Berkheimer: Patent Eligibility Changes as Technology Advances

HP Inc. v. Berkheimer, 2018 WL 6445985 (On petition at the Supreme Court)

Steven Berkheimer has filed his brief in opposition in this pending case before the U.S. Supreme Court. As is a current theme in Supreme Court briefing, the parties have proposed alternative stories within their questions presented. HP’s original petition asks whether eligibility is “a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.”  In its responsive brief, the patentee Berkheimer focuses more on the procedural aspect:

Whether the Federal Circuit correctly held that additional fact-finding was necessary to resolve whether patent claim limitations such as “storing a reconciled object structure in the archive without substantial redundancy,” and “selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items,” constituted “well-understood, routine, conventional activity” under Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 79 (2012)?

The brief follows a toned-down approach – arguing that in some cases there will be an underlying factual dispute on eligibility issues. For Berkheimer, his patent involves one such case:

Whether a claim limitation consists of “well-understood, routine, and conventional activity” bears no resemblance to a question of law. In this case, for instance, the dependent claims recited: “storing a reconciled object structure in the archive without substantial redundancy,” and “selectively editing an object structure, linked to other structures to thereby effect a one-to-many change in a plurality of archived items.” . . . No statute, case, or deductive legal reasoning can resolve whether this “specific method of archiving,” constitutes “well-understood, routine, conventional activity, previously engaged in by those in the field.” Mayo. That is a quintessential factual question.

One question for the Supreme Court to consider is whether patent eligibility shifts as technology advances. I.e., as some particular machine becomes “conventional,” are advances using that machine more likely to be abstract?  Berkheimer says “yes,” and that makes the underlying facts relevant to the question of eligibility.

I expect a number of briefs supporting Berkheimer’s position will be filed over the next fortnight.

Docket: https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/18-415.html

 

52 thoughts on “Berkheimer: Patent Eligibility Changes as Technology Advances

  1. 8

    Off topic- Elizabeth Warren came out swinging against the patent system today in an OpEd, with zero argumentative support for what’s wrong. Seems like drug patents are mostly working and mostly non-controversial in re: 101

    link to washingtonpost.com

    1. 8.1

      I see two rhetorical punches thrown against patents in that op-ed, but I am not much concerned. If you read what she is proposing, it has almost nothing to do with patents. This is about kickstarting actual competition in the generic space. Even patent-friendly, branded-pharma shills like myself can see the sense of that sort of policy intervention.

      The irony here is that the market failure that she is addressing is not a fault of bad patent laws, but rather of lax antitrust enforcement. Sen. Warren has consistently argued that our antitrust laws are not enforced vigorously enough, and I agree with her entirely. I hope that her focus on this issue bears fruit.

      1. 8.1.1

        Is it noteworthy that the same entities wanting lax antitrust enforcment are the same that want weakened patent systems?

      2. 8.1.2

        The premise of the article is that our patent system is overcompensating pharmaceutical companies by allowing them to keep their drug prices high. However, the fifth paragraph complains that most generic medicines are made by one company. The implication being that without more competition between generic companies, drug prices (and generic drug prices) remain high. How does the patent system prevent competition among generic companies vying for generic market penetration? That said, the conclusion of the article is to “crack down on rampant abuse of the patent and regulatory system.” The article’s premise is not supported by facts, and its conclusion does not follow its premise.

        I would value her opinion more if her arguments rational.

        1. 8.1.2.1

          The “rationale” is that money is bad, and that anything that supports “the money” is thus bad.

          Never mind rewarding innovation in the first place….

      3. 8.1.3

        The irony here is that the market failure that she is addressing is not a fault of bad patent laws, but rather of lax antitrust enforcement.

        I think it’s even simpler than that: it’s a failure of the free market.

        When Shkreli took over the Turing and raised the price from $13.50 to $750, why were people willing to pay? Because consumers face a choice between “pay or die of unmitigated health conditions,” demand becomes inelastic.

