Is this Heart Monitor Merely an Abstract Idea?

by Dennis Crouch

For the past several years, I have been conducting an annual patent law moot court competition at Mizzou. This year – the eighth annual – the case was was captioned as an appeal of a recent dismissal by District Court Judge Indira Talwani in Cardionet, LLC v. Infobionic, Inc., 2018 U.S. Dist. LEXIS 177305, 2018 WL 5017913 (D. Mass October 16, 2018).  In her decision, Judge Talwani dismissed the case for failure to state a claim — ruling CardioNet’s heart monitor patent is directed to an abstract idea rather than a patent eligible invention. U.S. Patent Number 7,941,207 (“the ‘207 patent”).  The moot court is sponsored by McKool Smith and so the winner receives $1,000.

In the mock appeal, the patentee raises two issues:

  1. Whether the district court’s opinion should be reversed because the asserted claims are patent eligible; and
  2. In the alternative, whether the district court’s opinions should be vacated based upon substantial issues of material fact that make a R. 12(b)(6) judgment for failure to state a claim improper.

The patent here covers a device for diagnosing and monitoring heart arrhythmia — particularly atrial fibrillation and atrial flutter.  The basic setup uses standard portable-heart-monitor equipment to get ECG signals.  With those signals, the patentee measures variability in beat-to-beat timing of the heart and also ventricular-beat timing.  Those two measures can be used then to diagnose a-fib while ruling out other arrhythmia. Claim 1:

1. A device, comprising:

a beat detector to identify a beat-to-beat timing of cardiac activity;

a ventricular beat detector to identify ventricular beats in the cardiac activity;

variability determination logic to determine a variability in the beat-to-beat timing of a collection of beats;

relevance determination logic to identify a relevance of the variability in the beat-to-beat timing to at least one of atrial fibrillation and atrial flutter; and

an event generator to generate an event when the variability in the beat-to-beat timing is identified as relevant to the at least one of atrial fibrillation and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector.

3. The device of claim 1, wherein the variability determination logic is to compare times between R-waves in three successive QRS complexes to determine the variability in the beat-to-beat timing.

CardioNet sued InfoBionic for infringement in March 2017. Rather than filing an answer, InfoBionic filed a Motion to Dismiss for “failure to meet the pleading standard of Twombly and Iqbal and for patent ineligibility of the ‘207 patent pursuant to § 101.” While the district court was considering the briefed motion, the Federal Circuit decided Aatrix and Berkheimer but did not permit supplemental briefing regarding material facts at issue in the case. The district court then granted the motion to dismiss with prejudice – finding the claims invalid as directed to an abstract idea. The court explained “the innovation of the … patent may be to use  computer equipment and logic to monitor the variability of beats, but nothing in these claims places any limitation on that abstract idea.”

I still struggle with failure-to-state-a-claim motions in this particular situation because it confounds the ordinary approach to procedure in federal civil litigation. Namely, in ordinary litigation, the complaint does not need to anticipate defenses (such as invalidity) and plead facts to get around those defenses.  Rather, the complaint is where the patentee makes its prima facie case of infringement.  That said, the courts are disagreeing, at least de facto.

Question: How would you argue this appeal?

CardioNet has filed its notice of appeal, but briefing is not due in the actual case until January 2019.

155 thoughts on “Is this Heart Monitor Merely an Abstract Idea?

  1. 16

    A claim and an invention are two different things. An abstract claim and an abstract invention likewise are two different things, but they are constantly lumped together.

    No, you can’t determine if an invention is abstract or not without some reference to prior art, because without some reference to prior art, you can’t identify the art or endeavor pertinent to the invention.

    Abstract inventions should be legally defined as depending on an abstraction for utility. An abstraction must be hosted in a human mind.

    Abstract claims can fail for 112 and 103 reasons- the abstraction means the claims have not proven the inventor grasped the invention, or they have not provided enough information for PHOSITA to practice the invention, or they have not, in sum, departed enough from the prior art.

    Until we have a Markman like process to construe inventions, and a judicial recognition that consumed information is automatically abstract, we are never going to get out of this mess.

    1. 16.1

      because without some reference to prior art, you can’t identify the art or endeavor pertinent to the invention.

      Pertinent…

      …for what purpose?

      You are confusing eligibility and patentability.

      1. 16.1.1

        Martin is correct. You are the one who is “confused” here, Billy. Learn to read.

        1. 16.1.1.1

          Lol, Malcolm saying that Martin is correct only reinforces that I am correct.

          Thanks for that Malcolm.

          1. 16.1.1.1.1

            Question for the struggling kindergartners out there.

            Imagine that I’ve “innovated” … something. And now I want to claim it with a patent claim so I can sue infringers.

            If I write a patent claim that begins “An improved airplane, comprising …”, what kind of technology have I necessarily innovated?

            a) No kind of technology is necessarily implicated by that preamble
            b) Technology related to flight
            c) The question is unfair, in Billy’s mind, because it makes a point about a fundamental aspect of patent law that Billy wishes he didn’t have to deal with
            d) Both (a) and (c)

            1. 16.1.1.1.1.1

              The claim is to “a device”. Not abstract. It might be a broad claim, it might be an obvious invention, but literally only covers devices configured as per the claim elements.

              1. 16.1.1.1.1.1.1

                The claim is to “a device”. Not abstract.

                … and that is not an answer to the simple question you were directly asked.

                Try again, please.

                In the meantime, let’s work on the accuracy of the answer that you did give. The claim may describe a device, and that device may not be abstract. But as everyone with a brain functioning well above the level of a five year old knows, the mere recital of a “device” can not be enough to confer eligibility upon the claim. Why is that the case? Because the “device” may be in the prior art (e.g., an “airplane”) in which case the device may be merely a context in which ineligible subject matter is claimed (e.g., “wherein the airplane comprises a loudspeaker over which is broadcast instructions for downloading a copyrighted version of ‘Batman VII: Season of the D0rk'”).

                See how that works? I guarantee you pretty much everyone does. And they also understand the ramifications of not seeing how it works, which means that you are up shirt creek with a big paddle stuffed in your mouth.

                It’s truly p@ thetic that this stuff needs to be explained to you simplet0ns over and over.

                1. confer eligibility upon the claim. Why is that the case? Because the “device” may be in the prior art

                  Conflating patent eligibility and patentability…

                  …again.

              2. 16.1.1.1.1.1.2

                HPB: The claim … literally only covers devices configured as per the claim elements.

                Can those “configurations” be non-structural “configurations”, or are such “configurations” prohibited by one of the other statutes that you seem to adore?

                Simple question. Yes or no. If “yes”, please show everyone the statute and the language in the statute that expressly prohibits distinguishing prior art devices from claimed devices using only non-structural configurations If “no”, then explain the purpose of 101 when it is plain as paint that anyone can scriven around the “statutory categories” in two seconds and use a patent claim to protect literally any abstraction in any “statutory” prior art context, and also show everyone where Congress discussed making this radical revision to existing patent law.

                Thanks. And thanks in advance for failing to respond coherently and proving my point to everybody for the zillionth time. I win. You lose. Loving it.

                1. Non-structural…

                  Yet again you want to elevate an optional claim format into something not optional.

                  It is odd that you “demand” of others while displaying such chicanery.

            2. 16.1.1.1.1.2

              Do you know what “statutory category” even means, Malcolm?

              I “get” that you think it fine that the Supreme Court has reached c certain Ends by writing that part of what Congress came up with out of the statute, but you should at least pretend to know what the actual patent law is.

              1. 16.1.1.1.1.2.1

                Do you know what “statutory category” even means, Malcolm?

                Yes. It means that Giles Rich was a dipshirt and a fraud and the fact that people name legal competitions after him is an embarrassment to the profession.

                1. You have a most decidedly odd sense of profession.

                  Your cognitive dissonance when it comes to actually providing rights for innovators is well noted.

                  (as also should be noted that Judge Rich is not the one that created the statutory categories, but why let facts get in the way of your rants? You — at least in your own mind — are “winning” for the zillionth time. So very Trump of you at that.

            3. 16.1.1.1.1.3

              Once your claim makes it out of the office and into a District Court, there really ought to be a singular procedure and set of customary motions/timing used by all judges to construe the invention, just like what occurs now with the meaning of the words of the claim. Since “airplane” and “improving” are well understood terms, simply construing the words won’t help locate the invention in any particular art or endeavor.

              1. 16.1.1.1.1.3.1

                Yes Martin, as also noted several times on this blog and elsewhere, if all District Court judges conducted their Markman claim interpretations near the beginning of a suit instead of delaying them until after discovery and just before trial, it would be a huge cost savings for both parties in many patent suits. Leading to early settlements, S.J.s or reduced discovery.

