The October Berkheimer Series

by Dennis Crouch

In Berkheimer, the Federal Circuit explained that underlying factual disputes might prevent a motion on the pleadings or summary judgment decision.  In this post, I looked at four recent district court cases that cite Berkheimer.

In iSentium, LLC v. Bloomberg Fin. L.P., 2018 WL 5447503 (S.D.N.Y. Oct. 29, 2018), the district court considered Berkheimer but primarily cited to its statement that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.”  This was a case where additional facts were not necessary because the claim elements beyond the abstract idea were merely “a combination of elements is well understood, routine and conventional.”

In ECOSERVICES, LLC, Pl., v. CERTIFIED AVIATION SERVICES, LLC, 2018 WL 5629301 (C.D. Cal. Oct. 26, 2018) the district court had an interesting use of Berkheimer.  In the case, the defendant did not file for summary judgment on eligibility but instead waited until post trial to make its eligibility motion.  The district court found no waiver — noting particularly that post trial a good time because of the potential underlying facts that might be developed there. Citing Berkheimer.  In fact, in that case the defendant relied “on trial testimony and the jury’s verdict for part of its argument, [as such] it was reasonable to wait to resolve the § 101 issue until after trial.”

In CardioNet, LLC v. InfoBionic, Inc., 2018 WL 5017913 (D. Mass. Oct. 16, 2018), the court ruled on a 12(b)(6) motion to dismiss. As such, the court limited the potential factual-dispute-inquiry to the allegations made in the complaint.  However, the complaint did not include any particular “non-conclusory factual assertions” to create any dispute.  As such, the court ruled the patent ineligible as a matter of law.

Finally in KROY IP HOLDINGS, LLC, Pl., v. GROUPON, INC., 2018 WL 4905595 (D. Del. Oct. 9, 2018), the magistrate judge refused to recommend dismissal of the case on the pleadings — finding that “questions of fact remain as to whether the asserted claims of the ’660 patent were conventional at the time of the patent, and unresolved issues of claim construction could potentially bear on the analysis.”

71 thoughts on “The October Berkheimer Series

  1. 11

    Meanwhile. On November 5th, the Supreme Court denied another cert petition on 101 in Real Estate Alliance Ltd. v. Move, Inc., et. al.

  2. 10

    What’s the takeaway? Have Expert testimony ready at the pleadings stage? Or submit Expert testimony with pleadings as a pre-emptory response to a rebuttal (by the defendant or Judge?) of the presumption of validity of the patent…

    1. 10.1

      rebuttal (by the defendant or Judge?) of the presumption of validity

      ?

      It’s called “challenging the eligibility of a patent claim.” If the defendant does this (which is should certainly do in every instance where a “do it on a computer” claim is asserted), then the plaintiff’s best choice is to respond, assuming that there is a non-frivolous response.

  3. 9

    MM, you are not infallible. You have bravado, but sometimes you drop items that are more than arguable.

    anon jumped all over this, with good reason (but of course she was wrong about why you were wrong)

    “So go ahead and claim the decoding chip in objective structural terms, distinguishing the chip on that basis from prior art decoding chips. I have no issue with that whatsoever.”

    This makes no sense. Either the art of encryption is being advanced, or the art of chip design. If the chip uses a litho mask made of Crest toothpaste, it’s novel regardless of its use for encryption. If the only novelty is the fact that the precise gate arrays of a conventional chip have not been used in that configuration before, what’s the difference between configured code that does work using generic gates, or gates arranged like code to do work directly?

    There is no meaningful difference. There is no meaningful difference between content arrayed as code or arrayed as gates.

    There is a VAST difference between information consumed by a machine, and information consumed by a person.

    The same goes for logic. Logic used by a machine to do something is work- it is not an abstraction. It cannot be an abstraction because without a human mind to host it, an abstraction can’t exist. An MPEG scheme takes time and social convention to build, implement, and deploy. No IP protection makes that a non-attractive proposition because you get a free rider problem. Nobody wants to open source non-fun, non-exciting work. I can see a policy argument for it. I can see a compromise on a hard political point.