        The healthcare market is generally inelastic for a whole lot of reasons: near-zero price transparency; limited local options (how many hospitals does any given city support?); exigent circumstances (difficult to price-shop in the midst of a heart attack). But for pharmaceuticals, inelasticity is nearly absolute, since many conditions are effectively treatable only by one drug that’s available from only one provider and only at one price. And private health insurers have a severe conflict of interest between paying for expensive treatments and preserving their bottom line.

        There are a variety of solutions. They don’t involve tinkering with the patent system.

        1. 8.1.3.1

          Absolutely.

          What this DOES show though is the saturation of anti-patent propaganda.

          Perhaps that is why Iancu’s first message was: we need to change the dialogue on patents.

  2. 7

    The whole reason this can happen is the “direct to” game. The “direct to” game reduces the claims to whatever part of the claims the fact finder decides (privately in their chambers) is the important part.

    1. 7.1

      Exactly. “Directed to” is, we are told, not the same thing as “recites,” but no one from the SCotUS on down is willing to specify in what the difference consists. Instead, the distinction between “directed to” and “recites” exists as a fudge factor to let a decision maker to reach any decision s/he wants. Who can gainsay it?’

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

  3. 6

    The premise here (leastwise in the blog title) should make any one associated with patents cringe.

    Eligibility and Patentability are separate concepts.

    Once some type of thing is eligible, there is not a chance that advancements in that type of thing can — or should — impact eligibility.

    This is the type of nonsense we get when the judicial branch writes patent law (while holding in contempt scriviners whose job it is is to capture innovation according to the laws as written by Congress.

    Eligibility has two and only two easy and meant to be easy criteria to meet:
    1) is the utility of the type of utility for the Useful Arts (i.e., NOT of the Fine Arts).
    2) can the innovation be portrayed in at least one of the statutory categories.

    That.
    Is.
    It.

    All else swirling around eligibility is nothing but muckery.

  4. 5

    1. Iron has been around forever
    2. Iron is generic and can be used to make almost any kind of metal contraption
    3. “Using iron to make” anything is, AS SUCH, might be well-understood, routine, conventional in certain contexts
    4. Iron may be fashioned in many ways to many inventive purposes, without there ever being any “improvement in the iron” as such.
    5. NO iron thing, and NO THING made of iron, (other than perhaps a non-descript unformed chunk of iron)
    IS by default, “well-understood, routine, conventional” simply because has been fashioned out of iron (not by any application of honest reasoning).

    Conclusion: No matter how old the technology an invention consists of, and no matter whether that invention includes any improvement made TO that technology, the invention is not automatically “well-understood, routine, conventional” simply because of the nature of the technology it consists of.

    1. 5.1

      the invention is not automatically “well-understood, routine, conventional” simply because of the nature of the technology it consists of.

      Literally nobody is making the contrary argument. You realize that, don’t you?

      The argument being made is that programmable computers are old (irrebuttable), their functions and purpose are well-understood (irrebuttable), and programming such computers to carry out basic logic operations (e.g., compare data X to data Y, and do something, regardless of the content or “meaning” of X and Y) is routine (irrebuttable).

      The chuckle-worthy problem with your comparing “iron” to “programmable computer” is that you ignore the fact that it’s the essential relationship between “computer” and “information” that creates the eligibility issues. Information processing and information are different. You can’t argue around this fact. Unlike new structures made from iron parts, you can’t create an eligible patent claim from a bunch of abstractions (e.g., logical operations). Everybody knows this. You need to deal with the problems created by claims that implicate data processing and information head on, like an adult.

      Also this: 4. Iron may be fashioned in many ways to many inventive purposes, without there ever being any “improvement in the iron” as such. is another strawman. Nobody — literally nobody — is arguing that every claim that recites a new and useful device made of iron and which describes the shape and conformation of that device in objective structural terms that distinguish it from prior art devices made of iron is ineligible just because “it’s still iron as such”. That said, a piece of wrought iron that differed from prior art wrought iron only because it recites the phrase “Iancu Is a Fraud” is, in fact, ineligible for patenting (also obvious but that’s a different analysis).