                1. “if all District Court judges conducted their Markman claim interpretations near the beginning of a suit instead of delaying them until after discovery and just before trial, it would be a huge cost savings for both parties”

                  Probably a dumb question: why don’t they?

                2. Yes Paul, but Markman procedures should be expanded to cover eligibility, explicitly.

                  And of course the Kafkaesque nightmare of full blown federal court litigation is totally disproportionate, in many instances, to any possible theory of damages. This cuts against both patantees and defendants. Any procedures that materially shorten litigation are hugely impactful.

                3. To try to answer both Ben and Martin below, most unpatentable subject matter motions based on Alice, Mayo, etc. ARE filed and addressed up front,
                  As to why many D.C. judges do not conduct Markman hearings to define claim scope up front, the short answer could be because neither the Fed. Cir. or their local rules has said that they have to. A longer answer could be that since about 95% of all patent suits get settled before trial anyway, and they are busy with their criminal case dockets, it behooves them from a time efficiency standpoint to put off getting so involved in a patent suit until they have to. [Chip in if you have a better answer.]

              2. 16.1.1.1.1.3.2

                Once your claim makes it out of the office

                That’s rather the idea of the Quid Pro Quo and turning an innovator’s inchoate right into a full (prior Private personal, now Public Franchise) legal property right.

                Rights get enforced in the courts.

                That happens to be true of all rights.

                That’s how our system was set up.

                Would (any) reduction in such costs be impactful? Certainly. Should such drive substantive patent law? Not likely.

    2. 16.2

      judicial recognition that consumed information is automatically abstract

      You still do not have a handle on the basics of utility.

      1. 16.2.1

        Martin is talking about eligibility, not utility. You are trying to change the subject, which is one of your favorite “games”. We watch the maximalists do this all the time.

        1. 16.2.1.1

          Utility is a part of eligibility.

          Come on man, at least pretend that you understand patent law.

          1. 16.2.1.1.1

            LOL

            Keep digging, Billy.

            1. 16.2.1.1.1.1

              Says the man clutching the shovel.

              Stultifying.

  2. 15

    Answer:

    “a beat detector”
    “a ventricular beat detector”
    “variability determination logic”
    “relevance determination logic”

    Question:

    “What is everything that’s wrong with our patent system?”

    1. 15.1

      Question: why is section 103 not invoked to show the obviousness of this claim, when it is clearly not an abstract idea, at least in the sense of ordinary English meaning (as opposed to Supreme Court metaphysical gymnastics)? There is solid precedent that merely automating a known process is obvious. Why does this particular claim require that we pervert the rule of law with unrestrained judicial discretion? Sure, it’s a little more expensive to go down the obviousness path, but that’s the price we should be paying for a balanced healthy patent system.

      1. 15.1.1

        District Court litigation is not just “a little more expensive” it is a great deal more expensive, due to almost unlimited discovery and dozens of potential legal and factual issues. Courts simply will not try 103 issues first, early, or before trial on all other issues. That’s why Congress enacted IPRs – to allow 102 or 103 challenges that are at least an order of magnitude cheaper because, unlike litigation, those are the only allowed issues, and raised only via prior patents or publications.

      2. 15.1.2

        Per Martins comment (and my own earlier comment held up in the queue), HoPB is confusing the claim (the proper focus of the analysis) for an object that could fall within the scope of the claim. This is a beginners error and it’s unfortunate that DC contributed to the confusion with his “flashy” title.

        Helpful reminder: a vellum bound book is not “an abstract idea”. A claim to such “a book wherein said book comprises nonobvious instructions” is ineligible because the instructions are abstractions.

        This is how it works. Most people understand and agree on the fundamentals. Don’t forget this.

        1. 15.1.2.1

          It is fundamental error to try to use a book as an example.

          We’ve had an entire post (Wolfgang Pauli’s Not Even Wrong) explicating this.

          Only those wanting a certain Ends continue to try to use the vapid “example.”

          1. 15.1.2.1.1

            LOLOLOLOLOLOLOL

            “You can’t use that argument because it is too clear and shows everyone why I’m wrong.”

            LOL

            1. 15.1.2.1.1.1

              Except for the fact that your “paraphrase” is dead wrong, you would almost have a point.

              As it is, no, no you do not have a point.

              It’s not as if the Wolfgang Pauli thing isn’t within your “vast” comprehension of things put on this blog (even if you are incapable of being inte11ectually honest about what has been on the blog).

        2. 15.1.2.2

          The whole “object that falls within the scope of the claim” argument is a fallacy.

          The meaning of the statutory category itself is the fundamental reason why.

          Further, scope is a 112 issue — not a 101 issue.
          Yet again, we see those wanting to have a desired Ends not using critical thinking as to the Means being used to get to those Ends.

          1. 15.1.2.2.1

            There is no “fallacy”, and the rest of your comment is self-serving gobbledygO Ok.

            My goodness but you stink at this.

            1. 15.1.2.2.1.1

              Again, except for the fact that you are absolutely wrong, you may have a point.

              And again, no, no Malcolm you have no point here.

              That “stink” is only more of your usual Accuse Others meme.

      3. 15.1.3

        A claim can be invalid for multiple reasons, as this one likely is. But how does one know that “variability determination logic” is a “known process” if one doesn’t know what “variability determination logic” is? And if “variability determination logic” is merely logic for determining whether there is no fixed pattern (the ordinary English meaning of those words) then how is that not an abstract idea?

  3. 14

    I will not comment on section 101, though I believe there is a possible indefinite issue with your claim 1 in regard to the language;

    determination logic to determine a variability ….
    determination logic to identify a relevance … ; and …

    It really pseudo 112, P6 language, and results in an undefined structure “determination logic” to provide a select function.

    Dose the spec link the structure to the function? Midco v. Elekta. From an infringement analysis, I would award the patentee scope to the logic software disclosed and equivalents thereof.

  4. 13

    The fact that anyone would even need to consider whether the claimed device is patent eligible just adds to the pile of poop law created by S.C. when Alice walked through the Myriad of Mayo. Consider these two claims.

    1. A device comprising a hammer that drops and crushes objects.
    2. A device comprising a hammer that drops under the force of gravity and crushes objects.

    No two-step analysis for claim 1 even though reliance upon the force of gravity is inherent, but claim 2 requires a two-step analysis.

    If a S.C. decision can’t even pass a simple test, then don’t follow the decision. Congress step in!!

  5. 12

    Schaeffer knew it was a lie. Berkenstock also knew it was a lie. At least Schaeffer is still here.

  6. 11

    It took a village. A court clerk, a secretary, a CPA, identity thieves, and a lawyer blocking my due process even using the BOPR to do so!

  7. 10

    I would think that what Dennis was hoping to get re the subject patent law moot court competition on a real patent suit was some usable arguments for both sides? [Which of course does not include unsupported personal opinions as to what the law is or ought to be.] But unfortunately, as shown, patent claims like this inspire too many commentators to just dump more gasoline on the burning subject of the Alice unpatentable subject matter defense. The real sore subject for litigators is the big practical advantage to defendants of now having a very preliminary, and thus low cost, defense. [Vis a vis 112 and/or 103 defenses that normally requires a full and very expensive suit through trial, on all possible issues.] Quite a few of the vast majority of patent suit defendants who would previously just pay to settle now try a so-called 101 motion first. [So-called because it is based on Sup. Ct. case law, not on the text of 35 USC 101 itself.]
    The issue here of Alice-type unpatentable subject matter defenses in patent litigation and their proof requirements should not be confused with how much Alice has mucked up application examination in certain PTO art units with certain examiners. In application examination there is no valid rationale for not always doing and decisively applying good prior art searches using 112 and/or 102 or 103, irrespective of possible Alice issues.

    1. 10.1

      Well, that’s a healthy amount of spin:

      The real sore subject for litigators is the big practical advantage to defendants of now having a very preliminary, and thus low cost, defense.

      Those “bad” folk only seeking to punish through litigation or otherwise extort some coin from the happy and otherwise innocent efficient infringers — and all.

      Never mind the fact that enforcing one’s rights is set up FOR using litigation, and never mind that we have a patent system and want people to use the patent system to have – and putatively enforce – those very rights…

      And I find your last paragraph thought a bit odd. Not that I necessarily disagree that what is going on with the (CAFC-admitted) use of common law evolution through the application of the Alice-Mayo “test” is problematic alone for the judicial branch, and to let the executive branch then use that same judicial branch tactic in examination doubles down on the problematic nature — but what exactly is the “confusion” that you allege to be going on?

