by Dennis Crouch
Glasswall Solutions v. ClearSwift (Fed. Cir. 2018) (non-precedential)
Glasswall’s patent claims are directed to a process of regenerating electronic files in a way that cuts-out non-conforming data. The approach here could be used as a virus filter. U.S. Patent Nos. 8,869,283 and 9,516,045. Although the generalized approach here is a nice goal, the Federal Circuit noted that the claims themselves did not actually claim how to achieve the goal.
The claims at issue … do not purport to claim how the invention receives an electronic file, how it determines the file type, how it determines allowable content, how it extracts all the allowable data, how it creates a substitute file, how it parses the content according to predetermined rules into allowable and nonconforming data, or how it determines authorization to receive the nonconforming data. Instead, the claims are framed in wholly functional terms, with no indication that any of these steps are implemented in anything but a conventional way.
So, taking this conclusion about these “wholly functional” terms, the next step is to ask whether that conclusion implicates any particular patent doctrine.
In O’Reilly v. Morse, 56 U.S. 62 (1853), the Supreme Court invalidated the broadest of Morse’s telegraph claims — claim 8 that had broadly claimed the process of sending messages at a distance without being limited to any particular machinery. In Morse, the court held that the claim consisting of a single functional limitation was “too broad and cover[ed] too much ground.” Later, in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), the Supreme Court was faced with a situation closer to Glasswall‘s. In that decision, the Supreme Court found that the claimed oil-well measuring apparatus included a wholly functional element at the invention’s point of novelty. That lack of specificity led the court invalidate the claim as indefinite. The Halliburton Oil court wrote that it is improper for a claim to describe its “most crucial element . . . in terms of what it will do, rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus.” Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).
Back to the present case. in Glasswall, the court did not touch definiteness but rather focused its attention on eligibility under 35 U.S.C. 101 (as expanded by judicial decisions). Here, the “wholly functional” language of the claims led the court to finding them directed to an unpatentable abstract idea.
Invalidity affirmed.
The Malcolm “Look at me Look at me” posting on top (3 Times) only goes to show how deep into the weeds Malcolm is.
Antigens…?
Meh, no one really cares all that much.
Software?
You do not have anything at all correct in your rant there.
And it’s not like you haven’t been corrected many many times. It’s just that you don’t care about the corrections. All you care about is your drive-by monologue and Internet style shout down.
Because it can’t be repeated often enough:
DC: Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).
Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system. This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.
What Congress did in 1952 was address the (incorrect) notion that had sprung up in the wake of Halliburton that functional language anywhere in the claim was f@tal to the validity of the claim. In addition, Congress approved of a claiming paradigm that would allow applicants to use functional language in a claim, even at the point of novelty, but only when the specification recited physical structure for carrying out the recited function.
There have been two notable exceptions to this rule. The first was the so-called “antibody exception” which was actually recognized as an “exception” and expressly referred to as such. At the PTO level, the “antibody exception” permitted applicants who discovered new antigens to claim antibodies which recognized those new antigens without providing any structures which distinguished those antibodies from prior art antibodies. The policy behind the exception was that — at the beginning days of the exception — it was easy to make antibodies which recognized a new antigen but it was difficult to obtain the amino acid sequence of the antibody. Importantly, there is not a single instance of a functional claim to an antibody that ever survived CAFC scrutiny and we can rest assured that the Supreme Court would never have approved of the exception. Most of us understood that the “exception” was pretty much worthless for enforceability purposes and, indeed, that was proven to be the case. The “antibody exception” has been put to bed, forever.
The other major exception to the rule has, unfortunately, never been recognized as an exception by the CAFC (and we can all guess why that is). That’s the “software exception” where the CAFC has created a bizarre internally contradictory and frankly absurd hodgepodge of ever-evolving rules which permit “new” computers to be claimed solely on the basis of their functions. The policy behind this exception is based on two incredible fantasies: (1) that there is some kind of objective physical/structural “essence” which can be inferred from the recitation of logical operations to be carried out by a prior art programmable computer; and (2) that without the “exception” human beings would somehow not be motivated to program computers and progress in the “computer logic arts” would be hindered. As most of us are aware, these fantasies are the opposite of reality and the exception for software has only served to funnel money to the wealthy classes (including patent attorneys), create grifting opportunities for the least innovative people who ever walked the earth, and to erode the credibility and functioning of the system as a whole (by flooding the PTO with massive piles of “do it on a computer” g@ rb@ge).