    Logic consumed by a person to reach a goal MUST be beyond the patent system, because what goes on between people’s ears is beyond the legitimate reach of any government.

    1. 9.1

      Malcolm lacks an appreciation that machines are not human.

      I coined a use of a word for this condition a long time ago:

      Anthropomorphication.

      To Malcolm, it is sufficient that a machine is “acting as a proxy” for a human, and doing (merely) what a human may do (even as it is well known that human thinking is NOT what computers do).

      This too has been noted as a legal fallacy.

      Since Malcolm won’t even abide by a far more simple explication (i.e., my simple set theory explication for the exceptions to the judicial doctrine of printed matter), I have invited others (academia) with whom Malcolm may actually listen to (a tall order even if from such) to explain the rise, fall, and current zombification attempts with the legal doctrine of mental steps.

      These are all known and established legal doctrines (differentiating from your own attempts, Marty).

      1. 9.1.1

        The so called Printed Matter Doctrine, as too the so called Mental Steps Doctrine, are currently completely empty vessels that mean whatever a jurist wants them to mean. The relationship of code (printed matter) to a substrate (what?) may or may not be functional (huh?) and only makes sense, in the end, if thought of my way: from the POV of the information consumer, not the information itself.

        1. 9.1.1.1

          are currently completely empty vessels that mean whatever a jurist wants them to mean.

          NO.

          Not when they are applied properly.

          It is the improper application that makes them “empty vessels.”

          That’s kind of the point in the whole “scoreboard is broken” motif.

          only makes sense, in the end, if thought of my way:

          Most definitely not. Not even close.

          1. 9.1.1.1.1

            Not when they are applied properly.

            LOL

            Nice try, Billy.

            1. 9.1.1.1.1.1

              ?

              Try? No try. Do.

              Or do not.

    2. 9.2

      Martin, you are confusing what is being claimed (and what is protected by the claim relative to what is in the prior art) with actual objects that might fall within the scope of the claim. If you lack the intellectual capacity to keep these things straight, then you are not fit to have the conversation. You might as well pick up the phone and scream into Tom Cech’s face about RNA-mediated catalysis or something else that is beyond your understanding.

      Either the art of encryption is being advanced, or the art of chip design.

      Or both! “Advancing the art” is not an eligibility test. A new book of instructions about how to make a better choo-choo train “advances the art” of choo-choo train building but it’s still not eligible. Useful correlations “advance the art” of diagnosing diseases. They’re still not eligible. So now we move on to your next point.

      what’s the difference between configured code that does work using generic gates, or gates arranged like code to do work directly?

      Code is an ineligible abstraction, as is a method of writing the code (ever notice how nobody ever claims a method of typing instructions into a computer? ever wonder why that is?). A physical “gate” is an object that can be described in objective structural terms. It has measurable properties that are determinable by anyone with the tools to measure them. It has size, it has weight, it has thickness, it has density, it is composed of atoms in a particular arrangement that can be described in objective terms. These are profound and fundamental differences when compared to “code”.

      What is the structure of “configured code”? How can an objective observer of “code” determine whether a “code” is “configured” or not? For example, take the following: 0101001111100101010001000101111001011001010 Is that “configured code”?

      There is no meaningful difference between content arrayed as code or arrayed as gates.

      “Content” is ineligible subject matter so if you are arguing that a chip is ineligible when it differs from the prior art only in terms of the “content” that is “expressed” by its recited structure, then we are in agreement. But it’s undoubtedly the case that certain well-described specific chips have improved functionality as a result of their well-described and specific structures. And those are the ones that are going to be eligible for patenting.

      Note who gets left out of the patent system here: programmers and the attorneys who claim function at the level of abstraction (i.e., without reciting any novel structure). This is not a problem for anybody in the economy except for that microscopic class of individuals. There is no effect on the economy, and there is no effect on progress in the computer arts. On the contrary, expunging programming from the system will direct resources to concrete tangible improvements in hardware which is where it belongs.