      I just do not see how ALL of (and each of) 101, 102, 103, and 112 should be “skipped” for what each may serve in each of the prosecution and enforcement phases. It is – and always has been – axiomatic that only those sections of law that may bear on the fact pattern at hand would apply in the enforcement phase, just as it is – and always has been – axiomatic that all sections must be met in the prosecution phase. Who is it then (and why) do you think is “being confused?”

    2. 10.2

      “…Alice has mucked up application examination in certain PTO art units with certain examiners. In application examination there is no valid rationale for not always doing and decisively applying good prior art searches using 112 and/or 102 or 103, irrespective of possible Alice issues.”

      Are you suggesting that Alice is being used to short-circuit compact prosecution? If so, do you have any evidence for this?

      1. 10.2.1

        Ben and Anon, the distinction in litigation versus application prosecution is the fact that District Courts rarely ever decide PRE-trial summary judgment motions for other than non-infringement, especially not on 112 or 103 issues. Whereas in prosecution of applications all rejections are supposed to be done at the SAME time in the first action, unless the applicant then makes drastic claim amendments. If, as rumored, 101 application rejections are being initially made and then withdrawn by some examiners in some arts, giving higher that normal issue rates [because there was not also an adequate prior art rejection], then yes that should be investigated. Likewise, inadequate numbers of 112 non-enablement rejections [in preference to 101 rejections] as appears to be the case here from the specification discussion. Historically the PTO has a low rate of 112 rejections.

        1. 10.2.1.1

          “If, as rumored, 101 application rejections are being initially made and then withdrawn by some examiners in some arts, giving higher that normal issue rates [because there was not also an adequate prior art rejection], then yes that should be investigated.”

          Of course. I was asking because in post #10 you appeared to be assuming the “rumors” were accurate.

          “Likewise, inadequate numbers of 112 non-enablement rejections [in preference to 101 rejections] as appears to be the case here from the specification discussion.”

          I personally don’t see an enablement issue with these claims. Claims to easily implemented results should fall under the Written Description requirement, not enablement.

          1. 10.2.1.1.1

            Re”Claims to easily implemented results should fall under the Written Description requirement, not enablement.”
            I don’t think that is the case, for several reasons. They are not the same tests. In particular there is a frequent misunderstanding that the 112 requirement for specification enablement is satisfied by asserting 103 obviousness for claim elements, especially for means-function claim elements.

  8. 9

    Nothing here that any five year old would find abstract. Might be 112 problems, but the claims recite something tangible. No matter what any SCOTUS judges might say.

    1. 9.1

      Agree.

      For all the naysayers here, the title of the article is not “directed to an abstract idea,” but rather IS the item an abstract idea.

      There be “scrivining” afoot that people just are not grasping.

  9. 8

    An interesting example of this same question has arisen this month with bikes that provide live exercise classes: Peloton v. Flywheel, E.D. Tex. No. 2:18-cv-00390.

  10. 7

    Patent eligible.

    If the claim were broadened by eliminating the last three elements, the claim is clearly patent eligible.

    Adding the last three elements narrows the claims.

    Therefore, the claim is necessarily even more patent eligible than the combination of the first two elements standing alone.

    1. 7.1

      Or does it somehow become directed to something else under Alice when elements are added? :)

    2. 7.2

      1. A system comprising: a book.

      Question – if the specification states “I did not invent the book. The book is pre-existing subject matter” is Claim 1 an eligible claim under 101?

      1. 7.2.1

        a book

        Wolfgang Pauli’s not even wrong.

        Random, you underwhelm with the known dissemblings.

    3. 7.3

      BTW, do you have any citation for the logic that if a broader claim is eligible than a more limited claim is inherently eligible? Because that was the precise logic of the CAFC in Alice (A computer is eligible therefore a computer performing intermediated settlement is more limited and must be eligible), and that didn’t work out for them.

      1. 7.3.1

        Do you have a citation for suspending any critical thinking when faced with a broken scoreboard?

        1. 7.3.1.1

          Randy Rader knows all about suspending reason and good judgment.

          1. 7.3.1.1.1

            Thanks Malcolm, but your reply has absolutely nothing to do with the point presented.

            Try again.

    4. 7.4

      101 requires a new machine, manufacture, composition of matter, or process. The broadened claim is not new. It is not eligible. The question is whether adding the three elements does not make the claim eligible.

      1. 7.4.1

        So it’s a 102 analysis applied to 101? There’s a job for you at the USPTO.

  11. 6

    Wow 68 comments on such an easy question.

    In a world where medical science knew an analysis for diagnosing a condition, and electrical science had already created a machine for obtaining the necessary information for performing the diagnosis, a claim to a machine that moves the conventional analysis from a person’s head to a machine processor is not an eligible invention. Conventional determinations of a fact of nature are ineligible, see Mayo. Mere field of use limitations are insufficient to confer eligibility, see Alice.

    Similarly, obtaining information, even limited to particular types of information, is abstract, see Electric Power Group. Conventional analysis is abstract, see Electric Power Group. Reporting a conclusion is either abstract or insufficient to confer eligbility, see Mayo, Electric Power Group.

    Inventing an ECG is eligible. Realizing a confounding variable in determining arrhythmia may be eligible. Inventing a manner of instructing a machine to perform calculations is eligible. This patentee did not do any of those things. Ordering a machine to take the place of a doctor where there is no technical hurdle in creating the machine or improvement to medical methodology does not advance any art and is not eligible.

    1. 6.1

      True or not, your argument is based on prior art, not some intrinsic characteristic of the claimed invention.

      1. 6.1.1

        What’s your point? Alice was based on intermediated settlement being a fundamental act and computers being conventional. Why do you think that my argument being “based on prior art” means it’s not valid?

        A 112a rejection is based on the knowledge in the art at the time. A 112b rejection is based on whether the art ascribes certain meanings to things. All rejections rely upon the art for context if nothing else.

        1. 6.1.1.1

          What’s your point?

          Maybe that there is a real difference (even if the Supreme Court flubbed it) between patent eligibility and patentability.

          Every thread that celebrates the broken scoreboard brings you out of the slime for more of the same slime from you.

          1. 6.1.1.1.1

            The Supreme Court messed things up, but not by confusing 103 and 112.
            103: differences between prior art and claimed invention are such that the claimed invention is obvious to a phosita.
            112: differences between exceptions and claimed invention are insufficient (for example, differences are conventional, consist of a field of application, do not rise to a “marked” level, …)
            The problem is that we don’t know precisely the extent of the exemptions, and the “insufficient” standard is only defined by a collection of cases that are not easily synthesized.

            1. 6.1.1.1.1.1

              Replace all 112 by 101. Long day…

              1. 6.1.1.1.1.1.1

                Scrivining: undefined terms makes the re-written (note: this is expressly not “interpretation”) law of the legislated-from-the-bench Void for Vagueness.

          2. 6.1.1.1.2

            Blah blah. The patent power only allows Congress to grant patents to promote the progress. This disclosure doesn’t promote the progress because it doesn’t allow the art to do anything it couldn’t before. Apparently the electrical arts could perform the measurements, and apparently the medical arts could interpret them to come to a conclusion. They does not appear to be any problem in programming the computer to do the same analysis a person does (i.e. this isn’t a McRO situation where we’re advancing the computer art by teaching it to act like a human; a computer is capable of manipulating numbers), so what did this person contribute to advance the art?

            That’s not a confusion of the eligibility/patentability dichotomy. It doesn’t matter how obvious it was to have the computer step into the place of the doctor. The question is if there is some problem that was overcome which would benefit the public to hear a publicized teaching to justify Congress’ use of the patent grant. There wasn’t. Absent that problem, the contribution consists of the abstract statement “Hey, we should use our already existing knowledge to take the doctor’s analysis and do it a computer” which might be a fine idea, but is not invention.

            If the founders wanted to give Congress the power to grant a patent over anything, regardless of if someone invented it or not, they’d have done so. They didn’t.

            1. 6.1.1.1.2.1

              because it doesn’t allow the art to do anything it couldn’t before.

              Only God works with materials not present before.

              That’s not a confusion of the eligibility/patentability dichotomy.

              It most certainly is.

              If you want to confuse patent eligibility and patentability, at least try to recognize that the proper patent doctrine you should be referencing is inherency (and that certainly is not a 101 issue).

              The question is if there is some problem that was overcome

              No. That is not the “question.” Have you been in some EPO-land problem-solution-approach class of late? Sure, that may be one (of several) permissible rationales, but by no means is it the sine qua non that you imply it to be.

              regardless of if someone invented it or not,

              Nice strawman. No one is arguing that anything should be regardless of if someone invented it or not. At the same time, your attempt at straw here only highlights the path taken by Congress in rebutting a previous anti-patent Supreme Court with the choices by that Congress in the Act of 1952 (choosing to eradicate the “gist of the invention” [and any other of dozens of similar terms] and instead opt to create the obviousness section of law.