    2. 5.2

      I think anon2 that is basically it. An awful lot of bad case law comes from judges and justices believing that their “thinking” occurs in the ether. They don’t seem to regard information processing as a physical process that requires structure and takes time, energy, and space.

      J. Stevens definitely believes that his “thinking” occurs in the spirit world.

      But, I’d add that the “direct to an abstract idea” is the huge catch. Basically this is a way of reducing the invention to not include all the elements of the claim.

      1. 5.2.1

        As noted above (in a comment currently caught in the ‘count’ filter), “directed to” is the leading edge of the “Gist/Abstract” sword.

        I’ll add here that this also violates the words of Congress by which the authority (and responsibility) of setting out the invention was provided: 35 US 112 — it is the inventor and not the Courts that get to set out what the invention is.

        Gusting (directed to) abrogates that authority and is solely based on an animus against the patentee and their “scrivener.”

        This “re-interpretation” cannot be traced back to ANY legitimate authority.

        This is simply not any type of “interstitial” interpretation of a law. It is not any type of interpretation of a law at all. It is casting aside what the inventors have put forth as their invention based solely on what the Court wants to be allowed to be covered by patents and regardless of what the stated invention may be.

        Often with computing inventions (computing clearly done with machines), this type of Gisting reveals the zombie of the Mental Steps Doctrine.

        The plain fact of the matter remains: machines do not think.

        If the claim is to a machine, or if the claim is to a method being performed by a machine, it is impossible that the claim — as written by the chosen authority — is Abstract (the undefined Court meaning).

        Paul Cole has written that the true intersection of the sets of the exceptions and of claims that fall into statutory categories is an empty set.

        Such is true only if “directed to” and “Gisting” are put on the shelf where they belong.

        1. 5.2.1.1

          “directed to” and “Gisting” are put on the shelf where they belong.

          People are going to use whatever words they want to translate overly-scrivened claims into English. The silly focus on “directed to” and “gisting” is a sideshow, and always has been.

          Face the music, children. There is no way to have a working subject eligibility requirement without understanding the relationship of the claims to the prior art. And there is no way to understand the relationship of the claims to the prior art without first understanding what art is implicated by the claims. Understanding what art is implicated by the claims requires understanding what the point of the claimed invention is, i.e., at the most fundamental level, what does the claimed method purport to do?

          Judges don’t need to use the scrivener’s silly made-up terms which, in most instances in the “do it on a computer arts”, were chosen for the purpose of obfuscating the distinction between the claims and the prior art. On the contrary, their job is to bust that cr@ p down like liquid plumber busts down grease in a clogged drain.

          1. 5.2.1.1.1

            Sideshow…?

            Keep on showing your lack of understanding there Malcolm.

            Here’s a hint: stop focusing on the Ends (desired or otherwise) and focus on the Means.

  5. 4

    The patentee should win this little legal battle but doing so will represent the biggest step towards ending the war (ending unfavorably for Berkheimer and his fellow logic monopolists) since Prometheus fired its desperate shot at Mayo. And there are some serious problems with the terminology that’s being thrown around.

    One question for the Supreme Court to consider is whether patent eligibility shifts as technology advances.

    This is, frankly, a terrible way to frame or discuss or approach the issue. The law regarding “what is eligible for patenting” does not change “as technology advances.” It’s the unchanging nature of that law, in fact, which has caused so many problems for patentees and applicants who have been desperately trying to protect abstractions (i.e., information and logic) using patents. Occasionally at the PTO and less occasionally at the CAFC and pretty much never at the Supreme Court these applicants will find some traction by reciting ineligible abstractions in a trendy “tech” context”, where that trendy “tech” context is in the prior art and therefore unpatentable on its own terms.

