It follows from our prior cases, and Bilski in particular, that the claims
    at issue here are directed to an abstract idea.” Alice at 2356

    “Because the claims at issue are directed to the abstract idea
    of intermediated settlement …”Alice at 2357

    “First, we determine whether the claims at issue are directed
    to one of those patent-ineligible concepts.” Mayo at 1296-1297

    Make no mistake — the difference and distinction between one and who knows how many concepts is a critical Alice / Mayo analytical factor indeed.

    Arguably the most important factor.

    Parties – including the Patent Office and the Courts – trying to deal with multiple-abstract-concept assertions – going against the Supreme Court’s express dictate and directive when they do so — would quickly find themselves mired in a due-process-denying (and unconstitutional) factual and legal morass.

    Swallowing all of patent law in the process:

    “At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Mayo, 566 U.S., at ___, 132 S.Ct., at 1293-1294 (as quoted in Alice at 2354)

    How about two concepts directed to the claims at issue being acceptable? Would three concepts be O.K.? What about four? Five? Ten?

    Or how about one concept for each claim? Two for each claim? Three? Four? Five? Ten?

    Why not one for each limitation? Two? Three? Four, five, ten or more? Maybe one or more for each element? Would that be O.K.?

    Where would such patent madness end?

    All of patent law would indeed be swallowed.

    With America on the road to becoming an intellectual property third world country (now 12th and sinking fast); including because freeriding copyists the world over would steal American innovations with impunity (as they are doing).

    With the commensurate loss of untold 1,000’s of excellent American jobs.

    Something already happening since Mayo/Alice; and worse: their widespread misuse and misapplication (including the instant case).

    Enough is enough.

    There’s no confusion here. No subjectivity. No uncertainty. No gray area. No interpretation.

    The Supreme Court said what it means and means what it says:

    One abstract idea. All the claims at issue.

    One can’t be identified? Then the claims are § 101 eligible. The Alice / Mayo analysis stops there. Step two is moot.

    Simple as that.

    Because Nader and Kamran were ripped off at Alice step one because the court couldn’t identify ONE abstract concept, ALL their claims are 101-eligible.

    Every. Last. One.

    Like it or not.

    1. 6.1

      Make no mistake — the difference and distinction between one and who knows how many concepts is a critical Alice / Mayo analytical factor indeed.

      That is ridiculous. First, there is literally nothing in the Supreme Court’s case law that suggests the drawing of such an arbitrary line. The Court uses the singular because (1) it’s the simplest case and the most common and (2) the facts before the Court concerned single ineligible concepts dressed up with prior art verbiage. If the Court meant “one and only one” I’m pretty sure they would have said so. Why leave a gigantic loophole hanging out there like that? The answer is there is no such loophole.

      Second, what rationale could their possibly be for allowing vaporous abstract cr@ p to pass through the 101 gate just because there are two abstract concepts recited? Consider:

      “I claim a method comprising the steps: (1) correlating pinkie fingernail length with nose cancer likelihood, and (2) reading about the weather patterns in West Missouri.”

      This is an eligible claim? Because two concepts? No, it’s not, and you’re wrong.

      Nader and Kamran were ripped off

      Or they are low-level con artists who got busted playing games with a dysfunctional PTO. Boo hoo hoo! I’m sure they’ll find another grift. They always do. Maybe next time use more words, more jargon and combine three abstractions! Because they’re very serious and important “innovators” in the field of matching input data with look-up data, which is truly the greatest field ever known. Only the best and brightest can describe that deep deep s00per techn0 stuff in broad functional terms.

      I’ve seriously never run into a bigger bunch of crybabies in my entire life. Okay maybe I have in the South where people still whine about their traitor heroes getting their butts kicked in the civil war. But that’s it, really.

      1. 6.1.1

        MM yaps >>>“I claim a method comprising the steps: (1) correlating pinkie fingernail length with nose cancer likelihood, and (2) reading about the weather patterns in West Missouri.”

        Except we know that (2) has no patentable weight. And for (1), wow, that would be great if we could tell if we were in danger of getting cancer based on our fingernail length.

        1. 6.1.1.1

          (2) has no patentable weight.

          Oh really? Why is that? And where does it say so in the 1952 Patent Act?

          Funny that the caveats to this Buy Two Abstractions, Get Out of 101 Free theory come rolling in so quickly.

          that would be great if we could tell if we were in danger of getting cancer based on our fingernail length.

          Even better if you never had to worry about being sued for making the correlation. Which you don’t, as long as Mayo stays on the books. You’re welcome.

      2. 6.1.2

        Sorry, but here is nothing arbitrary about, “one,” “the,” “a,” or, “an.”