              Blah blah” indeed – just not how you think it to be.

  12. 5

    DC I still struggle with failure-to-state-a-claim motions in this particular situation because it confounds the ordinary approach to procedure in federal civil litigation. Namely, in ordinary litigation, the complaint does not need to anticipate defenses (such as invalidity) and plead facts to get around those defenses. Rather, the complaint is where the patentee makes its prima facie case of infringement. That said, the courts are disagreeing, at least de facto.

    The reason the courts are more comfortable doing this is because they are “on the ground” and they can smell the situation. Most of these claims that are getting tanked on the pleadings are horrifically awful. They are an embarassment to the legal profession and I think judges wanting to preserve their sanity and self-respect are just doing what it takes to avoid getting bathed in the patentah0lic saliva being sputtered out by the plaintiffs in these cases. Everybody knows the maximalist games by now: ignore the facts, ignore the law, ignore the language of the claims, and just pound the table about the “importance” of the (non-)”invention” and how without it, e.g., doctors would not be able to save your kid from a heart attack by using logic to interpret data collected with prior technology. Or manage an online bingo game. Or make a cartoon character’s mouth close when it says “Mmmm!” Or sort a column in a Table according to “criteria”. Or compare X to Y and do something if X is equal to Y. You know, really really really s00per d00per techno stuff.

    All that said, I would be curious to know how 12(b)(6) is/has been actually applied in other areas of the law that were infested by similar legal shenanigans, i.e., where a recognized class of lawsuits became a problem for the profession, where Congress and the Supreme Courts stepped in to curtail the abuse, and where “legacy” cases falling within the undesired class continue to be brought.

    Another way of looking at the problem the courts are facing is to imagine a situation where a patentee managed to get a claim out of the PTO that was plainly ineligible and then sued, say, 1,000 diverse corporations, all of whom infringe (e.g., because they use linked computers comprising “dynamic” databases to track both the amount of a customer’s debit card purchases and the identity of the items purchased <— this is all the claim says but it used twelve made-up acronyms and some other b.s. to snowball the PTO). Why let this case get beyond the pleadings? What interest of justice is served when, in response to the motion to dismiss, the plaintiff engages in even more obfuscation?

    1. 5.1

      The reason the courts are more comfortable doing this is because they are “on the ground” and they can smell the situation.

      Wow.

      Go back to law school and study some Civ Pro.

      ALL that you are doing is celebrating an “Ends justify the Means” approach.

      ignore the facts, ignore the law, ignore the language of the claims, and just pound the table

      More of that (in)famous Malcolm “Accuse Others” meme….

      where a recognized class of lawsuits became a problem for the profession

      LOL – see the necessary perspective (and STOP mouthing the Efficient Infringer mantra).

      Why let this case get beyond the pleadings? What interest of justice is served

      It’s called the Rule of Law (and little things like Congress writing that a granted patent has a certain item — and level — of a presumption of validity).

      Again – go back and learn (for the first time?) some Civ Pro, or perhaps more basically, WHY we have a Rule of Law in the first place.

      the plaintiff engages in even more obfuscation?

      Stultifying – coming from the one who obfuscates more than all others. Combined.

      1. 5.1.1

        Yep. Yup. And yup.

  13. 4

    I would not want to make a financial wager on what any particular CAFC panel will hold on an Alice motion decision.
    However, the broad claim term “variability determination logic to determine a variability in the beat-to-beat timing of a collection of beats” is something my Dr. has done for many years with a “device” [a stethoscope + ‘variability determination logic’ in his or her trained brain or an electrocardiogram with paper printout + variability determination logic. The “event generator to generate an event” is his or her brain generating vocal cords signals to go see a cardiologist, or not.
    One of the biggest problems in patent law is claim drafters mentally reading intended scope limitations into claim language that is not actually there. For years, undoubtedly the most common APJ question during Board oral arguments was “could you please show us where that feature is claimed in the claim itself?”

    1. 4.1

      Note that neither claim is even limited to doing it with a computer, much less programmed computer logic.

      1. 4.1.1

        Paul, the claim recites a “device” and “logic.” The claims read in view of the specification clearly require a computer and clearly require that the steps be performed by the computer.

        Plus, you are again making this assumption that because a person can do it that it is easy to do it on a computer. Absurd. 50 percent of cognitive science Ph.D.’s are centered around a computer program that attempts to simulate human thought.

        1. 4.1.1.1

          50 percent of cognitive science Ph.D.’s are centered around a computer program that attempts to simulate human thought.

          Only Night could take a claim that only requires subtraction of numbers and try and turn it into a PhD level dissertation.

        2. 4.1.1.2

          I made no such assumption. You are making an assumption that specification embodiment details can always be used to read into and narrow even generic “plain meaning” claim terms. That is rarely true for any PTO proceedings, a serious gamble to rely on even in DC litigation, and thus poor claiming practice, especially for such needed reliance in all dependent claims.

      2. 4.1.2

        Either “ventricular beat detector” connotes structure to those of ordinary skill in the art and hardware is therefore recited, or “ventricular beat detector” is a nonce phrase and 112(f) is evoked and the disclosed means for are imported into the claim (assuming some means for are disclosed).

        That, dear Board, is where it is recited in the claim.

        1. 4.1.2.1

          Means for are disclosed. For example,

          FIG. 3 shows an example of instrumentation 110 for cardiac monitoring using a cardiac signal such as electrocardiogram trace 200. Instrumentation 110 includes a sensor 305, a signal amplifier/processor 310, a beat detector 315, an atrial fibrillation/atrial flutter (AF) detector 320, decision logic 325, and an event generator 330. Sensor 305 can include two or more electrodes subject to one or more potential differences that yield a voltage signal such as electrocardiogram trace 200. The electrodes can be body surface electrodes such as silver/silver chloride electrodes and can be positioned at defined locations to aid in monitoring the electrical activity of the heart. Sensor 305 can also include leads or other conductors that form a signal path to signal amplifier/processor 310. Signal amplifier/processor 310 can receive, amplify, and/or process the voltage signals. The processing can include filtering and digitization. The amplification and remainder of the processing can occur before or after digitization. Signal amplifier/processor 310 can provide the amplified and/or processed signal to beat detector 315.

          Beat detector 315 is a device such as a circuit or other arrangement that identifies the time period between ventricular contractions. For example, beat detector 315 can be a QRS detector in that it identifies successive QRS complexes (or an equivalent indicator of ventricular activity) and determines the beat-to-beat timing from the time between complexes. The beat-to-beat timing can be determined by measuring times between successive R-waves, such as RR(n,n−1) and RR(n−1,n−2) in electrocardiogram trace 200 (FIG. 2). Beat detector 315 can provide information regarding the time period between ventricular contractions to AF detector 320.

          AF detector 320 is a data processing device that analyzes information regarding the time period between ventricular contractions to detect AF. The detection of AF can include distinguishing AF from other sources of ventricular irregularity, such as premature ventricular contraction, heart blocks, and normal sinus rhythm irregularity. The detection of AF can also include distinguishing between short AF episodes and sustained AF episodes. Short AF episodes generally include between two and 20 beats and may or may not have clinical significant, whereas sustained AF episodes generally include more than 20 beats and may have relatively greater clinical significance. The detection of AF can also include the detection of other types of irregularity caused by random refractory periods of the ventricles.

          1. 4.1.2.1.1

            AF detector 320 is a data processing device that analyzes information regarding the time period between ventricular contractions to detect AF.

            Pro tip – Whenever you see the word “analyze” or “determine” or “generate” and it’s not followed by an algorithm, you’ve got an undisclosed means and an indefinite claim because you’re claiming a result without defining how you get the result.

            The remainder of this paragraph is non-limiting (“can include”) and therefore provides no description at all. But even if you were to limit the means to one of the identified means, they’re not sufficient description. Means plus requires disclosure within the specification as to how to perform the functionality. The fact that AF can be determined by a doctor (who is probably not the PHOSITA anyway) does not mean a device entitled “AF detector” is described under means-plus. A described algorithm for performing the function means there has to be a series of steps that starts with “here is the output of the ecg” and ends with “therefore if the result is X then AF is detected, and if the result is Y then AF is not detected” not some vague statements that the module can distinguish from other conditions without explanation as to how.

            1. 4.1.2.1.1.1

              Pro tip. Read the whole specification when examining an application. I just pasted introductory paragraphs.