    You can’t protect an abstraction with a patent claim by couching the abstraction in a prior art “tech” context. That’s because the prior art is dedicated the public, for the public’s use. Note that the prior art I’m talking about here is prior art whose sole purpose is to (i) collect data, (ii)to carry out logical operations on data, or (iii) transmit/display data or (iv)or store information. [happy to hear about other important classes that I’m missing here; this isn’t intended to be an all-encompassing list]. Anyone familiar with Supreme Court precedent will recognize that these genera include, importantly, programmable computers (including that super fast totally non-conventional model that was described in a patent application yesterday) and methods for collecting medical data (including that incredibly efficient and totally non-conventional method that was described in a patent application yesterday).

    So, one more time for the world: you can’t protect an abstraction with a patent claim by couching the abstraction in a prior art “tech” context and the public’s right to use information collecting, processing and disseminating prior art for its intended purpose can not be restricted simply because the prior art is “new” and not “routine”. This is at least partly a Constitutional issue as the First Amendment is implicated.

    i.e., as some particular machine becomes “conventional,” are advances using that machine more likely to be abstract? Berkheimer says “yes,”

    As a general proposition this is complete and utter horsehockey. It also misses the bigger issue by a country mile. The likelihood of any prior art technology being tied up in ineligible patent claims is directly related to the intended use of that technology. Technology that exists to carry out logic operations, or that exists to display information, or that exists to collect data, or that exists to transmit data is a zillion times more likely to end up being recited in an ineligible claim than technology whose purpose is to, e.g., vacuum up green M&Ms with nuts — exclusively — and grind them up into safe to eat dog food. This is not to say that such tech can not be bound up in an ineligible claim; it’s just far, far less likely to be tied up in claims whose purpose is to, e.g., calculate an “approval score” based on your DVD purchases, or “effect a change” (LOL) “in an archive” (*v 0 m it*).

    No statute, case, or deductive legal reasoning can resolve whether this “specific method of archiving,” constitutes “well-understood, routine, conventional activity, previously engaged in by those in the field.” Mayo.

    One of Berkheimer’s many problems (in addition to the cr@p claims) is that the Supreme Court has never said that such a finding is required to show that a claim — any claim — is ineligible, and they never will require that because such a requirement would illegaly takes prior art out of the public’s hands (as explained above). In Mayo, the prior art data gathering method was admittedly to be conventional and routine (as was using that data to “determine” what to do next). But that admission was not necessary to find that Prometheus’ claims were ineligible. All that was necessary was to find that the data gathering method recited in Prometheus’ claims was taught before Prometheus’ filing date, i.e., in the prior art. Once the data gathering method was in the prior art, nobody (except for the owner of the data gathering tech, if it’s patentable) can tell me what I can or can’t do with the collected data. It doesn’t matter how many people across the country are using the data gathering method. All that matters is that I was using it because it is in the public domain. Whether it was in the public domain for two years or two seconds is utterly irrelevant to the fact that the tech is in the public domain, period.

    Now, does this mean that eligibility of a claim can always be determined without the sort of factual analysis that usually goes to a jury? Of course not (it also doesn’t mean that eligibility can’t be determined on the pleadings — it certainly can be). In cases where the prior art tech has been physically/structurally altered and those modifications are claimed in an objectively structural (and non-functional) manner, then there might be a question as to the obviousness of those modifications. If the modifications are obvious, then any additional ineligible subject matter recited in the claim (e.g,, “approval scores”, “kit instructions”, “compare data X to data Y”, “if X then Y”, etc.) destroys the eligibility of the claim for the reasons stated above. If the recited structural mods to the prior art are non-obvious, then any abstractions that are additionally recited are irrelevant to eligibility because the prior art is not being impermissibly tied up (this is why adding a dependent claim reciting “wherein said kit includes instructions” does not turn an otherwise non-obvious (patentable) and eligible kit claim into an ineligible kit claim).

    This analytical framework is not very difficult to follow. On the contrary, it’s very straightforward. The straightforward consequences of the framework are dire, of course, for those who insist that they have the right to use the patent system to tie up and monopolize prior art data gathering methods, prior art logic processing devices, prior art information transmittal devices, and prior art data storage devices. And that’s why there’s been so much misinformation spread by the patent maximalists and by the CAFC which has historically been relentlessly activist in its efforts to protect information processing “innovations” by any means necessary (including introducing “tests” that are nonsensical or that turn subject matter eligibility into a de@d letter).