      Logic used by a machine to do something is work- it is not an abstraction.

      Logic is an abstraction, period. Always. The machine is not an abstraction, but it can certainly be claimed as an abstraction when the only claimeddifference between the “new” machine and the old machine is its functionality. Are you starting to “get it”, Martin?

      This isn’t terribly difficult. What’s difficult is accepting the result, which follows from the premise in a straight unbroken line of reasoning without any assumptions. It’s that fact which has driven the CAFC to create an incoherent mess out of what should be straightforward law. It’s as if the CAFC tasked itself with the job of explaining why gravity is illegal. They can use all the fancy self-serving language that they want but once anyone tries to shoehorn their reasoning into the rest of reality, it’s inevitably going to fall to pieces. Good for me, very bad for them.

      I can see a compromise on a hard political point.

      I can, too. There are an infinite number of compromises but the worst one is a pile of nonsensical judicial activist g@ rb@ge from the CAFC trying tp prop up the protection of logic and information with standard utility patents, which is what we have now.

  4. 8

    How does one raise as a factual “issue”, any facts surrounding something which is supposed to be presumed? i.e. if the onus is not on the patentee to show validity (it is presumed) how does one even begin to broach the subject of facts relating thereto… I mean, pointing out the absence of the presentation of facts rebutting the presumption is clearly premature… and equivalently trivially obvious that they have not been yet presented.

    so what would the proper wording be (given the patent is presumed valid there is no onus on the patentee to allege validity, or to allege facts supporting validity…), for something equivalent to the following, in the pleadings by a patentee alleging infringement:

    “The specific facts surrounding subject matter under s. 101 of the claims at issue will show and are consistent with the presumed validity of the patent. These specific facts are sufficient to maintain the presumption in the face of any purported fact or facts which have or may be presented to rebut the presumption of validity vis-à-vis s. 101.”

    I suppose this whole thing is related to: “How to Plead Not Guilty in the context of the Presumption of Innocence without pleading specific facts…. “

    1. 8.1

      Learn how to write coherently.

      Thanks.

    2. 8.2

      Thanks Anon2; I was wondering the same thing …

      In similar fashion, I saw a dist ct case a few years back where part of the judge’s s101 ruling included stating (complaining) that since the patent owner / inventor didn’t posit his own (alleged) abstract idea for the asserted claims, it was O.K. to rely on the infringer’s / court’s (SCOTUS-barred multiple) idea assertions as being accurate.

      Akin to a criminal trial where the D.A. asserts — which the court goes along with (or comes up with their own) — that since the accused didn’t provide their own idea of what criminal act they performed, the D.A. assertion of what the act was must be correct.

      Sheeesh.

      1. 8.2.1

        Akin to a criminal trial where the D.A. asserts — which the court goes along with (or comes up with their own) — that since the accused didn’t provide their own idea of what criminal act they performed, the D.A. assertion of what the act was must be correct.

        It’s actually nothing like that at all.

        The claim is there for everyone to see. Nobody needs to guess about whether the claim was written, nor does anyone need to guess why the claim was written (the claim was written to protect something that the patent owner believed was protectable).

        The 101 question is a legal question about what the claim actually protects. The defendant points out the fact that the claim protects an abstraction (or two abstractions, or a hundred billion abstractions) in a prior art context (computing, using ancient hardware) and nothing beyond that is recited in the claim. The defendant has thus met its burden and the ball is in the patentee’s court. If the patentee can’t provide a non-frivolous response, then the patentee loses.

        Golly, this must be hard for you two to follow. Shall I write it in crayon for you to make you more comfortable?

      2. 8.2.2

        I saw a dist ct case a few years back where part of the judge’s s101 ruling included stating (complaining) that since the patent owner / inventor didn’t posit his own (alleged) abstract idea for the asserted claims, it was O.K. to rely on the infringer’s / court’s (SCOTUS-barred multiple) idea assertions as being accurate.

        [clutches pearls]

        Did you call your therapist to talk you down?

  5. 7

    MM we go around on this, always back to this point.