          2. 4.1.2.1.2

            As a software examiner, when I see the word “analyze” or “determine” and it’s not at the head of a section entitled “How to analyze”, I know I’m about to be fed a bowl of undescribed, overbroad BS.

            1. 4.1.2.1.2.1

              In the present case, the pasted paragraph outlined 3 different algorithms for detecting AF. Hence “can include.”

              For example:” The detection of AF can also include distinguishing between short AF episodes and sustained AF episodes.”

              One of ordinary skill understands that this means detect the onset and end of AF episodes and the number of beats involved between. If there are more than 20 its a significant episode.

              As another example, the “detection of AF can include distinguishing AF from other sources of ventricular irregularity, such as premature ventricular contraction, heart blocks, and normal sinus rhythm irregularity.”

              One of ordinary skill will understand that this calls for a comparison of the measurements to model measurements for these other symptoms. If the measurements don’t match those and the measurements are not “normal,” then they represent AF.

              so…. you know…

    2. 4.2

      Everything Paul just said except for the first sentence.

      I’d gladly place a wager on the outcome of most “do it on a computer” claims as decided by a particular panel. The outcome is mostly determined by the claim itself, the panel introduces a bit of variability, as does the quality of the defense’s briefing below.

      As I’ve stated many times before there is really not that much “confusion” about subject matter eligibility (outside of some horrific CAFC decisions attempting to find subject matter eligibility where none exists). Most of the hand-wringing is not over the analysis but over the result, and most of that hand-wringing comes from the same very tiny and very over-amplified segment of the bar that is perpetually unsatisfied and perpetually “victimized” ever since their “do it on a computer” gravy bowl was taken away. They refuse to accept the fact that State Street is eternally “over the rainbow”, barring some radical events that — at this stage in our failing country’s history — would destroy more than just the credibility of patent law (this is why it’s a good idea to never underestimate what greed can do to certain people).

      1. 4.2.1

        You absolutely miss the point that Paul makes regarding your (v0m1tfest) “do it on a computer” mantra.

        Here’s a hint: “Note that neither claim is even limited to doing it with a computer

        1. 4.2.1.1

          “Note that neither claim is even limited to doing it with a computer“

          Is that the plaintiff’s position?

          Because if the patentee here filed a lawsuit based on a claim that recites using old art for its intended purpose (to collect data) and then mentally processing that data and saying “That’s bad”, then the patentee’s case should be thrown out and the patentee should be sanctioned very harshly.

          Do you want to defend the eligibility of the claim, Billy, in the absence of any data processing device that is described in terms other than pure functionality? Then let’s hear the argument.

          If you don’t have an argument, then go back to the corner and sit quietly with the tall pointy cap that fits you so perfectly.

          1. 4.2.1.1.1

            Is that the plaintiff’s position?

            Don’t know (I haven’t bothered to check — then again, I was pointing out that YOU were responding to what Paul wrote, and that YOUR response was off-kilter from what Paul wrote).

            Feel free to write in response to people based on what they actually write (instead of, you know, your usual feelings alone).

            1. 4.2.1.1.1.1

              I was pointing out that YOU were responding to what Paul wrote, and that YOUR response was off-kilter from what Paul wrote

              Maybe you should consider getting a life and let Paul respond for himself. He’s good at that, you know (like a zillion times better than you).

              1. 4.2.1.1.1.1.1

                Maybe you should do as I suggest – and not respond with such a “feelings” hi jack mentality.

                And no matter how much you think that Paul may be good at that, the POINT here is not about whether Paul is good at that, but that YOU should be better in the first instance.

                How very Trump of you to NOT think that you are the problem here.

    3. 4.3

      I agree that the claim has problems. Since you describe what your doctor has been doing for years, the claim has a prior art 102 or 103 problem.

      It also has 112 problems in lack of definiteness and perhaps lack of enablement.

      But the subject matter satisfies 101 in my view.

      1. 4.3.1

        the subject matter satisfies 101 in my view.

        So you believe that you can sue doctors for using prior art to collect data (something they are absolutely free to do), then thinking about a new correlation and stating the result of that thought (something else they are absolutely free to do)?

        If so, just come out and say it. It’s your belief after all. Just come out and say it.

        1. 4.3.1.1

          Chuckie,
          I did not say you can sue doctors for thinking about what they found in the prior art. My statement was talking about the infirmities of the claim, nothing more.

          If you quit looking for boogie men, maybe you will quit finding them.

  14. 3

    The reality is that trying to make sense of Alice or the new 101 is a fool’s game. There is no sense to it. There are only the kings and queens of the CAFC that each use it the way they wish to use it. Taranto, for example, is trying to make 101 like it is in Europe with a technical requirement. So he loves to write 101 opinions that he thinks are like technical requirements at the EPO. Etc. Each of the judges may use it differently as Alice is not law but an edict by the Scotus that the judges may use this loose test to invalidate any claim they feel isn’t good enough.

    1. 3.1

      Actually, the CAFC should be required to tell you the panel before you write the appeal brief.

      So I think for Dennis’s question, we should ask for which judges at the CAFC?

    2. 3.2

      Totally not like venue, claim construction, obviousness, enablement, written description, or damages case law which is crystal clear, unchanging and 100% predictable.

      All you need to do is come up with a reasonable practical test that doesn’t lead to k00 k00 results like owning correlations, math, “new” logic, or methods of using old tech to “detect” newly described phenomena and you’re good to go. Go for it!

      I can tell you it’s pretty nice to have a coherent consistent defensible point of view. Sure, software patents aren’t included. So. What.

      1. 3.2.1

        Except these 101 arguments are removed from the claim elements in comparison with what is in the spec and what is in the prior art.

        These 101 arguments are all based on how the judges feels about the claim.

      2. 3.2.2

        owning correlations, math, “new” logic, or methods of using old tech to” [do anything with that old tech]

        software is not math.
        software is not logic.
        copyright inures to software, and as has been put to you (many times, since you like to repeat your same L I E S — how Trump of you), one cannot copyright math or logic.

        As to methods with old things, maybe you should (finally) read something Congress states way back in 1952:

        35 USC 100(b) (emphasis added): The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

        1. 3.2.2.1

          software is not math.
          software is not logic

          Tell everyone what you think that software is, Billy.

          Unfortunately for you, “people in the art” describe software as math or logic all the time. Including in patent applications. Heck, they even advertise their software by describing it as logic. All. The. Time.

          You are very strange and totally not credible person. But we all knew that already.

          1. 3.2.2.1.1

            Person Having Ordinary Skill In The Art are not concerned with obfuscations as you so intently push.

            Tell me again how your copyright project is coming along on math or logic?

            We both know why I ask this question of you.

            We also both know why you have always refused to address the point of that question.

        2. 3.2.2.2

          one cannot copyright math or logic.

          You can’t patent those things either.

          [shrugs]

          1. 3.2.2.2.1

            Your [shrug] is woefully misplaced, as one copyrights software all the time.

            Or are you saying that all such copyright activity is nothing but more of the same type of illicit behavior by unsavory types? (or whatever terms you want to use)

            Are you really struggling that badly with the simple legal concepts here?

        3. 3.2.2.3

          way back in 1952

          LOL

          1. 3.2.2.3.1

            Try adding something on point….

      3. 3.2.3

        I can tell you it’s pretty nice to have a coherent consistent defensible point of view

        A perfect example of Malcolm spouting an opposite, and pretending that he satisfies that opposite — my first reply challenged several of his “points” and he was totally unable (and unwilling) to provide anything remotely resembling a coherent consistent defensible point of view

        Not sure why Malcolm thinks that it would be nice have such, as he continues to show that he does NOT have such.

    3. 3.3

      It makes the perfect issue for moot court: both sides can be right and wrong at the same time!

  15. 2

    [I]n ordinary litigation, the complaint does not need to anticipate defenses (such as invalidity) and plead facts to get around those defenses.

    It seems to me that this should be a point on which both the Alice boosters and Alice skeptics should be able to agree. I am not sure that it is a point of agreement, because so much of Alice boosterism is made in transparently bad faith, but it should be a point of agreement.

    Even if the standard set forth in Mayo/Alice for evaluating § 101 compliance were a reasonable standard, surely these issues cannot be decided merely on the pleadings on a Twombly motion. It is just nuts to say that the patentee must plead facts sufficient to show that a claim to a device is a device and not an abstract idea.

    1. 2.1

      Greg >>> It is just nuts to say that the patentee must plead facts sufficient to show that a claim to a device is a device and not an abstract idea.

      Particularly when the accused device is not an abstract idea.

    2. 2.2

      because so much of Alice boosterism is made in transparently bad faith

      you think…?