    1. 4.1

      The prior art has protons, neutrons and electrons.

      Configurations of these things on the other hand are a different matter.

      That disposes of Malcolm’s rant.

      Carry on.

    2. 4.2

      claimed in an objectively structural (and non-functional) manner

      Once again attempting the dissembling of elevating an optional claim format to be somehow not optional…

      1. 4.2.1

        elevating an optional claim format

        Nothing is being “elevated”. You can recite your novel structure expressly in the claim, or you can recite your structure indirectly using means plus function language, where that language is tied to structural language in the specification. I don’t bother with the distinction because that distinction is irrelevant to the eligibility analysis.

        You, of course, bother with the distinction because it’s one of your many ways of kicking up dust when you’ve got nothing substantive to say by way of rebuttal. Been there, done that. I win, you lose.

        [shrugs]

        1. 4.2.1.1

          You do realize that your “objective structural language” and the option of 112(f) by no means covers the whole range of perfectly legitimate claim format options, right?

          Heck Crouch even coined a term for that: the Vast Midle Ground.

          Not sure your last paragraph then is anything other than your number one meme of Accuse Others…..

          1. 4.2.1.1.1

            the whole range of perfectly legitimate claim format options

            Deep stuff here, folks.

            Crouch even coined a term for that: the Vast Midle Ground.

            I’m pretty sure that term has been around since before Dennis was born.

            You’re just kicking up dust, “anon.” Save it for the written description and enablement issues that are going to pound your favorite logic claims into sand right along with the eligibility issues that you also do not understand. McRo’s junk patent was turned into a lump of coal, by the way, on remand. It was an incredible waste of time and money and just another example of a cr@ p patent making cr @p CAFC activist case law.

            [shrugs]

            1. 4.2.1.1.1.1

              Typical mindless Malcolm Accuse Others….

    3. 4.3

      The heart of what MM here — and always — means:

      “Not a horse and buggy age invention?”

      No patent for you!

      American innovation, new company formation, and many 1,000’s of great new jobs be d.a.m.n.e.d.

  6. 3

    Quite frankly, this is a rather odd gambit to “force” a choice between “law that does not change” for eligibility matters (something eligible is always eligible, by law) and inducing a “moving variable” FOR eligibility under the guise of underlying factual matters MAY “evolve” the legal notion of eligibility.

    I “get” that this may be a subtle SLAP at the Court for the Court’s own mucking things up with conflating patentability aspects into the eligibility question, but to take this approach at the cert level seems to beg for a cert denial.

    1. 3.1

      the Court’s own mucking things up with conflating patentability aspects into the eligibility question

      As everyone here with at least half a brain knows by now, it is logically impossible to have a working eligibility screen if you make it “illegal” to consider the relationship of the claimed innovation to the prior art.

      For those with minimum intelligence, let me break it down for you for the ten thousandth time: if you make it “illegal” to consider the relationship of the claimed innovation to the prior art, then you can write a patent claim to protect (i.e., “own”) any ineligible abstraction (e.g., thinking a new thought) by couching that abstraction in a prior art context. For example, let’s say Bobby Sox files a patent on a non-obvious display device. It publishes on January 1. Nobody has used the display before. If “anon” and his maximalist cohorts have their way (hint: never going to happen – LOL!) then they can run to the patent office on January 2 and obtain a claim to a process of using that display to display a non-obvious correlation between cat video viewing and ovarian cancer. Note that they’d never be able to protect that correlation as such (it’s an ineligible abstraction). But in “anon”s world he’d be able to own that ineligible subject matter and a zillion other non-obvious “facts” and he and his cohorts would be able to take you to court (or just shake you down for a “license”) if they had a reason to believe you were using that display to communicate “their” patented information to someone else.