    That the CAFC won’t give up on the essence of electronic structure is a political problem. They have an undying belief that some of these purely abstract information inventions, like encryption or compression (at least) should be eligible, somehow.

    I come back to MPEG because on that and similar, I can see the point. Writing that stuff takes time. It’s not necessarily creative work or an improvement on other standards, but it’s not obvious because nobody is just going to guess the exact parameters. It’s useful, and much of the utility comes from other people using it, and the existence of IP protection for it is the mechanism to fund the creation and maintenance. When the already existing public protections of FRAND costs for SEP’s makes some sense to me.

    Patenting new, no-obvious correlations can’t make sense and can’t be constitutional.

    You have not even dented my confidence that my political and philosophical compromise is the right one. Human beings think about correlations, and do stuff with the results. No patent should be able to touch that. But some decoding chip running a widely agreed on, patent supported algo to deliver bits that have no meaning to any human being?

    Not the end of the world if you can’t get prohibition. And I don’t think you will ever get it.

    1. 7.1

      MS: That the CAFC won’t give up on the essence of electronic structure is a political problem.

      No. It’s primarily a problem of cluelessness and it’s a problem of the defendants not making the right arguments. Don’t be deceived into thinking that the CAFC judges are exceptionally intelligent and they all have “thought this through.” Some of them actually believe the silliness that they write and that’s in part because they’ve never been challenged on it.

      They have an undying belief

      Certain “beliefs” tend to wither away when the embarassment and shame kicks in. That’s why you go into battle with all the arguments lined up and, in this instance, you get right to the core of it and you don’t let the judges wiggle away with their silliness. Logic and information are ineligible for patenting. The CAFC has created a very weird exception out of thin air where you can — in certain obscurely described situations that together form an incoherent mess — that says you can protect logic and information when you describe the functional results of applying that logic in the context of a prior art tool that exists for the sole purpose of using logic to process and store information.

      encryption or compression (at least) should be eligible

      First of all, nothing is more absurd on its face than the idea that encryption logic should be eligible for patent protection. So-called “compression” logic is a close second. Encryption and compression logical schemes have progressed just fine since forever without the junk patents that the PTO has been handing out. The problems created by junk patents in those fields vastly outweigh any benefits that patenting might provide because patenting in those areas provides no benefits whatsoever. Might as well patent a method of socializing with other people over a computer network. It’s just incredibly st 0 0pit.

      it’s not obvious because nobody is just going to guess the exact parameters

      No idea what this is supposed to mean. Data compression existed before MPEG.

      the existence of IP protection for it is the mechanism to fund the creation and maintenance

      You think people wouldn’t come up with “new” compression algorithms if there were no patents because … there would be no value to it? Get real. Also, I have no idea what the “maintenance” comment is referring to. Are there patents on methods of “maintaining” compression software?

      Human beings think about correlations, and do stuff with the results. No patent should be able to touch that. But some decoding chip

      So go ahead and claim the decoding chip in objective structural terms, distinguishing the chip on that basis from prior art decoding chips. I have no issue with that whatsoever. Grown-ups in other tech fields have been patenting very tiny compositions of matter and articles of manufacture for a long, long time. Sometimes the claims are narrow! But still valuable (because they describe and “protect” a useful object that has a value).

      Patenting new, no-obvious correlations can’t make sense and can’t be constitutional.

      Right. But why is that the case? Have you thought about that? Because when you understand why patenting correlations doesn’t make sense you have the beginnings of what it takes to understand why patents that protect information processing methods carried out using old tools are also not eligible.

      1. 7.1.1

        So go ahead and claim the decoding chip in objective structural terms, distinguishing the chip on that basis from prior art decoding chips. I have no issue with that whatsoever.

        That’s a blatant L 1 E.

        Any software could be written in your optional claim format describing a CRM with the particularity of the physical structure, and that claim would not only cover all equivalents (including the other optional claim format that is much more easily recognized by PHOSITA, the “structural” would take tens to hundreds of pages and would NOT be recognizable by human examiners (for which, we ALL could be certain that you would whine incessantly about).