        Nothing.

        Had SCOTUS meant to say that more than one was O.K., they would have said so.

        Take for example their statement:

        “First, we determine whether the claims at issue are directed to
        one of those patent-ineligible concepts.” Alice at 2355

        They could have easily instead said:

        “First, we determine whether the claims at issue are directed to one or more of those patent-ineligible concepts.”

        But. They. Didn’t.

        We all understand that you don’t like, “one.”

        But that’s the way it is.

      3. 6.1.3

        “First, there is literally nothing in the Supreme Court’s case law that suggests the drawing of such an arbitrary line. ”

        Pro Say’s post showed why such a line exists. Logic leads to the same conclusion: if the same analysis (I don’t use “analysis” by choice, since there’s no bona fide analysis in these cases) can be used for multiple abstract ideas, then every claim will fail. If the Court meant multiple abstract ideas, it would have said so. Breaking a claim down into multiple abstract ideas might be OK, but each so-called abstract idea would require it’s own independent analysis.

        You’ve raised some valid points over the years that have caused me to think critically about the state of patent law, but your mono-zealotry blinds you to many truths. If you’re an attorney and you don’t see the problems with the body of 101 law (that the entire profession almost universally agrees is problematic) then you’re not a very good one.

        1. 6.1.3.1

          This is nothing more than Malcolm’s own “logic” of the “parse into piece parts and apply eligibility for each piece part” that drives his “Big Box of Protons, Neutrons, and Electrons” analogy (which, admittedly I created as a m0ck1ng mechanism of his views).

        2. 6.1.3.2

          If you’re an attorney and you don’t see the problems with the body of 101 law (that the entire profession almost universally agrees is problematic)

          LOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOLOL

          What exactly does “the entire profession almost (LOL) universally agree on” with respect to 101?

          Nobody is saying that the case law is perfect. Certainly not me.

          If the Court meant multiple abstract ideas, it would have said so.

          No, that’s not how it works. First, they weren’t given a claim with “multiple abstract ideas” so they wouldn’t have to consider the issue. Second, it takes most reasonable people five seconds to understand the ridiculous results that would flow directly from that silly loophole, which I illustrated with one example out of an infinite number of readily conceivable similar examples.

          Breaking a claim down into multiple abstract ideas might be OK, but each so-called abstract idea would require it’s own independent analysis.

          Abstractions are ineligible. What matters is what is not abstract. If you have a claim that is one, two, three, or five hundred combined abstractions and no structure, you have nothing. If you salt in prior art structure, you have a typical junk claim that you might get out of the PTO but which will mostly likely disintegrate immediately during litigation.

          This is all as it should be (except that the PTO should do a better job in the first place).

          But, hey, go ahead and take this silly loophole to the Supreme Court and see what happens. Cert denied, or a 9-0 smackdown that will only make things worse for the maximalists. Of course that’s going to happen anyway.

          [shrugs]

    2. 6.2

      That’s a lot of sound and fury signifying nothing. Electric Power Group expressly combined THREE abstract ideas to invalidate a claim, and it was a federal circuit case.

      The claim was directed to two abstract ideas that performed no differently in concert than they would have alone. The only step two analysis necessary was to repeat Alice’s conventional hardware is not significant analysis.

      The idea that, e.g., Alice and Ultramercial together would have been eligible when neither of them was alone is ridiculous. Make a colorable argument that there is eligibility in the combination of abstract ideas and you might have something, but simply arguing that the infirmity is framed as two discrete abstractions rather than one longer, run-on abstraction is silly.

      1. 6.2.1

        Random — you’ve made many salient points over the years, but the problem with your viewpoint on this two-fold:

        First, there is no reason for me or anyone else to make such a colorable argument since that’s not the place from where SCOTUS came from in Alice. It is a strawman, a red herring.

        Second is that you’re placing the burden on the wrong party. Since the court was crystal clear on one; anyone arguing for more needs to show that SCOTUS didn’t mean what they said.

        It can’t be done.

        And a respectful question for you: You posit a combination of two; Alice and Ultramercial.

        But if two is O.K., what about three? Shouldn’t three be O.K.? If so, why? If not, why not?

        And if three is O.K., four should be O.K. as well, right?

        How about five? After all, that’s only one more than four.

        Even more?

        If it’s not the one SCOTUS dictated, where would you draw the line?

        Hierarchy is correct. With multiple (unlimited) alleged abstract ideas, every claim will fail.

        Every claim.