      Note that the above gaming is actually the “expert level” gaming. “anon” and his cohorts hardly need to go this far. They could return to doing what they did for years before they got body-slammed into a quivering pile of jelly: just recite “a computer” or “drink a cup of coffee” and then anything goes (i.e., the eligibility test is met) because “I can feel the computer if I drop it on my foot” and “drinking coffee is transformative”. These are actual arguments that were made by actual adults in a Federal Court of Appeals. The Supreme Court would have none of it. And they never will because they understand what’s at stake.

      1. 3.1.1

        Your FUD does not fly – and never has.

  7. 2

    Yes, from the beginning, some practitioners have been pointing out how ridiculous it is to believe the legal fiction that an invention becomes “abstract” based on what has come before.

    It is non sensical to say that “A disk comprising a magnetic cylinder inside a plastic housing” is non-abstract when the first inventor walks through the door, but “A disk comprising a magnetic cylinder storing a word processing program, the cylinder disposed in a plastic housing” becomes “abstract” when the second inventor walks through the door–as if somehow the disk dissolves in the inventors hand and the particles are seen to float away and disappear. . .

    1. 2.1

      Somehow the “hobby horse” of a statutory category BEING an abstraction “has to be reached.”

      In other words, there need be the “magic” of hand waving and “directed to” because “that’s what those damm scriviners do – they may merely appear to be claiming actual non-abstract things (like computing systems), but what they are really doing are claiming the non-dimensional “abstract” “thinking” that these computing things are doing.

      Who cares if the two things in 35 USC 101 that Congress set forth are met (utility and statutory category), our policy will not be set aside by Congress, and we know it when we see it (“it” being the “tricks” of those scriviners).

    2. 2.2

      some practitioners have been pointing out how ridiculous it is to believe the legal fiction that an invention becomes “abstract” based on what has come before.

      Mostly what’s been happening is practitioners like me have been pointing out that people like you are confused about the issues.

      Nobody is suggesting that an invention that is non-abstract “becomes abstract” as time passes. The issue is that a patent claim that was eligible in Year Zero could be deemed ineligible if it were to be filed in Year Five.

      Here’s how that works. Consider the following claim:

      1. A device, wherein said device displays a non-obvious collection of information.

      If the device in question (not the displayed collection of information) is described in the claim in Year Zero in structural terms that distinguish it from the prior art and the device is non-obvious in view of that art, then that claim is eligible and patentable. But let’s say the same device is claimed for the first time in Year Five and in Year Three the same display device was published and dedicated to the public. Now the claim is ineligible because it impermissibly prevents me from exercising my First Amendment rights to display whatever the F kind of information that I want to display. You can’t protect information with a patent claim, regardless of how “non-obvious” or “important” the information is, and regardless of what prior art context you choose.

      That’s the issue. Do you see now how silly (and greedy, and … cl ue le ss) you sound when you talk about “inventions becoming abstract”? I hope so. Now stop doing it and start calling out other people who make the same error.

      1. 2.2.1

        Your “logic” is wrong in so many ways, starting with it being inconsistent (your Year Zero item impinges in the First Amendment in exactly the same way as your later items).

        You need a better strawman.

      2. 2.2.2

        MM, you have absolutely no integrity. The most trashy thoughts that could be generated by an information processor.

      3. 2.2.3

        Here’s how that works. Consider the following claim:

        1. A device, wherein said device displays a non-obvious collection of information.

        If the device in question (not the displayed collection of information) is described in the claim in Year Zero in structural terms that distinguish it from the prior art and the device is non-obvious in view of that art, then that claim is eligible and patentable. But let’s say the same device is claimed for the first time in Year Five and in Year Three the same display device was published and dedicated to the public. Now the claim is ineligible because it impermissibly prevents me from exercising my First Amendment rights to display whatever the F kind of information that I want to display. You can’t protect information with a patent claim, regardless of how “non-obvious” or “important” the information is, and regardless of what prior art context you choose.

