by Dennis Crouch
In re Marco Guldenaar Holdings B.V. (Fed. Cir. 2018)
Guldenaar is is seeking to patent his method of playing a dice game using specially marked dice. U.S. App. No. 13/078,196. The PTAB denied his patent on eligibility grounds and the Federal Circuit has now affirmed — holding that the method of game play is an abstract idea and the special markings on the dice represent unpatentable printed matter. The decision here falls in line with In re Smith, 815 F.3d 816 (Fed. Cir. 2016) where the court held that the claimed method of playing and wagering-on a card game was an abstract idea. The patented method in Smith used a standard deck of cards, and the Federal Circuit noted that “shuffling and dealing a standard deck of cards are “purely conventional” activities. Citing Alice.
Guldenaar’s claim 1 is directed to a “method of playing a dice game” that begins with the provision of a set of three dice — each die having either one, two, or three identical marks. (See the figures above). Someone then bets on whether or not the marks will appear face-up on the next role, and, after the roll, the bet is settled. Pretty simple game. (Claim text below).
In applying Alice Step 1, the court found that the claims here are directed to the “rules for playing a dice game,” which is an abstract idea. In the process, the court warned the PTO that its generalized approach to labeling “methods of organizing human activities” as abstract ideas, but found that this particular method fit the bill.
Under Alice Step 2, claims directed to an abstract idea can be patentable if the claims also include an “inventive concept” sufficient to transform the claimed abstract idea into a patent-eligible application.” Here, one particular inventive concept appears to be the claimed set of dice that is arguably inventive, and at least not purely conventional. On appeal, however, the Federal Circuit ruled that the die markings “constitute printed matter [that] fall outside the scope of § 101.”
In Smith, the claims were directed to a standard deck of cards and the court indicated that claims using an original deck of cards could survive Alice. “We could envisage, for example, claims directed to conducting a game using a new or original deck of cards potentially surviving step two of Alice.” The panel here appears to reject that notion — holding instead that the the original set of dice cannot be seen as transformative since the original aspects
Judge Chen authored the majority opinion that was joined by Judge Bryson. Judge Mayer filed a concurring opinion channeling Justice Stevens concurring opinion in Bilski. In Bilski, Justice Stevens (joined by Justices Ginsburg, Breyer, and Sotomayor) argued for a categorical exclusion of business method patents. Here, Judge Mayer argues for a categorical exclusion to the patenting of games — “claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”
= = = =
Claim 1:
1. A method of playing a dice game comprising:
placing at least one wager on at least one of the following: that the first die marking on the first die will appear face up, that the second die marking on the second die will appear face up, that the third die marking on the third die will appear face up, or any combination thereof;
rolling the set of dice; and
paying a payout amount if the at least one wager occurs.
““claims directed to dice, card, and board games can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.””
Claims directed to wheel, engines, and flying machines can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”
Claims directed to chemicals, medicines, and drugs can never meet the section 101 threshold because they endeavor to influence human behavior rather than effect technological change.”
Yup. It is as I have said from the beginning. The judges selected by the large corporation had a telephone call. Will you agree to get those patents under control? Yes says the potential judge. Obama takes the contribution and nominates the judge. The judge is selected for prior irrational anti-patent ravings and known character problems. That is how about 6 of the judges of the CAFC were selected.
Yours is probably the least intelligent reading of any court decision that I can recall in recent memory. Congrats!
Judge Mayer’s conclusion is sensible, as his reasoning. There is a huge distinction to be drawn between promotion of progress in the useful arts (and the patent claims which eligibly protect those advances) and granting junk patents on “advances” (LOL) in “new rules” for … betting on dice tosses (W T F) or moving a piece around on a painted cardboard board (W T F F).
I’m pretty sure Congress understands this, as do most ordinary people who (unlike Les) don’t fantasize about stroking a gigantic patent shaped phallus 24 hours a day.
Yes Comrade, we know the peoples are better off when Parker Bros. can be ripped off and anyone with printing press and some glue can make and sell copies of capitalistic MONOPOLY game. It is these evil brothers that should go directly to jail, do not pass go and do not collect their ill gotten profits.
Just another friendly reminder that the farce known as “patenting logic on a computer” rests in large part on a printed matter case that found a mobius strip to be eligible because the numbers printed on the strip could be used for “entertainment or education”.