This is one of the reasons why many commentators and academics think functional claiming should still be improper–Halliburton was never overruled by Congress, contrary to Dennis’s statement. Congress simply created an exception allowing patentees to draft functional claims in means-plus-function format under 112(6)/112(f).
The net impact of that development should have been, if you’re going to draft purely “functional” claims, you have to use 112(6)/112(f), otherwise Halliburton applies and they’re invalid. And 112(6)/112(f) imposes the famous “quid-pro-quo,” and limits the claim limitation to structures in the specification and equivalents thereof.
But this argument has been made in numerous software cases, without success. Patentees continue to get away with functional claims reciting “computer code for” or “apparatus configured to”, which are really no different than classic means-for claims. But despite Williamson, courts are still very reluctant to find that anything that doesn’t recite “means” is actually governed by 112(6)/112(f). The net result is that patentees can continue functional claiming in the software realm, without having to disclose or be limited to any particular technique.
Lode_Runner,
You are wrong – see my posts passim (and especially at post 1).
Plain and simple: Halliburton was abrogated.
The use of terms sounding in function permeate throughout 112.
The option under 112(f) is for the further PURELY functional claim format.
There is a vast difference.
One may even call that vast difference a Vast Middle Ground.
(and please note that THAT vast middle ground is outside of the optional use of 112(f)).
An abstract invention is not the same thing as an abstract claim.
“Abstract” all on its own was not bothered to have been defined by the Court.
Your desire to inject two “abstracts” simply will not — and cannot — help.
anon you have devolved to total incoherence on this subject.
It’s not arguable by any serious participant that abstraction means nothing to the proper functioning of the patent law. It’s a concept rooted in legislation and jurisprudence from the beginning.
If a patent claim is not the same thing as an invention- and it’s obviously not- than there are automatically “two” kinds of abstraction. How that is recognized or not in current procedure is arguable, but that there is no difference between a claim and an invention?
No way sister.
It’s a concept rooted in legislation and jurisprudence from the beginning.
It’s also in the dictionary.
But these are patent maximalists! It’s “impossible” to figure out what “abstract” means. But “functionally related” — why, that’s the simplest concept in the world to understand and everything could be solved by 112 and 103 if it weren’t for those meddling kids.
Funniest. Attorneys. Ever.
“It’s also in the dictionary.”
And yet the Justice explicitly did NOT go there (and had he done so, the discussion would be quite different).
This is dissembling from you Malcolm, as this point had been put to you previously.
“It’s also in the dictionary.”
And yet the Justice explicitly did NOT go there
He also didn’t say that the dictionary definition was irrelevant or plainly wrong.
So what do the patent maximalists do under such a circumstance? Why, they stick their heads in the sand and pretend to be born yesterday.
Very serious people.
Tell me Malcolm, what DID he say?
It is not a matter of “meaning nothing” and that is an odd reach for you to take my comment.
But just “what” it means DOES matter from a “Void for Vagueness” Constitutional infirmity position (for the Court written version of the statutory law).
That you f a i 1 to recognize this only shows that you are playing in a terrain that you just do not understand.
As to your statement of “If a patent claim is not the same thing as an invention- and it’s obviously not,” you clearly do not understand just what Congress did in the Act of 1952 in response to a prior anti-patent Court.
You need to get up to speed before you indulge yourself in fabricating your “help.”
(PER Congress, the invention is what the applicant seems that the invention by way of the claims — the claims ARE what the invention is)
You can “no way sister” all you want, but that means nothing.
…the invention is what the applicant deems that the invention is by way of the claims…
Typed too quickly…
The invention is something real in the world, and the claims are words. A toddler can understand that.
Object permanence typically starts to develop between 4-7 months of age and involves a baby’s understanding that when things disappear, they aren’t gone forever.
Hmmmmmm
I have to chuckle at your reply here, as you think that you are “on to something,” but in reality, you are so far away from the understanding that has already been shown by others (and notably me**).
Yes, Marty, claims are words. Specifications are words, the entire application is made of words.
But this applies UNIVERSALLY.
EVERY patent, every claim, every specification, every application.
Of what use then, do you think that you pointing this out has on distinguishing various things under the law?
**As far as I can recall, I was the very first on these boards to share the Magritte painting of “The Treachery of Images” (Ceci n’est pas une pipe).
NONE of this – none of the thrust of your “point” however is actually ON point to the points presented (and that Congress choose NOT the Court to determine “what the invention is” (much less, what the invention is “directed to”). Rather, Congress explicitly laid out that it is the applicant that gets to determine that – and the manner in which that is determined is (gasp) – the claims.