        Eligible, yes. Patentable, no. The displayed information is not functionally related to the display, and therefore is given no patentable weight in a 103 analysis over the pre-existing display, and thus the claim should be rejected as obvious. See In re Gulack, 703 F.2d 1381. There’s no need to use the hand-waving “this physical device that I can pick up is magically abstract because, uh, first amendment” 101 sword, when 103 does a perfectly adequate job.

  8. 1

    I expect a number of briefs supporting Berkheimer’s position will be filed over the next fortnight.

    Conventional wisdom is that it’s almost always a bad idea to file amicus briefs opposing a certiorari petition. Berkheimer’s toned-down approach is consistent with most good briefs opposing certiorari–nothing to see here; this isn’t the case you want to take to address 101. If a bunch of amicus briefs show up trying to “support” that brief by forcefully telling the court that Berkheimer is not an important case, it doesn’t change anything or matter to anyone, and the Supreme Court should absolutely not grant cert., those efforts tend to backfire.

    If the court grants cert, then supportive amici will probably show up at the merits stage.

    1. 1.1

      I think some folks won’t be able to hold back. There is also some number of folks who would like the Court to take this case to affirm.

      1. 1.1.1

        That makes sense. “Taking this case to affirm wouldn’t be a bad thing” is more or less the approach CLS Bank’s brief in opposition took.

      2. 1.1.2

        My company was an amici on Alice, I think we will be again on the next patentable subject matter case that gains cert. This time, with something different to say. Boiled down to a cut and paste:

        -An abstract invention is not the same thing as an abstract claim.

        -An abstract invention is an eligibility problem. An abstract claim is a patentability problem.

        -All information is intangible, but some information is not abstract.

        -Information consumed by human beings is always abstract. Without a human being, there can be no abstraction.

        -A method which gains its utility via the processing of some species of information and whose result is new and useful information is an information invention.

        -Information inventions where the utility arises by non-human consumption of information should be eligible inventions.

        -Information inventions where the utility arises by human consumption of specific information should be ineligible for patenting.

        -Abstract claims mean the claims are too abstracted from the invention, and thus do not encompass any particular invention. This abstraction can arise from obviousness, failure to demonstrate complete grasp of the invention, or the use of components in their designed capacity to produce variations, not innovations. The designed capacity of components changes over time, so that what may be a non-abstract claim in one era may not be in another. What is or is not an abstract invention, OTH, ought not to.

        1. 1.1.2.1

          Friendly advice, Martin: moving forward with all of that metaphysical hoohaw at one time is going to get you nowhere before the Supreme Court. Not only is what you propose completely out of step with the Court’s prior jurisprudence, it also requires them to make a lot of new law and a lot of new legal distinctions that are completely outside of anything Congress has ever suggested.

          This is why I ultimately (and quickly) arrived upon my own solution to the “eligibility problem.” In a nutshell, the “problem” was created by the CAFC who decided to turn quintessential abstractions (unclaimed and undescribed “essences” of “electronic structure” representing information and logic) into eligible subject matter that could be described functionally if couched in terms of prior art data processing “tech”. The solution to that problem is to return to first principles and expunge it all. If Congress wants to create a new paradigm for software and information and abstract accounting/customer-luring methods to be protectable by patents, then Congress can try to do so within Constitutional limits. It’s definitely not the job of the courts to do this, simply because some of the court’s own “customers” want it so vewy vewy badwee boo hoo hoo.

          1. 1.1.2.1.1

            MM a brief would be written by actual lawyers, and would not be a billeted list of simplified premises.

            What I am proposing comports with everything I have read on the topic from former and current justices and members of the CAFC.

            They all see different aspects of the elephant. Until there is some unifying doctrine on the subject of information in patents, this will persist. So the right Hoohaw may be just the thing, and unfortunately, your prescription does not seem to be taking either.

            And remember, I’m with you: all of it should go. 100%, human or non-human consumption. But many of those justices and judges will never have that, because they don’t metaphysically believe it.

            1. 1.1.2.1.1.1

              Your is not the right Hoohaw.

              Not even close.