  16. 1

    If one went to a CHOSITA (C=Cardiologist) and asked them to describe the necessary functional features of a device to detect afib, would he say:

    Well, we’d need something to identify the overall beat timing and also something to identify the ventricular beats separately, and something to detect beat timing variability having the ability to call out when the variability passes a certain threshold.

    Claim 1 (and indeed all the dependent claims) just recite what they want the device to do – the intended result.

    But is this an eligibility question?

    1. 1.1

      This argument that the claims recite what they “want the device to do” is specious.

      So much willful ignorance. One could not recite what they want the device to do if it was not enabled. There simply should be no argument such as the claims recite no more or the claims merely recite the goal. Guess what. That is not patent law.

      If the claim is enabled then move on to 102 and 103. One cannot recite things in the claim that are not enabled by a person of ordinary skill plus the specification. I cannot claims, a computer that performs the duty of a CAFC judge, because it is not enabled. (Note the irony that most of the judges would hold such a claim abstract even if it were enabled by the specification.)

      There are ways in patent law to police claims that are too broad. 102/103 and if there are new innovations within the claim scope then the reverse doctrine of equivalency, etc. There is case law on this.

      Having some judge make a proclamation about an invention without citing to prior art or 112 is offensive and not law. It is a judge playing king or queen.

      1. 1.1.1

        One could not recite what they want the device to do if it was not enabled.

        1. A method for traveling through time, comprising:
        traveling, via a time machine, through time.

        I’m pretty sure that’s not enabled despite claiming what I want it to do. ;)

        1. 1.1.1.1

          Gee Abstract IDan, willful ignorance seems to be your name.

          You know full well that there is an implied clause (without failing 112).

          1. 1.1.1.1.1

            Gee Abstract IDan, willful ignorance seems to be your name.

            Now, now, your failure to say what you meant the first time does not give you license to go namecalling.

            You know full well that there is an implied clause (without failing 112).

            Are you saying that your earlier statement should be read as “one could not recite what they want the device to do if it was not enabled (without failing 112)”?

            If so, then as an alternate argument, I point to O’Reilly v. Morse, which certainly had a detailed and enabled specification that was valid under 112, but had an ineligible claim that recited “making use of the motive power of magnetism.” That simply claims the result desired, without any specific implementation for how to achieve the result.

            I think, given the recent case law that I quoted farther down, you can read 101 as having some philosophical overlap with 112, but applied to the claims, rather than the written description: to be eligible, the claims must recite a specific implementation for how to achieve a result, and not just an unlimited “this result, by any means.”

            There’s arguably also a philosophical overlap with 103 and admitted prior art, though I don’t think the courts have explored it yet: claiming a desired solution is really no different than claiming “here’s a problem; solve it by any means” and the problem preexisted the disclosure. Accordingly, merely claiming to solve the problem would be obvious, even though any specific implementation of how to solve it may not be.
            Though, again, that’s not current case law. But maybe it should be.

            1. 1.1.1.1.1.1

              There’s arguably also a philosophical overlap with 103 and admitted prior art, though I don’t think the courts have explored it yet: claiming a desired solution is really no different than claiming “here’s a problem; solve it by any means” and the problem preexisted the disclosure. Accordingly, merely claiming to solve the problem would be obvious, even though any specific implementation of how to solve it may not be.
              Though, again, that’s not current case law. But maybe it should be.

              “Functionalities” and “results” are excluded subject matter for patenting. That is the law.

              The issue we are confronted with now is that the CAFC has created a bizarre set of ad hoc exceptions to this fundamental exclusionary principle. And a certain subset of the patent bar is addicted to those exceptions, however bizarre and harmful they may be to the rest of patent law.

              1. 1.1.1.1.1.1.1

                that the CAFC has created a bizarre set of ad hoc exceptions to this fundamental exclusionary principle.

                LOL – your “Accuse Others” meme and spin has this very wrong.

                I explicated this for you in extremely easy to understand Simple Set Theory terms, invited you to partake in a discussion on the merits, provided links and even copies of the entire explication many times now for you.

                You really are not interested in anything but your own dissembling on the topic.

              2. 1.1.1.1.1.1.2

                “Functionalities” and “results” are excluded subject matter for patenting. That is the law.

                Love the quotes, as that merely provides you some “lack of cogent explanation” room, eh?

                .

                The issue we are confronted with now is that the CAFC has created a bizarre set of ad hoc exceptions to this fundamental exclusionary principle.

                We’ve covered this many times in many ways (you might want to attend to those counter points instead of your usual drive-by monologuing).

                First, the exclusionary principles are by NO means fundamental. The Constitution provides that only one single branch is allocated authority to write the statutory law that is patent law – THAT is a fundamental point.

                Second, what you allude to is the very thing to which I provided you a simple Set Theory explication of, and to which I invited you to have a discussion on the merits — repeatedly. I provided countless links and even reposted that explication many times, and every time instead of joining in on a meaningful discussion on the merits, you simply ran away.

                Instead of more of the same of your drive-by accusations, perhaps you can address the counter points already put to you and your accusations? Maybe do more Malcolm than the banal drive-by monologue Internet style “shout down” of repeating your script as if no one has commented on that script.

            2. 1.1.1.1.1.2

              Abstract iDan–it is scope of enablement. The claim invalidated in Morse recited “any”.

            3. 1.1.1.1.1.3

              you can read 101 as having some philosophical overlap with 112,”

              There’s arguably also a philosophical overlap with 103

              Not if you are doing it properly.

              That “philosophy” you see is the nose of wax being mashed – by a branch of the government from which the power to set the meaning of the word “invention” had been str1 pped away by the branch of the government allocated authority (the sole branch) way back in 1952 when 101 was created and 103 was carved out of a prior paragraph.

              This is not new, and has been explained – in detail – by at least one of the principal architects of the Act of 1952 (and in at least a seminal paper on the topic published in the 1962 timeframe).

      2. 1.1.2

        “One could not recite what they want the device to do if it was not enabled.”

        Actually, that is quite easy to do. For example, “I want my device to convert lead into gold.” To my knowledge, this device isn’t be enabled, but it would be patentable subject matter. Of course, even if I found a way to convert lead into gold and was the first to do so, I should be required to claim more narrowly than “convert lead into gold” based on breadth of enablement.

        “There simply should be no argument such as the claims recite no more or the claims merely recite the goal. Guess what. That is not patent law.”

        Apparently, it is patent law.

        1. 1.1.2.1

          You know full well that there is an implied clause (without failing 112).

        2. 1.1.2.2

          Your comments “NS II” always seem to me to from some examiner that is filled with their own arrogance that Alice and KSR have brought.

          Only little wa nk ies come up with this argument that the claims just don’t feel good to them. The claims just are good enough for their little view of the world.

          Try to stick to 112, 102, and 103, and when you see some wan kie judge pulling hard and squ irting us with these fowl opinions fight back and call them on it. This is not law but equity where a queen or king judges how they feel about something.

    2. 1.2

      You nailed it. Functionally, Claim 1 is no different than analyze heart beat data for possible atrial fibrillation or atrial flutter. The only limit on the method of analysis, if any, is that heart beat variability data is that data that is analyzed. Also, I don’t think the claims specifically require using thresholds as a relevance measure. Apparently, the claim covers anything that outputs some indication of relevance.

      1. 1.2.1

        This. From Finjan, “A result, even an innovative result, is not itself patentable”; and from SAP America, eligibility requires “the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.”

        1. 1.2.1.1

          Abstract iDan, I am well aware that the law of 101 has generated scores of new ideas on how to invalidate claims by proclamation.

      2. 1.2.2

        Non >>The only limit on the method of analysis, if

        This is just wa nker ja ck as sdom. Just sickening to see this stuff written down.

        Try–boy—to use 102 and 103. These psychotic proclamations about claims are basically people getting a warm rag and deciding what they feel the claim is.

        Use 112, 102, and 103.

    3. 1.3

      Claim 1 (and indeed all the dependent claims) just recite what they want the device to do – the intended result.

      But is this an eligibility question?

      No, this is not (or at least—in a sane world—it should not be) an eligibility question. It is a written description question, that should be adjudicated under §112.

      1. 1.3.1

        Thanks Greg, that’s what I was thinking, although the results in the cases mentioned by iDan upthread and others holding that results are not eligible do give me pause.

        1. 1.3.1.1

          I am with you, Mr. Marsher. They give me “pause” (or at least indigestion) because they conflate the written description requirement with the subject matter eligibility inquiry. Eight times out of ten this conflated standard gets one to the right answer by the wrong path, but the wrong path is longer and harder, and a 20% error rate comes at a cost. It would be better if the courts used the right tool (§112) to solve the problem of claims that claim an outcome rather than a means to achieve an outcome.