Super gratifying to watch this foundation crumble. And crumble it will.
I’d rank this case as indicating that none of the judges on this panel are qualified to sit on the CAFC. They obviously do not understand their role in the process nor do they understand technology or innovation.
If we are going to have a patent system, we need to dissolve the CAFC and reform it with qualified judges.
I can see the sense of this argument, and I do not strongly disagree. As it happens, however, I do disagree. There is a reason that the CCPA (once it took on appellate jurisdiction over the PTO) quickly became much more capacious in its views of patent validity than the regional circuits. Similarly, there is a reason why the CAFC has historically fought with the SCotUS in a battle in which the CAFC tries to cabin and constrain the SCotUS’s patent-related decisions.
People who spend every day thinking about patents quickly realize that the glib pronouncements of the SCotUS on these subjects are illogical and unworkable. The SCotUS has been intervening in the patent law so frequently of late that the long-standing CAFC equilibrium has been upset. I contend, however, that if you simply took away the SCotUS’s certiorari jurisdiction over the CAFC—even without making any other change to the CAFC—you would find the CAFC reverting to its previous equilibrium within about 5 to 10 years. This is just the natural consequence that results when people have to wade into the details of patent law on a daily basis, without interference from people who know less about patent law.
This is the blame someone else argument. I don’t buy it. I think these people were chosen by a large corporation to burn the patent system down and then appointed by Obama (that is like 6 or 7 of them.)
I also think that a few level headed people that understand patent law could counter the SCOTUS pretty easily. The CAFC has to go. That should be priority number one.
Greg DeLassus: People who spend every day thinking about patents quickly realize that the glib pronouncements of conflicted patent-worshipping patent attorneys like me on these subjects are illogical and unworkable.
Fixed for accuracy.
The thing is, Greg: the Supreme Court has actually done a great job dealing with the CAFC’s ineptitude. Just because you like software patents and patents on correlations doesn’t make the Supreme Court’s statements which undermine your beliefs “glib.” It just makes your beliefs sound kinda like the beliefs of a whiny patent attorney who can’t get enough work.
“People who spend every day thinking about patents quickly realize that the glib pronouncements of the SCotUS on these subjects are illogical and unworkable.”
Careful there Greg – you are verging yet again on being “one-bucketed”
“People who spend every day thinking about patents quickly realize that the glib pronouncements of the SCotUS on these subjects are illogical and unworkable.”
How much of that generality would you attribute to the glib pronouncements typically being contrary to the financial interests of those who spend every day thinking about patents?
Touché!
How much of that generality would you attribute to the glib pronouncements typically being contrary to the financial interests of those who spend every day thinking about patents?
Certainly some, but no one can look at Thomas’ “we need not labor to delimit the precise contours of the “abstract ideas” category” or handwaving “significantly more” and not consider those glib, regardless of your financial interests.
More to the point, Abstract iDan, attempting to play some “blame game” of “well there are players on many sides that MAY do that” quite obfuscates the primary point that the party to which critical thinking is to be aimed at is the Supreme Court.
It is after all the Supreme Court that has re-written the statutory law into the mess that we have now (as you point out, at least in some small part of at least one decision that threads the Gordian Knot mess that we have).
iDan,
For what it’s worth, the generality I was referring to was patent practicioners finding those supreme court decisions “illogical” and “unworkable”. “Glib” is a given.
“While games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge. They should therefore be deemed categorically ineligible for patent.”
I’d classify this opinion as worthy of bringing an impeachment action against the panel. Why do these foul judges think that they know something like that or that it is their place to make a finding of fact like that?
MM, why do you bother to post “information”? What is the point?
Why should someone pay you to perform mere information processing, which is what you are paid to do?
How could a machine that replaces work that a person does be considered ineligible for patentability?
The conservation of information is considered the most important law of physics. Search Susskind.
Information processing takes time, energy, and space. Interaction with people is a technical problem.
MM, why do you bother to post “information”? What is the point?
Very serious stuff here! Truly deep, from the deepest thinkers.
No answer MM. Because you can’t answer the question without exposing yourself to your inherent hypocrisy.
Friendly reminder that the farce known as “patenting logic on a computer” rests in large part on a printed matter case that found a mobius strip to be eligible because the numbers printed on the strip could be used for “entertainment or education”.
Super gratifying to watch this foundation crumble. And crumble it will.