        1. 6.2.1.1

          you’re placing the burden on the wrong party. Since the court was crystal clear on one;

          They weren’t “crystal clear” on one. “Crystal clear” would be “one and only one”. The Court never said that. They just focused on the facts before them which involved one abstraction and prior art hardware.

          Second, as RG pointed out, the burden is on the maximalists to explain why combining two ineligible abstractions somehow gets you an eligible claim. On its fact, that is a ridiculous proposition and I’ve demonstrated why with a straightforward example (one of a zillion that anybody could cook up in five seconds — that’s a huge problem in itself, and one of the reasons why we have an eligibility requirement in the first place. Seriously how can a so-called attorney not understand this in 2018? What schools are pumping out these know-nothings???)

          1. 6.2.1.1.1

            Sorry, Malcolm.

            No amount of dust kicking, hand waving, voodoo, nose twitching (see Bewitched), or magic can turn one into more than one.

            One is and means one.

            One.

            1. 6.2.1.1.1.1

              No amount of dust kicking, hand waving, voodoo, nose twitching (see Bewitched), or magic can turn one into more than one.

              There is nothing there to be “turned into” anything in the first place.

              I mean, go ahead and tell your clients (or yourself, more likely, since your legal skills are basement level) that you’ve identified some bizarre nonsensical loophole in … Supreme Court case law (LOL). Even the CAFC isn’t buying this silliness.

        2. 6.2.1.2

          ProSad Hierarchy is correct. With multiple (unlimited) alleged abstract ideas, every claim will fail. Every claim.

          Every s0 ftie w0f tie g@ rbage claim will fail but … so what? That’s a good thing.

          The rest of us in the grown-up arts will continue getting claims that don’t have g@ping 101 issues.

          You guys have been plying this chicken little nonsense since Mayo. You’re just a bunch of cl 0wns and the irony here is that this week has been filled with threads proving that all your “end of the patent system” prognostications are just total horseshirt.

          1. 6.2.1.2.1

            You do realize that the “desired narrative” of those various threads does not match up to reality, right?

          2. 6.2.1.2.2

            … demonstrating yet again that it’s impossible to reason with the unreasonable …

  3. 5

    The worst consequence of Oil States may be that it encouraged parties who lose appeals by Rule 36 to keep fighting anyway.

    1. 5.1

      dcl,

      How would that be the case?

  4. 4

    This Court should join the USPTO’s current effort to roll up its sleeves and bring more certainty, predictability, and clarity to the Section 101 analysis.

    One thing is absolutely clear: whatever Iancu has in mind, it’s not going to bring “more certainty, predictability and clarity” to 101. You can take that to the bank.

    1. 4.1

      Your view has zero credibility Malcolm, given that you think that the Court has not mucked things up at all.

      1. 4.1.1

        you think that the Court has not mucked things up at all.

        On the contrary, the Court’s “muck up” was that they didn’t reach through the party’s arguments and nullify software patenting, period. That would have been an easy and straightforward thing to do. Instead, they gave you and your cohorts some extra time by writing a mealy-mouthed opinion. Suprise, surprise: all you do with that gift is complain about it. Nobody could have predicted that.

        Anyway, the day is coming one way or the other. I know I’m going to live long enough to see it. Not sure about you or Big Jeans. Get on a treadmill, maybe.

        1. 4.1.1.1

          Maybe one day you will realize just why “the Ends do not justify the Means” is especially important in law.

          1. 4.1.1.1.1

            Maybe one day you will understand that your empty aphorisms can’t cover up the fact that your arguments st ink.

            1. 4.1.1.1.1.1

              Maybe one day you will realize just how shallow your whining about “empty aphorisms” is.

              So very Accuse Others to try to say that my arguments st ink. As we both know, the pithy statements I share are an excellent device, being short, sweet, direct, understandable, and most of all, accurate. Maybe instead of your usual spew and Accuse Others meme, you actually try to address the points that my pithy statements present.

              Yeah, we both know why you don’t engage on the merits.

  5. 3

    By the way, “authenticating” is a jargon-y term here that is misleading.

    Nothing is being “authenticated” (or not) in the sense that a first edition of a book is determined to be “authentic” (i.e., not a recently created fake) or some glass jewelry is “not authentic” (i.e., not a diamond). There is no physical examination of an item in these so-called “authentication” claims that requires some new machine or new transformation of matter.

    All that’s happening isthat a computer is being instructed to transmit or receive information to a user (i.e., the user is being granted “rights”) if certain input data matches certain other data (that is stored, gathered or inputted). That’s it.