        By the way, how is your attempt at copyrighting logic coming along?

        1. 7.1.1.1

          So go ahead and write the claim, Billy.

          1. 7.1.1.1.1

            Are you daft?

            Do you not understand the point?

            At least try.

        2. 7.1.1.2

          the “structural” would take tens to hundreds of pages and would NOT be recognizable by human examiners

          Oh my goodness! That’s so many pages! Totally different from the hundreds of pages of crystal coordinates and sequences that grown ups file every day in the Amish art units.

          NOT be recognizable by human examiners

          Pretty sure this is one of the reasons that we humans have instructed programmable computers to help us compare stuff, Billy.

          1. 7.1.1.2.1

            You continue to be daft and miss the point directly in front of you:

            Your desired optional claim format remains an (and only an) option.

          2. 7.1.1.2.2

            Totally different from the hundreds of pages of crystal coordinates and sequences that grown ups file every day in the Amish art units.

            That’s a fine option.

            But your comment is not on point.

            As to the “Amish,” and “grown-up,” you are the one (not surprisingly) not acting grown-up here pretending that what you may be familiar with is what is necessary for any “real invention.”

            And it’s more than a bit funny that for all the “grown-up art unit” shtick you want to use, the “gee, we don’t know what may happen or why” LACK of being grown-up is endemic in your art.

            I am not making fun of the art (as innovation happens there too), but I am making fun of your (oh so typical) duplicity and Accuse Others meme.

            It’s as if you see what is weak in your own backyard and use that as an attack, hoping others won’t see how it applies to you.

            Here’s a clue: you are transparent.

  6. 6

    Define: “non-conclusory assertion” anyone? I know it’s probably “obvious” to somebody… please explain.

    1. 6.1

      “I am not sure if I believe what I’m saying”

      That’s a non-conclusory assertion. I think.

      1. 6.1.1

        Does not sound like you are asserting anything there…

        1. 6.1.1.1

          I see… really what was meant is that there is NO assertion.

          Now, I observe that the lack of an assertion is not any kind of assertion… it is the absence of one. It requires a special kind of intellect of doublespeak to ignore such a basic thing and invoke such an odd phrase.

          1. 6.1.1.1.1

            intellect of doublespeak

            That’s being F A R too gracious of a characterization of Malcolm.

            1. 6.1.1.1.1.1

              Who?

              I was referring to the judge(s)…

              1. 6.1.1.1.1.1.1

                OK – gotcha.

        2. 6.1.1.2

          Does not sound like you are asserting anything there…

          Thank you.

          1. 6.1.1.2.1

            Obtuse.

            Is it deliberate?

  7. 5

    It cannot comport with due process that every district judge can pick and choose the auspices of a major procedural step in virtually every patent case. Markman solved a major problem, and today nobody would seriously argue that it was not an important and helpful evolution. The same things needs to occur to construe the invention- to identify the purported novelty and the pertinent PHOSITA. Information inventions can be abstractions, models, and simulations (among other descriptions) of things in the world- and to look at the thing, or the technologically abstracted thing, or both, is an essential inquiry.

    1. 5.1

      Information inventions can be abstractions, models, and simulations (among other descriptions) of things in the world

      All these things are ineligible subject matter.

      1. 5.1.1

        MM you say it’s so, but cases proceed.

        The correct test is not “conventional” but simply whether the non-abstract elements (taken as a whole) are in the public domain (i.e., are they anticipated by the prior art or are they obvious variations of the prior art)

        If every element of the claim is abstract, except a generic computing environment, how do you run your test?

        The CAFC is nowhere near willing to give up on the essence of electronic structure. It’s a political problem not solved, and your railing, while entertaining, admirable, and no doubt the way it should be, is not descriptive of the actual situation.

        1. 5.1.1.1

          F ck the CAFC. They are wrong. The cases “proceed” because the best arguments are being made. Take this nonsense en banc and/or get the Supremes to reverse.

          The “test” without the arbitrary and nonsensical “conventionality” aspect is applied as its always been applied.