How goes your copyright project on “just logic”…?
Super gratifying…? Your cognitive dissonance is showing. Again.
Fyi, regarding protecting information and symbols printed on media of all kinds:
link to theguardian.com
Robert Frost’s haunting little poem, Stopping By Woods on a Snowy Evening, entered the public domain in the US on 1 January alongside thousands of works, by authors from Agatha Christie to Virginia Woolf, in an unprecedented expiration of copyrights. Unprecedented because it has been 21 years since the last major expiration in the US: the passing of the 1998 Sonny Bono Copyright Term Extension Act added a further 20 years to existing copyrights, meaning that the swathe of 1922 works which passed into the public domain in 1998, after a 75-year copyright term, are only now being followed by works first published in the US in 1923.
“The drought is over,” proclaims Duke Law School’s Center for the Public Domain, highlighting some of the works which are now available royalty-free, by authors from Edgar Rice Burroughs to Kahlil Gibran, PG Wodehouse to DH Lawrence, Edith Wharton to ee c u mmings. It’s not only books: copyright in the US is also expiring on a host of films, paintings and music.
Great.
Are any of those on your “famed” “just logic” things?
MM, why do you bother to post “information”? What is the point?
Why should someone pay you to perform mere information processing, which is what you are paid to do?
How could a machine that replaces work that a person does be considered ineligible for patentability?
The conservation of information is considered the most important law of physics. Search Susskind.
Information processing takes time, energy, and space. Interaction with people is a technical problem.
I would bet that if someone had the time, they could find some patent opinions from hundreds of years ago that discuss how innovations include the person. I think that a lot of machines included innovations that involved enabling a person to better able participate in the manufacture.
This is EXACTLY “human behavior.” The only difference is that now we are dealing with information that is changing how people behave rather than something like the angle of a knob. Again–what this is about is anti-patent judicial activists being appointed to the CAFC. This is about burning down patents.
Any—ANY—intellectually honest person would see that information interacting with a human is an innovation. That changing the person’s behavior with the information is technical. What these judges are saying something like a light that flashes on the console of a car that indicates where an obstruction is and how to avoid it is not technical and not eligible for patentability. (But of course they would avoid applying their ineligible arguments in this case because it would be too unseemly.)
The judges create these pot holes of logic to try and burn down the patent system. They are not intellectual honest and not intellectual consistent.
Those who have actually studied innovation (and understand Kondratiev waves of innovation), must be appalled by the level of anti-innovation that has taken ahold of the US system for promoting innovation.
It is incredible. The core of this is from the SCOTUS and Obama stacking the CAFC with people of poor character and anti-patent sentiment.
The attempt here by Chen is to cut the relationship between the functional relationship between information and the human. Appalling.
Chen also has one of the great strawmen in history in saying it is sure that some type of this went on in machines of old. Chen is what I said when he was a appointed. A very, very anti-patent judicial activist person that is not qualified to sit on the CAFC.
Look at even Night Rider acknowledging that so many of these disputed patents come down to information interacting with a human, although of course, information can’t interact, as only actors can interact.
Now merely one leap away from the obvious political and philosophical compromise to many of these eligibility issues. Abstract inventions are not the same thing as abstract claims.
People using the information? Not eligible, always abstract. Non-humans using the information? Eligible, subject to 102/103 and 112, of course.
You keep on trying to go back to a meaningless mantra.
You would be much better off starting over from scratch on learning about innovation, the meaning of utility, and patent law.
Dyk (“In my view,
claims to business methods and other processes that
merely organize human activity should not be patent
eligible under any circumstances.”).”
So a computer system that improves human productivity by watching what a person does and assigning tasks to optimize the work of the person is per se ineligible, ’cause, ’cause.
I think if Trump gets re-elected that the big push should be to dissolve the CAFC and reform it with real patent attorneys.
… all the below (and above) leaving one to wonder:
Given it’s spec / disclosure, could a claim (ignoring in advance MM’s certain, “no way” response) be written which would be 101 eligible?
Given it’s spec / disclosure, could a claim (ignoring in advance MM’s certain, “no way” response) be written which would be 101 eligible?
Not sure why you would want to ignore the correct answer.
I am not sure that I could convey to one of the ignora nt little judges that decide these cases the following emotions. You are working with a company and the inventor gets very excited realizing that they have figured something out and that it will improve their device.