    After access is granted, the user is no more or less “authentic” than the user was before. Indeed, the user may be “not authentic” moments later without having done a single thing. That’s how we know it’s an abstraction. The undisputed fact that there are no new machines recited, directly or indirectly (using objective structural terms distinguishing the machines from the prior art), and no new transformations of matter is entirely consistent with the conclusion.

    This stuff is easy, folks. It’s not confusing at all. The only thing that’s “confusing” to some people is that they don’t like the result. Well, b00 hoo hoo. Just admit that and stop pretending to be a five year old incapable of differentiating between abstract and non-abstract.

    1. 3.1

      Feel free to prove your point by listing the “mere information” of your banking details…

      Otherwise kindly STFU and stop dissembling.

      1. 3.1.1

        prove your point by listing the “mere information” of your banking details…

        LOL

        Non-sequiturs abound. Is everybody listening to Billy? He says that without published (LOL) patents on methods of using logic to determine who gets access to data, everybody’s banking details will become public! Oooooooh, so scary! I’m so vewy fwightened, Billy.

        1. 3.1.1.1

          Your Accuse Others meme in action…

    2. 3.2

      “ (using objective structural terms distinguishing the machines from the prior art) “

      If you are NOT trying to dissemble with an optional claim format being presented as something NOT optional, why do you always try to put this as being non-optional?

      Do you think that repeating yourself makes this to be some type of non-optional claim format?

      What possible reason can you have for this repeated error?

      1. 3.2.1

        why do you always try to put this as being non-optional

        Everybody has the option of drafting logic on a computer claims that I will freely practice because they’re ineligible or invalid. Go for it! Knock yourself out and spend all your money on it. Your patent is meaningless g@r b@ge. And it’s your choice, too, which is very special.

        [shrugs]

        1. 3.2.1.1

          Your [shrug] is as misplaced as your attempt to (once again) make an optional claim format into a non-optional claim format.

          The “option to be invalid” is clearly not within the meaning of optional.

          Try again without the dissembling.

    3. 3.3

      Are you a PHOSITA? That’s how a claim term is to be interpreted. “Authentication” in computer science has a specific meaning. Your construction is clowny.

      1. 3.3.1

        Do you really think that he is attempting an inte11ectually honest construction?

        Why would you ever think that?

      2. 3.3.2

        “Authentication” in computer science has a specific meaning.

        Tell everyone what that “specific meaning” is in the context of determining whether a “user” should be permitted to remotely transmit or access data.

        While you’re at it, tell everyone what the specific meaning of “object” is for “computer scientists.”

  6. 2

    This will go nowhere. Why not hire decent attorneys who understand how the system works and why? Maybe it’s just for the fun of it. The first question is laughably ridiculous on its face.

    As for this, Dennis:

    The claims here are directed to a user authentication system that uses using a central computer to send a temporary dynamic code to a user and then validate the code when submitted by a third party (who is conducting a transaction with the user).

    … this is just carrying water for the s0ftware patentistas. All we need to know is that someone is trying to claim a method of using logic to determine whether someone has an arbitrary “right” to do something. Basic legal reasoning, a high school level understanding of the meaning of “abstract”, and the fundamental understanding that abstractions are ineligible for patent protection is enough to cut through all the extraneous verbiage like a knife through butter. And that’s what happened at the district court.

    Sure, a few dozen patent attorneys out there with dockets dedicated to “authentication” method cr @p were mortified by the decision. Who. Flippin. Cares. Expunge this g@ rb@ge from the system with extreme prejudice and then the patent system will return to something resembling normal. Otherwise it’s just an ongoing farce where the CAFC will take turns pretending that some fake “structure” is “real enough”, or where some other lifeline will be arbitrarily created (“otherwise ineligible logic is eligible if it improves the workings of a computer that is doing exactly what it was designed to do, i.e., carry out logic instructions on data” <— cwazy talk but it'll make some people happy).

  7. 1

    Yes it’s self evident that authenticating a user during an electronic transaction with an external entity by way of a central entity—using a digital identity and dynamic code is an improvement to the authenticating arts.

    Wait, what?

    Not sure I would have phrased question #2 like that.

    But sooner or later they are going to have to take a case on the question #1, pretty much as stated. The clear analogue is claim construction, which ultimately, like eligibility, a question of law, but arrived at by a mixed inquiry.

    The Markman step should be expanded to construe the invention itself, not merely the words in the claim. This is needed to focus the inquiry on the actual purported novelty and the actual contours of the most pertinent PHOSITA, because many information inventions can reasonably implicate widely varied endeavors.

    1. 1.1

      construe the invention itself, not merely the words in the claim

      You are aware that Congress set the authority for “construing the invention itself” TO BE “merely” the words in the claim as chosen by the inventor, yes?