          1. 5.1.1.1.1

            “are NOT being made”

        2. 5.1.1.2

          Put another way, the fact — which hasn’t been rebutted (and it won’t be rebutted because it can’t be rebutted) — that the ridiculous “conventionality” test permits someone to protect non-obvious ineligible subject matter in any new non-abstract technological context is enough by itself to destroy the Constitutionality of the test.

          Fundamental patent law: you can not take someone who is freely practicing the prior art (either because it’s in the public domain or because it’s been licensed) and turn them into an infringer by teaching them about a non-obvious correlation (or any other logical process) that they subsequently think about. The baby step from there to concluding that you also can not prevent someone from using a public domain data processing tool (like a pencil/paper combination or a calculator) to assist in that logical data processing activity is very very very tiny indeed. It’s only the result that offends a miniscule number of patent attorneys out there. The reasoning is never addressed because it’s rock solid: there are no assumptions being made.

          Also it goes without saying that getting rid of protection for logic on a computer junk will have zero effect on progress in the “instruction writing” arts, and zero effect on the economy. Will it affect a fraction of patent attorneys? Sure it will. Who. Cares.

          1. 5.1.1.2.1

            Your feelings are noted.

            Even as you garble facts and constitutional law.

            Anyone with more than a passing familiarity with Con law must be chuckling at your wayward rant.

    2. 5.2

      Martin, yes, Markman’s can be very helpful in reducing litigation costs when promptly conducted. But they are are not nearly as helpful where “every district judge can pick and choose” WHEN to conduct a Markman. If the Markman is delayed until after most discovery and pre-trial cost burdens are already conducted [which costs can be substantially increased by undefined claims], and thus after most suits are already settled, they are far less useful.

      1. 5.2.1

        Sounds like some of that (Supreme Court’s We Must Be Flexible) lack of consistent approach would be better off made into a consistent approach…

        But what would you do about the “scriveners” getting around “hard and fast” rules?

  8. 4

    Not seeing any signs of Iancu’s “practical application” eligibility test from the PTO trenches yet.

  9. 3

    This is a good time to remind attorneys whose clients have been accused of patent infringement of a “do it on a computer” claim that this entire notion that defendants must prove that non-abstract elements are “conventional” (as opposed to “anticipated”, or “or obvious”) is the result of CAFC activism based on Supreme Court dicta.

    It makes no legal sense as a requirement and it plainly subverts the policy goals of the patent system as a whole. Defendants should be challenging the requirement on its face and laying the path for an en banc rehearing of the matter and, if needed, a Supreme Court reversal. The Supremes will never uphold a “conventionality” requirement.

    In case anyone is confused or doesn’t understand the principle here, all you need to do is consider the everyday situation where a freshly published patent publication discloses some novel technology. It is unthinkable (revolting is more accurate) that the Supreme Court intended to make it possible for someone to run to the PTO the next day and obtain thousands of claims that recite that technology verbatim and merely add to it any one of a zillion abstractions (“wherein a user is identified as Mark Babcack”; “wherein said data is horror movie ranking data”; “wherein an entity receiving data has lost voting rights within the last week”, etc). But that’s where the ridiculous “conventionality” (illegal) “requirement” takes us because there is no “widespread use” of any newly disclosed technology.

    The correct test is not “conventional” but simply whether the non-abstract elements (taken as a whole) are in the public domain (i.e., are they anticipated by the prior art or are they obvious variations of the prior art). That’s the only test that preserves the policy considerations that form the foundation of the rest of the system.

    This is straightforward stuff. Defendants who don’t object to the CAFC’s absurd activist nonsense are doing their clients a grave disservice.

    1. 3.1

      The correct test is not “conventional” but simply whether the non-abstract elements (taken as a whole) are in the public domain (i.e., are they anticipated by the prior art or are they obvious variations of the prior art).

      Not per the broken scoreboard Justices.

      You need to rail against them.

      (Of course, you might then need to pay attention to the Means they use and not just celebrate the Ends obtained).

      1. 3.1.1

        It’s dicta, Billy.