Now we are going to the situation where it does not matter. So, you improved the device? Who cares. As soon as it comes out or sooner it will be copied.
Of course our little tiny weeny itsy bitsy intellects on the CAFC know nothing of this.
In my experience, the honorable judges serving on the Federal Circuit are both very intelligent and very polite.
It boggles my mind that any attorney would attack even a single judge in this manner, much less seemingly broadly attack the Court itself.
You may disagree with a rationale in a particular decision, but if you think that the judges on the Federal Circuit are not intelligent, then I would posit, with no ill will intended, that you need to revisit your thinking.
Sorry Jeremy, but I cannot agree with you and your desire for politeness.
When decisions such as this are presented, the Judges fully open themselves up to the degree of condemnation that you are seeing.
Yes, decorum IN a court of law is a different story, and I would certainly expect the choice of words, and perhaps even the tone to be a bit more restrained.
But make no mistake – the views expressed in this opinion are fully condemnable. They are being – and they should be – condemned.
Additionally, as I have posted, the fact that a sitting Judge pens the views expressed raise serious questions as to whether that Judge should remain on the bench. At a very minimum, this gives due and sufficient cause for parties that draw this Judge to ask for his recusal. Under any fully objective – but critical – analysis, he has gone far beyond the law in his expressed views and there will be no justice from him nigh no matter the case (if it be a software innovation case).
The cry for “remove from the bench” gets a LOT of play here, and I am not one that typically employs that cry – but this, this is much bigger than what I imagine that you are thinking this to be.
It seems that we just have a difference of opinion. I believe that the current state of eligibility jurisprudence is the result of intelligent actors acting in good faith to try to address a difficult issue. You seem to believe that this is not the case.
But we both agree that additional development is needed. I choose to focus on trying to figure out how to obtain more clarity.
You seem to want to imply that my actions are not geared to how to figure out how to obtain more clarity.
That would be a mistake.
And yes, I do believe that the current mess is NOT tied to intelligent actors acting in good faith to try to address a difficult issue.
The current mess is a direct result of “intelligent” actors trying to legislate from the Bench in order to reach their desired Ends.
Maybe you should read Judge Mayer’s rant again.
I choose to focus on trying to figure out how to obtain more clarity.
Good for you, Jeremy.
I guarantee that you will not get this clarity from “anon” or any of his buddies who tr0 ll here. I’ve asked them for years to come up with clear tests to achieve what they think is fair and they can’t (or won’t) do it.
“I’ve asked them for years to come up with clear tests to achieve what they think is fair and they can’t (or won’t) do it.”
Well that’s total B$.
The clear test is to follow the law as written by Congress.
Yes. It’s that simple.
What YOU want is something completely different (and given your cognitive dissonance and your own refusal to explain your dichotomy of wanting to deny patent protection to a form of innovation MOST accessible by he non-wealthy at the same time accusing anyone of wanting patents to be “grifters” at the same time that you (supposedly) are a patent attorney obtaining patent protection for clients, well…. you can just take your oh so typical Accuse Others meme and put it where it belongs.
I think the person that needs to revisit their thinking is you, Jeremy. Maybe we could go through some opinions together and could show you were they are clearly acting as activists and not judges applying the law.
Etc. Face it, the CAFC was stacked by Obama. We have perhaps the worst group of people any appellant court in the history of the US has ever had. And some of these people were known for their poor character prior to appointment, e.g., Stoll.
Even assuming arguendo that some judges are acting as activists, this doesn’t necessarily mean that they are not intelligent, right? (I’m not agreeing that any are acting as activists, just noting that it doesn’t necessarily speak to your original suggestion re their intellects.) Ditto for character (and I’m certainly not agreeing that any have poor character).
As for going through opinions to discuss, sure, send me an email at jeremy dot doerre at gmail and let me know what city you are in and I’ll be happy to buy you lunch and discuss next time I am in town. I’m always interested in hearing disparate perspectives, and in hearing about cases that might be a vehicle to try to get additional clarity on eligibility issues.
As to your comments below, I’m not really sure where the ire is coming from, and I’m pretty sure my prior comment did not advance the position you seem to be ascribing to me (I currently express no opinion one way or another on that position).