      It did you have something other from Congress on that point?

      1. 1.1.1

        Oh here comes Billy the Maximalist with his magic words! Look out, everybody!

        “wherein said process is unconventional and wherein said method is not directed to an abstraction” <—– GENUINE LEGAL GOLD HERE FOLKS! CONGRESS SAYS SO NYAH NYAH NYAH

      2. 1.1.2

        (last sentence: “It” ==> “Or”)

    2. 1.2

      sooner or later they are going to have to take a case on the question #1

      Why?

      Of course the eligibility of a patent claim is a mixed question of law and fact. How could it not be?

      The reason why this kind of cert petition goes nowhere is because whether it’s a “pure” question of law or a question of law “with underlying facts” doesn’t change the result. Granting a “right” is an abstraction. It doesn’t matter how many parties are involved or how many computers are involved if all that is taking place is data flying around and being compared to a look-up table somewhere.

      If you have a novel structure or a new physical transformation of matter, then claim it and reap the rewards. Otherwise go home and find another grift.

    3. 1.3

      Martin Snyder: focus the inquiry on the actual purported novelty

      LOL Good luck getting the logic arts to point out their “new logic”. LOLOLOL

      “There was a need in the art for GatoKoolAid. So we took Gatorade and mixed it with Kool-Aid and we ended up with GatoKoolAid which tastes exactly like you’d expect.” <— 99% of "do it on a computer" g@ rb@ge

      1. 1.3.1

        And how would you reject an application for GatoKoolAid? Why with 103! No need for 101.

        I’ll think you’ll find that there are actually people that agree with you, Malcom, but they are so put off by your methods of intellectual dishonesty and your, dare I say (because it’s true), Trump-style tactics, that you have trouble connecting with them and are left to rail against the perceived windmills all on your own.

        1. 1.3.1.1

          how would you reject an application for GatoKoolAid? Why with 103! No need for 101.

          The fact that 103 or 112 can suffice in many instances to tank a cr@p claim doesn’t mean that “there is no need for 101.” Not how it works. 101 is needed, for instance, when some non-obvious information or non-obvious “content” is recited in a logic method for processing data. Also, in the general case, eligibility is not a hurdle that can be overcome with secondary factors. For instance, you can’t claim “Thinking about a correlation” just because doing so made you rich or because other people started copying you.

          We’ve been through this before. The entire line of “argument” that “103 can do all the work” was destroyed in Prometheus v. Mayo. It’s buried underground in a steel coffin and that’s where it’s going to stay because the “argument” is that weak. So just stop, please.

          left to rail against the perceived windmills all on your own.

          Not on my own at all. I guess you don’t understand how communication works. I don’t need or expect people to chime in here and agree with me. What matters is that the people who don’t agree with me don’t have better arguments.

          Now, I’ll be the first to admit that the better arguments don’t always win in court. But history shows that eventually — barring a complete meltdown — those arguments do carry the day.

          Logic is ineligible for patenting. That’s the starting point. If you start from anywhere else, it’s YOU who is being dishonest. So start there and then proceed to argue logically why logic actually is eligible for protection if you use a tool to carry it out. And while you make that argument, please recognize that pencils and paper are tools. Go ahead.

          1. 1.3.1.1.1

            Logic is ineligible for patenting.

            Tell me Malcolm, is Logic eligible for copyright protection?

            Or is software innovation more than Logic?

            Since you “appear” to want to start at a “honest,” position, maybe you will finally be honest about this point.

            (ps, I won’t be holding my breath for that to happen)

            1. 1.3.1.1.1.1

              Nobody has any idea why a legal analysis regarding patent subject matter eligibility should start with the question “Can you copyright logic?”

              Stay off the dr ugs, Billy.

              1. 1.3.1.1.1.1.1

                Nobody has any idea

                Wow – stop the prevaricating.

                We both know why the question as to copyright comes up. It has to do with your dissembling that somehow software innovation is nothing more than “logic.”

                You seem afraid to “own” your own position when it comes to using that same view of yours regarding software and seeing if copyright protection would then still apply.

                Since the Article I Section 8 Clause gives rise to both patent and copyright protection (and each covers different aspects of an item), YOUR view here as to “software only equals logic” necessarily impacts any type of copyright protection.

                Why is it that you are afraid of “owning” your own position?

        2. 1.3.1.2

          there are actually people that agree with you,

          Careful with that characterization, as “agreeing with you” means more than just agreeing at the end of the day that any particular patent should not have been granted. “Agreeing with you” means agreeing with the way (the Means) of getting to that End.

          Both legally and procedurally.

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