          1. 1.3.1.1.1

            It would be better if the courts used the right tool (§112) to solve the problem of claims that claim an outcome rather than a means to achieve an outcome.

            Would it “better” if the same result is achieved (i.e., all claims reciting “new” computers in terms of their logic-executing functionality are invalid)?

            Because you can rest assured that the same screechers will be screeching either way.

            1. 1.3.1.1.1.1

              Would it “better” if the same result is achieved

              The Ends do not justify the Means.

              Yes, you have a problem with my short and clear English statements that capture the heart of your position and what is wrong with that position.

              But that is most definitely a “You” problem, and one that you should address.

      2. 1.3.2

        No, this is not (or at least—in a sane world—it should not be) an eligibility question. It is a written description question, that should be adjudicated under §112.

        Greg, is it your argument that rather than looking in the claim for limits on scope to a specific implementation, that should just be under written description? I.e. if the claim recites “achieving this desired result”, then it should be eligible under 101, and valid under 112 provided the specification details a specific implementation to achieve the result? And if so, is the claim scope limited to only what is disclosed in the spec?

        What would that mean for statements in the spec that are open ended like “although this disclosure describes some example implementations, one of skill in the art may readily envision other implementations”? Should those be ignored, or should they make the claim invalid since the claim is no longer limited by the spec?

        And finally, what about the claim in Morse I mentioned above? He even had a claim that recited:
        I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.”
        Is that invalid under 101, 112, or both?

        1. 1.3.2.1

          I think that the Morse court reached the right conclusion for the right reason. Morse, however, was not decided on any specified statutory grounds, so it is up to us now to retrofit it onto the present statutory scheme. My contention is that when Congress codified the essential genius of the Morse holding, they did so in the language of §112 (paragraphs a, b, & f).

          I concede that there is some loose language in Morse that lends itself to a §101 reading, but that language does not find statutory support in the later codification of the patent laws in 1952. Given the choice between applying Morse as if it had been codified, and applying it as if it were some free-floating ghost, untethered to rest of the law, the attractions of the first approach are so obvious as to be unworthy of further exposition.

          1. 1.3.2.1.1

            My contention is that when Congress codified the essential genius of the Morse holding, they did so in the language of §112 (paragraphs a, b, & f).

            I agree, but as I said above, I think there’s a philosophical overlap with 112 being applied to the description, and 101 being applied to the claims. The Morse court even said that the description was fine for most of the claims: “we perceive no well founded objection to the description which is given of the whole invention and its separate parts, nor to his right to a patent for the first seven inventions set forth in the specification of his claims.”

            The issue with claim 8 was that it wasn’t limited to the description. Kind of like the opposite of an omnibus claim – rather than claiming everything described, it claimed everything described as well as everything not described.

            Also, as an aside, I’m not sure how much shifting the argument to 112 vs. 101 helps… we’d still have the same arguments, but over what it means to “particularly” point out and “distinctly” claim.

            1. 1.3.2.1.1.1

              The Morse court even said that the description was fine for most of the claims: “we perceive no well founded objection to the description which is given of the whole invention and its separate parts, nor to his right to a patent for the first seven inventions set forth in the specification of his claims.”

              Right, they upheld Claims 1–7 because those claims did not extend beyond the scope of what was described, and then they tanked Claim 8 because it did extend beyond the scope of what was described. That is exactly what I am saying should happen, and if you are going to tank a claim for lacking adequate description, it seems intuitive that this tanking should be done under §112(a).

              I’m not sure how much shifting the argument to 112 vs. 101 helps.

              “Helps” with what. I am not trying to “help” anyone here. I simply contend that the statute should operate more or less as it is written, and the part of the statute that concerns adequate description is §112, not §101. If the claim deserves to fail, then I do not want to “help” anyone avoid that failure. I just want the law to work in a way that everyone can recognize as transparently fair because it is specified upfront, in writing.

              Everyone who applies for a patent knows or should know that they cannot claim what they describe. If you try to claim more than you have described, you have no one to blame but yourself when you fail. If, on the other hand, you claim something that some judge (applying heaven only knows what standard) contends to be an “abstract idea” (whatever that means), you might be pardoned for your indignance, because the statute never mentions abstract ideas as prohibited, and what more you were claiming a device that is about as “abstract” as a lead weight.

              We should want the system to seem fair to those involved. The fact that one arrives at the same outcome regardless of whether it is §112 or §101 may not affect the ultimate decision of infringement or no, but it definitely affects the perceived fairness of the outcome.

              1. 1.3.2.1.1.1.1

                This. ^^^^^^^^

            2. 1.3.2.1.1.2

              Goodness, so much of second half of my 1.3.2.1 was so poorly written as to be largely unintelligible. My apologies. I will try again below.

              I’m not sure how much shifting the argument to 112 vs. 101 helps.

              “Helps” with what? I am not trying to “help” anyone here. I simply contend that the statute should operate more or less as it is written, and the part of the statute that concerns adequate description is §112, not §101. If the claim deserves to fail, then I do not want to “help” anyone avoid that failure. I just want the law to work in a way that everyone can recognize as transparently fair, because it is specified upfront, in writing.

              Everyone who applies for a patent knows or should know that they cannot claim what they do not describe. If you try to claim more than you have described, you have no one to blame but yourself when you fail. If, on the other hand, you claim something that some judge (applying heaven only knows what standard) contends to be an “abstract idea” (whatever that means), you might be pardoned for your indignance, because the statute never mentions abstract ideas as prohibited, and what more you were claiming a device that is about as “abstract” as a lead weight.

              We should want the system to seem fair to those involved. The fact that one arrives at the same outcome regardless of whether it is §112 or §101 may not affect the ultimate decision of infringement or no, but it definitely affects the perceived fairness of the outcome.

              1. 1.3.2.1.1.2.1

                Me: I’m not sure how much shifting the argument to 112 vs. 101 helps.

                “Helps” with what?

                Clarification and predictability of jurisprudence, no more. Same goal as you: “I just want the law to work in a way that everyone can recognize as transparently fair, because it is specified upfront, in writing.”

                1. I’m not sure how much shifting the argument to 112 vs. 101 helps… with… [c]larification and predictability of jurisprudence… .

                  Really? You do not think that tanking a claim that is not sufficiently described under the statutory portion that calls for “a written description of the invention” will create a set of more clear and predictable results than will be achieved by tanking it under a portion that provides that “[w]hoever invents or discovers any new and useful process, machine… may obtain a patent therefor…”? I find your response intuitively implausible.

                2. Abstract iDan,

                  It is difficult to see that as your goal if you are willing to permit “non-shifting” of putting what is properly in 112 BACK into 112 and not permitting the mucking up of 101.

                  It must be abundant to you that the Court HAS mucked up 101, and if you cannot see that (or admit that), then the discussion is off track right from the start.

        2. 1.3.2.2

          [I]s it your argument that… if the claim recites “achieving this desired result”, then it should be… valid under 112 provided the specification details a specific implementation to achieve the result?

          Definitely not. It is my contention that one can only claim that which one describes. Given that it is (in all but the rarest instances) impossible to prove that one has described every means to achieve a given end, when a claim recites an end (e.g., “a device that measures heart beats”), without specifying the means, then one of two things can happen.

          If that broad clause occurs in the context of a combination claim, then the clause can be read as a §112(f) clause. Where, however, the clause does not occur in a combination claim, then the whole claim is simply invalid for failing the written description requirement (one has claimed more broadly than one has described).

          In other words, we do not read insufficiently described claims as limited to described embodiments. We just tank them as invalid under §112.

          1. 1.3.2.2.1

            If that broad clause occurs in the context of a combination claim, then the clause can be read as a §112(f) clause. Where, however, the clause does not occur in a combination claim…

            Not sure what you mean by combination claim – is that in contradistinction to single-means claims?

            … then the whole claim is simply invalid for failing the written description requirement (one has claimed more broadly than one has described)

            What if there’s boilerplate language in the spec like I mentioned above noting that “other implementations may be envisioned by one of skill in the art”? In such cases, you haven’t claimed more broadly than one has described, even though your description of those broader portions is limited… Or should we just say that any application that includes boilerplate is invalid? Better not make that retroactive. ;)

            1. 1.3.2.2.1.1

              Not sure what you mean by combination claim – is that in contradistinction to single-means claims?

              Exactly. As §112(f) makes plain, this portion of the statute only applies to “[a]n element in a claim for a combination… .” That is all I mean by “combination claim.”

              What if there’s boilerplate language in the spec like I mentioned above noting that “other implementations may be envisioned by one of skill in the art”?