Overall, the point I was trying to make is that Federal Circuit judges are very intelligent, so if your theory of Federal Circuit eligibility jurisprudence relies on an assumption that this is not the case, I’m not sure I buy it. As I noted above, I believe that the current state of eligibility jurisprudence is the result of intelligent actors acting in good faith to try to address a difficult issue, although I understand that many do not feel that way.
Jeremy, your post is offensive. You say that because people are behaving in a civilized manner doing their daily duties and that they seem intelligent that this means that they are actually asserting their power (their opinions) in a similar fashion.
No person that is educated would agree with you. Not one. History is filled with people like you describe that then use their real power in terrified and inhumane ways. The fact that there is a veneer of civility is meaningless to analyzing their opinions.
The offensive item is the attempt to use “civility” as an excuse for not employing critical thinking (and to not BE critical when clearly the situation calls for criticality).
There is nothing wrong — per se — with wanting to enjoy a “civil” environment. There is everything wrong with using “civility” as an excuse to condemn that which should be condemned.
… everything wrong with using “civility” as an excuse to NOT condemn that which should be condemned.
…and it should be noted (given Jeremy’s posts), that Jeremy is not one of those that is trying to use “civility” as an excuse to NOT condemn that which should be condemned.
Jeremy’s problem is in not seeing why what should be condemned is condemnable in the first place. He has failed to grasp the fact that personal “politics” (read that as philosophies) have very much intruded where they should not. We, as attorneys, have an ethical responsibility** to NOT look the other way when the Supreme Court gets things so very wrong.
**I re-invite attorneys to look again at their State Oath of Office. To date, only the Commonwealth of Massachusetts has a (remotely) arguable case for treating the Court as a client as opposed to reminding the Court that they TOO are subservient to the Constitution (and its checks and balances of all three branches).
Jeremy, it seems to be an unavoidable human tendency of some who post blog comments anonymously to indulge in non-substantive rudeness and personal hostility formats [which discourages useful comments by others] and then to incredibly assert that such behavior is somehow more effective or credible. Just ignore it and provide substantive inputs instead.
Also, of course, given the demonstrated lack of internet security, no attorney with any hope of representing any client before any judge would engage in insulting that judge on public media even anonymously.
+1
-2
Q: What is worse than Paul Morgan’s rather officious “indulge in non-substantive rudeness and personal hostility formats”…?
A: Paul Morgan’s indulgence in his own lame non-substantive snide comments and running away from actual points of discussion put directly to him, while pretending that using his real name carries any credibility or effectiveness.
Paul, being sanctimonious and overly ‘polite’ while avoiding the tough issues (and being tough when being tough is proper) is no way to go through life.
I willl put my posts against yours for substance, credibility, and effectiveness any day of the week.
Further,
I would bank on being the person more so than anyone else on this blog that seeks to “ENcourage useful comments by others,” challenging people to think critically and do more than v0m1t forth propaganda positions and mindless crud.
Maybe you don’t understand what “useful comments” are…
It is NOT useful to be “polite” to a fault or to not engage on the merits of the law or to ignore (repeatedly) points presented as to the law, to history, to the nature of innovation, or to other factual and legal matters.
It is also not useful to think that “anonymous” means no value and that “real name” means value. Value has no such correlation.
To summarize re comments here, the “printed matter” doctrine is not one of the established list of unpatentable subject matters from Sup. Ct. decisions* that are judicial exceptions to the literal scope of 101. Rather it was established by CCPA decisions [and arguably narrowed in a few subsequent CAFC decisions]. Thus that doctrine really needs a good cert petition by someone to settle its validity or scope. [But hopefully in a much better case than this one.]
A secondary issue is the apparently novel-here use of that “printed matter” doctrine for step 2 of the current Sup. Ct. 101 test rather than just 103. But if it is truely unpatentable subject matter, why does it not fit the requirements of step 2?
*E.g.,the Supreme Court in Diamond v. Chakrabarty [right after the famous language so frequently misleadingly partially quoted] stated that: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441, 92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121, 14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175, 14 L.Ed. 367 (1853). “
Any Supreme Court case after 1952 is somewhat suspect, as the notion of a broken scoreboard MUST be critically evaluated: (ultra vires, violation of separation of powers, infirmity for lacking present case or controversy (the bastion of “authority” tied to a projective, subjective and conjectural “MAY someday not promote”), and Void for Vagueness issues that the re-writing of statutory law by the Court engenders.