        You’ve already lost this battle.

        1. 3.1.1.1

          It’s not my battle – try paying attention to what I actually posted.

          (and it certainly is not dicta that conventionally required more than what it takes to determine lack of novelty or obviousness — that’s a simple fact)

  10. 2

    In ECOSERVICES, LLC, Pl., v. CERTIFIED AVIATION SERVICES, LLC was there a 101-Alice defense raised in the Answer or otherwise before trial? If not, why would the patent owner have been on adequate notice of any need to rebut or present trial evidence of claim elements not being well understood, routine and conventional?

    1. 2.1

      It was raised as a defense in the pleadings and also discussed at trial, just no motion to dismiss or summary judgment.

    2. 2.2

      This is definitely not the cheapest way to go but kudos to the defendant here.

      This scenario is perfectly applicable during Examination in the PTO as well, by the way: 101 issues can present themselves late in the game when the relationship between the art and the non-abstract claim elements becomes clear. That is a perfectly appropriate (indeed, necessary) time to address the eligibility issue.

      PM would the patent owner have been on adequate notice of any need to rebut or present trial evidence of claim elements not being well understood, routine and conventional?

      Two possibilities: (1) it’s entirely possible that the patent owner backed itself into a corner and undermined its earlier position as the case moved on with statements made to support validity under 112; (2) there might have been an intervening CAFC decision on 101 that changed things in the defendant’s favor.

      1. 2.2.1

        Re: “This is definitely not the cheapest way to go.”
        Indeed, at least 10x more, but not deciding that the suit and trial was on unpatentable subject matter until afterwards also defeats the Sup. Ct. expressed desire for that to be decided as a preliminary matter.

        1. 2.2.1.1

          the Sup. Ct. expressed desire for that to be decided as a preliminary matter.

          Another example of dicta being taken way too far in the wrong direction.

          Yes, eligibility is a “threshhold” issue in the sense that IF the claim drafter has plainly not claimed a process or a structure there is (or should be) big trouble and there is no need to consider compliance with the other sections of the statute.

          Likewise, if the claim is plainly a scrivener’s attempt to protect ineligible subject matter by salting into the claim a prior art structural or methodological context (e.g., “A book, wherein said book comprises instructions for …; “A process, comprising drinking coffee and correlating …”) then there, too, it should be dealt with as a threshhold issue.

          But if there are legitimate questions about the obviousness of structural elements or non-abstract process limitations in the claim, then those questions are appropriatley resolved first and they are readily resolved according to the standard legal procedures used to evaluate compliance with the other parts of the patent statute.

          There was never any mandate or even a suggestion from the Supreme Court that 101 was only a threshhold issue, nor did the Supremes state that issue needed to be resolved at the onset and then put to bed. It’s analogous to the Court’s jurisdiction jurisprudence. It’s an issue whenever it becomes an issue. It’s a hugely important fundamental issue and parties, judges, and Examiners should always be on the lookout for it whenever there are any information processing or information content limitations in the claim. That’s the number one red flag.

          1. 2.2.1.1.1

            Scriveners, patent maximalists, and trolls, oh my!

            1. 2.2.1.1.1.1

              Wait until the flying monkeys arrive.

          2. 2.2.1.1.2

            While not directly to your point, there is an important distinction to be made with your comment of:

            It’s analogous to the Court’s jurisdiction jurisprudence. It’s an issue whenever it becomes an issue. It’s a hugely important fundamental issue and parties, judges, and Examiners should…

            What is going on in ANY case outside of an exact factual replica with the “Alice/Mayo” two step has been described by the CAFC itself as common law Law writing.

            It’s bad enough when the judicial branch does not respect separation of powers by engaging in common law Law writing of the strictly statutory law that the Constitution allocates authority to write to only one single branch (that would be the Legislative Branch, and yes that Branch may decide to share its authority but any such sharing must meet strict Constitutinal requirements), but — as I emphasized in your comment — we have the Executive Branch also engaged in common law Law writing whenever they are applying the Alice/Mayo two-step outside of a strict and exactly the same factual setting.