        2. 1.1.2.2

          My company… will be [an amicus again on the next patentable subject matter case that gains cert…

          I hope that your company lasts so long. It was 29 years from Diehr (the culmination of the late 70s / early 80s flurry of §101 cases) until Bilski (the start of the early teens flurry). Each flurry comprised a “trilogy” in four parts (Benson presaged an uncertainty in the law that was resolved in Flook/Chakrabarty/Diehr, just like Bilski presaged a confusion that was resolved in Mayo/Myriad/Alice). Now that the Court has concluded its latest “trilogy,” it is unlikely to revisit this subject for another couple decades.

          1. 1.1.2.2.1

            Congress needs to awaken from their slumber, take back their Constitutionally granted authority, reset the law of eligibility back in its proper place, and remove the Court through jurisdiction stripping from the non-original jurisdiction of patent appeals. And since the CAFC has been brow-beaten into senselessness, they will need to reset a proper Article III court for patent law matter review.

          2. 1.1.2.2.2

            Greg, that goes with my comment below at 1.2., but both are merely tendencies of the Supremes against taking cert on issues they have recently decided or re-affirmed, unanimously or nearly unanimously, not rules.
            Also, there is an intermediate position that could be taken here, namely to require a limited early partial trial on a disputed fact issue of whether or not the claims contain any limitations to something that was not well known or conventional as of the filing date.

            1. 1.1.2.2.2.1

              [B]oth are merely tendencies of the Supremes against taking cert on issues they have recently decided…, not rules.

              Sure. Agreed. It is not forbidden for the Court to take cert. on this one. Just consider me skeptical that they are at all likely to do so.

          3. 1.1.2.2.3

            We will be 21 in March. I will be looking to influence this battle for the foreseeable future, as my powers allow.

            I agree with Warren on Anti-trust. I don’t like shots at the patent system without support. It puts my goal farther out of reach.

            My goal is a working patent system that helps the economy with minimal collateral damage. We have not had that for 40 years.

            1. 1.1.2.2.3.1

              I agree with Warren on Anti-trust. I don’t like shots at the patent system without support.

              Fair enough. Naturally, I do not wish to take up the contrary position, although I am kind of indifferent to Sen. Warren’s glancing blows in that op-ed. I file that under “sticks & stones… .”

              My goal is a working patent system that helps the economy with minimal collateral damage.

              From your lips to God’s own ears. This is a goal that we can all get behind, I am sure.

              1. 1.1.2.2.3.1.1

                Defining the details and specifics of certain terms will reveal where the Devil resides…

      3. 1.1.3

        I believe that the deadline has already run. Amicus briefs supporting a petitioner get 30 days from the date of docketing or a request for a response, but Amicus briefs supporting a respondent are due within the time for filing the brief in opposition. See Supreme Court Rule 37(2)(a) (“An amicus curiae brief in support of a respondent, an appellee, or a defendant shall be submitted within the time allowed for filing a brief in opposition or a motion to dismiss or affirm.”) I believe that this is extended with the extension requested by the Respondent (I don’t have any cite for this though), but I believe this deadline has now run.

        For what it’s worth, I was somewhat inclined to file a brief in opposition to both the en banc petition and the cert petition, but ultimately did not file either, deferring to the conventional wisdom that such would only draw additional attention. I suspect that I was far from the only one who considered it but ultimately demurred.

        1. 1.1.3.1

          This is correct. I’d forgotten about this timing rule because these sorts of amicus briefs are so rare. The deadline has indeed come and gone.

          If you support the petitioner, you have 30 days after the petition is docketed. If you support the respondent, your brief is due at the same time the respondent’s brief is due. link to law.cornell.edu

      4. 1.1.4

        Dennis, I don’t think there are any amici in support of Berkheimer – the reply brief just came in.

        link to supremecourt.gov

    2. 1.2

      One possible argument against taking cert could be that this is a case of first impression by the Fed. Cir., and as the patent court of appeals they should be given time to work out further parameters in further decisions before the issue is ripe for cert.

      1. 1.2.1

        …you mean…. let the Common Law develop….?

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