[T]he “printed matter” doctrine… really needs a good cert petition by someone to settle its validity or scope. [But hopefully in a much better case than this one.]
Agreed on both counts.
“[T]he “printed matter” doctrine… really needs a good cert petition by someone to settle its validity or scope”
Not really. 1. it’ll never get one because nobody will take one up and or receive cert in your lifetime and 2. it’d be a waste of time.
Happy 2019 to all the regulars here and thanks to our hardworking host!
Rare is the forum where a narrow, but economically important philosophy can be debated year-in and year-out without decent to incoherence….ahem….mostly.
In this instance, the Printed Matter Doctrine fails, because the markings are vital to the use of the substrate (i.e. no new markings, no utility from the substrate) and Mayer’s notion that influencing behavior as a result of a method cannot support a patent is something iconoclastic so far as I can tell…
What does work here?
A simple analysis: it’s a method. Doing the method produces information. The information is consumed by persons.
Should be ineligible!
Your flaws are more than self-evident.
What you would have as ineligible becomes — according to your own “dogma” completely eligible if the game is converted from a physical game of physical dice to an electronic game with electronic dice (in which the ‘produced information’ is produced not for human consumption, but instead is produced (directly) for machine consumption.
This flaw of yours traces back to your own inadequate understanding of utility (and the plain fact that utility must resolve down to human “consumption” at some point in order for utility to be reached in the patent sense.
If the method has a result, and that result is information, and the utility of the method arises from machine consumption of the information, the method should be eligible, including in a game.
Of course, the method must be new, non-obvious, and fully described, all of which are taller hurdles for information inventions than physical inventions.
I don’t understand your thing with utility. A sharper blade is more useful, period, before any “consumption” of the utility by anyone.
“I don’t understand your thing with utility.”
-it’s not my thing.
-you will remain disassociated with patent law fundamentals until you do get the utility thing.
A simple analysis: it’s a method. Doing the method produces information. The information is consumed by persons. Should be ineligible!
I used to think that this was uninformed musing, but I am increasingly coming around to your thinking here, Martin. I have to say, however, I wish you would tie this argument into more of a statutory basis. Please allow me to sketch such a statutory tie in:
[35 U.S.C. §101, emphasis added]
Patent infringement is a species of commercial tort. Hoover Group v. Custom Metalcraft, 84 F.3d 1408, 1411 (Fed. Cir. 1996). The common law of torts (with only limited exception) does not allow recovery for “purely psychic injury.” Roach v. Stern, 252 A.D. 2d 488, 492 (NY App. Div. 2d 1998). “Utility” and “injury” are flip sides of the same coin. That is why the “useful arts” are coextensive with the “technological arts.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979) (Rich, J., “[T]he present day equivalent of the term ‘useful arts’ employed by the Founding Fathers is ‘technological arts'”).
In other words, just as a purely psychic injury is not the sort of injury cognizable under tort law, so too a purely psychic utility is not the sort of utility cognizable under patent (a species of tort) law. Therefore, where the inventor discovers information (or a process for generating information) that interacts with a machine to create a new technical effect, the information (and the overall invention) is “useful” within the meaning of the term as used in 35 U.S.C. §101. Where, however, the new information is merely consumed by a human, such that the human feels happier, safer, better informed (etc.), this sort of purely psychic utility is not “useful” in the 35 U.S.C. §101 sense.
Despite my (perhaps tediously) long presentation of this argument, this gets at no more than the same insight that Random Recently articulated in his 30 Dec 2018 post #10 on another thread. As he very sagely observes, “[s]aying that one has improved the entertainment in wagering is like arguing that one can patent the Mona Lisa because there is entertainment value in viewing it, or that one could patent a religion because of the mental assuredness it gives one.” This sort of purely psychic utility is simply not the sort of thing that the patent laws are drafted to cover.
“Utility” and “injury” are flip sides of the same coin. That is why the “useful arts” are coextensive with the “technological arts.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979) (Rich, J., “[T]he present day equivalent of the term ‘useful arts’ employed by the Founding Fathers is ‘technological arts’”).”
Wrong on two important aspects.
1) Useful Arts is NOT synonymous with technical arts (there is a more recent citation to this effect, although I cannot put my fingers in it at the moment).
2) utility and injury are NOT flip sides of the same coin.