            1. 2.2.1.1.2.1

              It’s bad enough when the judicial branch does not respect separation of powers

              As if you really care, Billy.

              Please give everyone a break you sniveling glibertarian hypocrite.

              1. 2.2.1.1.2.1.1

                Your name-calling is yet again a bad (very bad) miss.

                My position on the topic has been clear and steady for years.

                Maybe try to contribute something to the conversation….

  11. 1

    Interesting to note how judicial hand waving can nullify factual matters.

    (without more), “that “stuff” is conventional.”

    “That fact is merely an asserted conclusory fact, so I am not going to consider it.”

    Caveat: this may or may not be the case with these actual cases, as this is noted merely on the write up here.

    1. 1.1

      Facts rely on evidentiary perception of reality and identification by a rational conceptual consciousness, however, Facts are unnecessary when one has direct access to the world of forms by Revelation, by virtue of being a true Philosopher King.

    2. 1.2

      Computers networked together to facilitate remote processing of data has been conventional for a long time.

      Not everybody likes to pretend they were born yesterday. Some attorneys have consciences. It’s true. Rare in certain circles, but true.

      1. 1.2.1

        Apparently, given your nigh constant dissembling, you are not among that “cohort” of attorneys having consciences.

        1. 1.2.1.1

          Were computers networked together to facilitate remote processing of data conventional in 1995, Billy? Yes or no.

          1. 1.2.1.1.1

            Does your question have anything to do with the law?

            (vis a vis: or any improvements thereof)

            1. 1.2.1.1.1.1

              Yes or no, Billy. Really simple question.

              1. 1.2.1.1.1.1.1

                So is mine.

                And mine is more pertinent to patent law (as opposed to your dissembling feelings)

            2. 1.2.1.1.1.2

              Does your question have anything to do with the law?

              Well, given that your view of the law requires consideration of “conventionality” and there are a zillion “do it on a computer” claims out there, my question has everything to do with the law.

              Everyone can see your cowardice and complete lack of credibility here, Billy.

              I’m loving it.

              1. 1.2.1.1.1.2.1

                Lol – you certainly do not speak “for everyone,” and your Accuse Others meme is legendary.

                As is your “loving it” as you have a firm grasp on the shovel and continue to dig.

                Additionally – as I have told you in the past, “conventionally” is NOT my law. You can thank the Supremes for that. As well as thank the courts for at least stating that conventionally is neither shown by something that would suffice for defeating novelty, nor would suffice for something that would defeat non-obviousness.

                Since these are not mine, your accusation of lack of credibility does not attach to me (but please feel free to keep shoveling away — “everyone” can see that too).

                1. It’s dicta, Billy, and it’ll never hold up for the reasons I gave you. Go ahead and challenge the argument, shirtforbrains.

                2. It is not my position that needs to be challenged — pay attention to what I have written. If YOU want to fight this, then YOU need to take it up with the Supreme Court.

                  As I noted though, when you do so you then step into fighting the Ends do not justify the Means position that you so often are on the wrong side of.

                  Your name-calling is wildly out of place on this point.

    3. 1.3

      Interesting to note how judicial hand waving can nullify factual matters.

      Far more interesting to note how often do-it-on-a-computer patentees attempt to create factual disputes when there aren’t any.

      Such patentees should be sanctioned and their right to enforce patents in Federal Court should be taken away. I would further recommend piercing the veil and similarly sanctioning every person with a controlling interest in the company.

      If such action had been taken years ago, we might not have had the need for IPRs.

      1. 1.3.1

        Translation:

        Wah!

    4. 1.4

      A “bald assertion” is an assertion which presented absent any reasons… i.e. a conclusion without the reasoning which supports that conclusion.

      Now, what kind of assertion is a “non-conclusory assertion”? Certainly it cannot be a line of reasoning without any mention of a conclusion which is its logical consequence? What is one asserting by the assertion without any conclusion asserted? It is a non-asserted assertion?

      I suppose that’s explicitly implicit… no?

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