              Come now, “other implementations may be envisioned by one of skill in the art” is not a description. If the defendant’s lawyer asks “where in the patent have you described this embodiment,” and all the patentee can point to in response is “other implementations may be envisioned by one of skill in the art,” then I think that this patentee will admit—if she is being honest with herself—that her claim deserves to fail.

              1. 1.3.2.2.1.1.1

                Come now, “other implementations may be envisioned by one of skill in the art” is not a description. If the defendant’s lawyer asks “where in the patent have you described this embodiment,” and all the patentee can point to in response is “other implementations may be envisioned by one of skill in the art,” then I think that this patentee will admit—if she is being honest with herself—that her claim deserves to fail.

                Agreed… Though I have had Examiners cite exactly to that sentence in prior art to claim that it teaches an element of the claims. [eyeroll]

                1. I have had Examiners cite exactly to that sentence in prior art to claim that it teaches an element of the claims.

                  Same here. I find it equally implausible in that circumstance.

          2. 1.3.2.2.2

            “In other words, we do not read insufficiently described claims as limited to described embodiments. We just tank them as invalid under §112.”

            Except that the standards for “insufficiently described” or 112f invokation are so low that problematic claims are rarely questioned under 112, much less rejected/invalidated.

            While you seem to sincerely wish for these issues to be handled under 112 rather than 101, it is apparent than most of the patent bar just wants 101 to go away and then promptly forget the underlying problems.

            1. 1.3.2.2.2.1

              [I]t is apparent than most of the patent bar just wants 101 to go away and then promptly forget the underlying problems.

              Regrettably, I am sure that you are right about that. I complained above about the bad faith on the side of the Alice boosters, but it is clear that there is just as much bad faith on the side of the Alice skeptics.

              [T]he standards for “insufficiently described” or 112f invo[c]ation are so low that problematic claims are rarely questioned under 112, much less rejected/invalidated.

              O.k., so I think that the common ground that we can both acknowledge is that there exists a class of claims that are issued that should not be (or that are moving through the examination process and should never get to grant in their current condition, but which likely will). So, there is a problem, and something needs to be done about it. The business of doing something will require effort.

              Does it make more sense to expend this effort trying to make a portion of the statute which clearly does apply take effect to solve exactly the problem that this statutory provision was meant to solve, or to expend the effort force fitting a largely irrelevant portion of the statute into the gap? Mostly my argument is an argument for option #1. I find it strange that this even gets push-back, because the superior appeal of option #1 seems fairly intuitive to me.

              The section 112 solution is more fair, more intuitively intelligible, and easier in practice to achieve. Why did the SCotUS (and the patent bar) choose to tackle this problem the hard way?

              1. 1.3.2.2.2.1.1

                “Does it make more sense to expend this effort trying to make a portion of the statute which clearly does apply take effect to solve exactly the problem that this statutory provision was meant to solve, or to expend the effort force fitting a largely irrelevant portion of the statute into the gap?”

                I absolutely agree that 112 would have been better for handling those claims than 101.

                But something has now been “done about” those claims: Alice.

                Going forward, “solutions” which nullify Alice without dealing with those claims seem worse than the status quo. Not because there are no costs from Alice (I recognize that there are), but because only the status quo provides motivation to the patent bar to work torwards a real solution to the problem of those claims.

                1. But something has now been “done about” those claims: Alice.

                  Translation: “But the Ends justify the Means.”

                  There is a reason Ben that your views are routinely panned and that you are associated with Malcolm.

                2. “Going forward, “solutions” which nullify Alice without dealing with those claims seem worse than the status quo. Not because there are no costs from Alice (I recognize that there are), but because only the status quo provides motivation to the patent bar to work torwards a real solution to the problem of those claims.”

                  Not even wrong.

                3. “[S]olutions” which nullify Alice without dealing with those claims seem worse than the status quo… because only the status quo provides motivation to the patent bar to work torwards a real solution to the problem of those claims.

                  As ever, Ben, I thank you for a thoughtful conversation. The question of whether a return to the pre-Alice/Mayo status quo ante would be worse than the present status quo is an interesting point, but one which (I blush to admit) I had not really considered before. I suppose that I am not presently prepared to agree that the return to the status quo ante would be worse than the status quo, but I admit that this is at least possible. I will have to think on that point.

                  I see no indication of any patent professional organization was working to strengthen 112 in the years before Alice or since.

                  Here, I definitely agree with you, and this gets at the “bad faith” that I mentioned in my #2 above.

                  In theory, the defendants who brought the §101 challenges in Mayo and Alice all the way to the SCotUS could have much more sensibly brought their challenges as defenses under §112 rather than §101. Indeed, this would have been slightly more consonant with §282’s provision that “[i]nvalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability [shall be a defense in any action involving the validity or infringement of a patent]” (§101 is not explicitly stated as a “condition for patentability” in part II, whereas non-compliance with §112 is explicitly a defense under §282(b)(3)). In other words, the Mayo and Alice defendant’s defenses should have been stronger if they were presented as §112 defenses. And yet, they instead chose to present the defense as a §101 challenge. Why so?

                  As Paul Morgan alludes in his #10 above, I suspect the reason for this choice emerges from the strategic advantage of a §101 challenge in litigation compared to a §112 challenge. Because there is a lot of case law saying that §101 is a “threshold” question (see, e.g., Diamond v. Diehr, 450 U.S. 175, 213 (1981)), courts feel much comfortable deciding §101 on the pleadings or at the summary judgment stage than they feel in deciding §112 at the same point in litigation. In other words, what this is really about is not reaching the right ultimate conclusion (that could be done equally well if not better with §112 as with §101), but rather reaching a conclusion in a manner that is as inexpensive as possible for the accused infringer. That is to say, the real attraction of Alice for its boosters is not just that it cuts down claims that deserve to fail, but that it does so in a manner that shifts the balance between plaintiffs and defendants in a manner more favorable to defendants.

                  Precisely because §112 issues are more likely than §101 issues to go to trial, the alternative universe in which Alice were decided on §112 grounds rather than §101 grounds would be a very different universe. I see a lot of Alice boosters focusing on the ultimate good achieved (claims failing that deserve to fail), with far less regard given to the litigation equities disrupted by this approach compared with its near alternative. That is the “bad faith” that I was mentioning above.

                  It is precisely this upsetting the balance between litigation parties that makes it hard for me to say whether the status quo ante would be worse than the status quo.

                4. Translating what Greg is stating while trying to be polite is that there is FAR too much lack of critical reasoning and “Ends justify the Means” going on with the desire to legislate from the bench with 101.

                  Could 112 be more strongly pursued? More strongly enforced?

                  Perhaps.

                  But that is a tangent to the larger problem here.

              2. 1.3.2.2.2.1.2

                I’m a member of the patent par and I’ve always favored the “112 solution” over the “101 solution/non-solution.” As a patent prosecutor, I’ve long favored showing all of the components of at least one embodiment of the claimed invention, defining all of the terms used in the claims and providing examples of each of the components claimed.

                Most of the pushback I have had against doing the above has come from litigators who argue it is better to keep the scope of the invention “vague” so they can have more leeway in court.

                Had the courts been been more strict with respect to 112 issues and rewarded patentees for including definitions of terms and providing clear examples, I think my life would be easier than it is now and the 101 mess might not be as bad as it currently. For example, courts regularly deciding that claims failed under 112 because of a lack of definition of key claim terms would allow me to cite cases to clients as to why it is important to beef up their applications with definitions of claim terms. Without such court decisions, many clients think they can get by with “skimpy specifications.”

                Another big advantage of the 112 solution is that if we were fighting about 112 issues instead of 101 issues, there could have been a productive discussion between the patent bar and the USPTO as to what constitutes “enabling disclosure” for computer-related, software-related and medical-related technologies. Such a discussion could have produced objective and rational rules with which I think both the USPTO and most rational members of the patent bar could live.

                Instead, we’ve been stuck with the subjective and irrational world of the current 101 decisions and rejections that make a mockery of the concepts such as “legal system” and “justice.”

                1. I don’t know why you’re trying to argue that 112 is better for dealing with problematic claims than 101. I agree and said as much before.

                  I see no indication of any patent professional organization was working to strengthen 112 in the years before Alice or since.

            2. 1.3.2.2.2.2

              No, Ben, what “most of the patent bar wants” is for the law to be treated properly by the judicial branch and to NOT legislate from the bench in such a ham-fisted way.

    4. 1.4

      But is this an eligibility question?

      No.

      No matter how conflated those who despise certain types of innovation may want to make things.

      (See Greg’s comment about ‘bad faith’)

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