Think of the other aspect of Article I Section 8 – the aspect that is geared to expression rather than utility. Surely you recognize that injury occurs for the violations of the protections of expression, and quite a different coin than any violations of the protections of utility.
Related? Sure. Flip sides of the same coin? Not a chance.
And be aware of (and beware of) the fallacies in Random’s arguments, as he vemtures into the Wolfgang Pauli arena of “not even wrong” when he attempts to draw legal conclusions on matters already outside of the Useful Arts. It simply makes no legal sense to try to draw patent law “reasoning” with examples clearly outside the reach of patent law (his “new story” in books, any type of art appreciation, and religion ALL F A 1L because of the “not even wrong” aspect.
Greg, you exhibit more patience than is called for in dealing with people (such as Marty and Random) that start their “theories” outside of the fundamentals of patent law. While perhaps “polite,” you really do not add value with giving these folks the (false) view that they are “on to something.” These folk need to understand and embrace the actual fundamentals of patent law, and as long as they continue down their “path” in the weeds — and they do so with your “encouragement” — they will not find the real path.
While other comments are hung up in the filter, let me add a note to:
“Patent infringement is a species of commercial tort. Hoover Group v. Custom Metalcraft, 84 F.3d 1408, 1411 (Fed. Cir. 1996).”
While I have to check the case for the context, I would caution that the patent right is MORE than the adforded view that a specific infringement allegation may be a business tort.
Viewing the patent sphere as ONLY a matter of a business tort misconstrues EACH of the property nature of the patent right, the nature of trespass, the nature that a patent right is a negative right (contrasted with a “positive right” of engaging in business, or making a profit), and the fact that patent law has NO “must make” (or engage in business) for the right to exist and for the property right to be violated in some manner.
Hewing to the “business tort” angle only plays to the Efficient Infringer mantra.
Be aware and beware of that.
On re-reading my 19.2, I rather wish that I had left out the sub-arguments related to patents as a species of commercial tort, and utility as the flip side of injury. They are not inaccurate, but they are dispensible to the real argument.
The only important thing to know in order to understand my statutory argument for Martin’s thesis is that “useful” in §101 takes its meaning from Art. I, §7, cl. 8. As Judge Rich explained, “useful” here means “technological.” In re Bergy, 596 F.2d 952, 959 (C.C.P.A. 1979). Once one understands this (as with so much about interpreting Title 35, following the subtlety of Judge Rich’s thinking is invaluable), it becomes comparatively simple to sort out which claimed inventions satisfy the §101 “useful” requirement. Purely psychic “utility” is not patentable “utility.”
this is one source:
See link to patentlyo.com
Ex parte Lundgren, Appeal No. 2003-2088 (BPAI 2005).
“Our determination is that there is currently no judicially recognized separate “technological arts” test to determine patent eligible subject matter under § 101. We decline to create one. Therefore, it is apparent that the examiner’s rejection can not be sustained. “
By the way, the Lundgren decision distinguished the underlying cases in the Bergy case, and dispelled the dicta in that Bergy case.
Note as well that the Bergy case you cite to was PRE-Chakrabarty and PRE-Diehr which cabined the views that the then Flook case had attempted to impose.
One does need to0 keep in mind the political (read that as philosophical) winds of the various Justices (and judges) involved in this flux of time before “declaring” that Useful Arts and technical arts are the same things.
Mayer’s concurrence states: “subject matter eligibility under 35 U.S.C. § 101 is a pure question of law…”
How does Mayer reconcile that with granite precedent:
“We note also here that when we, the district courts, and parties refer to the ‘ordinary meaning’ of a claim term, such references are short-hand for the appropriate connotation under the law: the meaning, to a person of ordinary skill in the art”. Teleflex v. Ficosa, 299 F.3d 1313 (2002).
Is Mayer versed in the terminology of all world’s technical artisans? If not, how does Mayer properly interpret the claims? Mayer and the rest of the CAFC judges must be marvels of knowledge that they are capable of interpreting all claims as all relevant artisans would.
How is this not judicial hypocrisy or arrogance?
Thank goodness the Federal Circuit is keeping the fundamental building blocks of gambling free to the huge universe of gambling innovators. Because this kind of patent could have ground the economy to a halt. Can you imagine how tragic it would have been if a game like Monopoly had been patented? The horror!
Which it was.
Frankly, section 101 should be taken out of the court’s hands and left to the PTO as the only decider, but that’s preaching to the choir.