Your musings and “reinvented” view of patent law remains unmoored to actual law.
This notion that a court of law handling a patent litigation has no power to define “what the invention is” is self-rebutting.
As seen by hundreds and hundreds of Alice rulings, your assertion is a nullity.
As to me being “on to something”? Yes, I’m onto the fact that the system is still broken by information inventions. I’m onto the idea that the jurisprudence evolved in an unhealthy way in order to stop a raging forest fire, which is still smoldering and burning in spots.
It can be fixed, but not until the terms are settled upon, which they are not.
self-rebutting….?
Do you understand the terms that you are using?
Do you recognize the grant of authority/responsibility BY Congress in 35 USC 112?
My assertion is NOT a nullity – that the score board is broken is a better description.
Your “information inventions” mantra is simply disassociated with the law as written by Congers.
Still.
You do have appoint here though (in the sense of even a blind squirrel may find a nut): terms are NOT settled upon.
But the blame for that rests fully with the Supreme Court.
Good grief Martin, you do know the ’52 Act was specifically created to overturn all that 2nd Circuit – gist or heart of the invention, etc, etc. tests and this modern incarnation of ‘abstract’ is EXACTLY what the ’52 Act abolished (well abolished but for our current lawless SCOTUS).
a “Void for Vagueness” Constitutional infirmity position (for the Court written version of the statutory law).
Taken at face value, the statute is unconstitutional.
We’re way ahead of you, Billy. Don’t try to catch up. You’re so far behind that you think you’re winning. In fact, we’re lapping you for the second time.
The thing is Malcolm, you are running in the wrong direction.
“Taken at face value, the statute is unconstitutional.”
Care to explain that?
Then care to provide what the judicial powers are in relation to laws found to be unconstitutional?
(Hint: the Judicial Branch does not have authority to re-write laws to put forth their own desired policies.
“We’re way ahead of you, Billy.”
Funny that, as you have never provided anything even remotely close to a cogent Constitutional position.
Sure, you have mouthed “First Amendment” (without any structured support for such a claim), but you have not even come close to the details that I have put forth for at least three different Constitutional infirmities (separation of powers, no present case or controversy, and Void for Vagueness).
Can you do more than merely play the Internet tough guy//blow hard, and actually put forth a single cogent argument to show “how advanced” you are and why my three detailed arguments “can’t catch up”…?
No explanations…?
Shockers.
STILL no answers.
And doubtless, you are “right here.”
So much for your being “right here” as being anything meaningful.
link to youtube.com
Lest the thread drift off further into the “anon” and his bff Night Wiper’s fever dreams:
DC: Congress however rejected Halliburton in the 1952 Patent Act by adding the provision that elements of a combination claim may be drafted in functional form. 35 U.S.C. 112 p 6 (now 112(f)).
Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system. This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.
What Congress did in 1952 was address the (incorrect) notion that had sprung up in the wake of Halliburton that functional language anywhere in the claim was f@tal to the validity of the claim. In addition, Congress approved of a claiming paradigm that would allow applicants to use functional language in a claim, even at the point of novelty, but only when the specification recited physical structure for carrying out the recited function.
There have been two notable exceptions to this rule. The first was the so-called “antibody exception” which was actually recognized as an “exception” and expressly referred to as such. At the PTO level, the “antibody exception” permitted applicants who discovered new antigens to claim antibodies which recognized those new antigens without providing any structures which distinguished those antibodies from prior art antibodies. The policy behind the exception was that — at the beginning days of the exception — it was easy to make antibodies which recognized a new antigen but it was difficult to obtain the amino acid sequence of the antibody. Importantly, there is not a single instance of a functional claim to an antibody that ever survived CAFC scrutiny and we can rest assured that the Supreme Court would never have approved of the exception. Most of us understood that the “exception” was pretty much worthless for enforceability purposes and, indeed, that was proven to be the case. The “antibody exception” has been put to bed, forever.
The other major exception to the rule has, unfortunately, never been recognized as an exception by the CAFC (and we can all guess why that is). That’s the “software exception” where the CAFC has created a bizarre internally contradictory and frankly absurd hodgepodge of ever-evolving rules which permit “new” computers to be claimed solely on the basis of their functions. The policy behind this exception is based on two incredible fantasies: (1) that there is some kind of objective physical/structural “essence” which can be inferred from the recitation of logical operations to be carried out by a prior art programmable computer; and (2) that without the “exception” human beings would somehow not be motivated to program computers and progress in the “computer logic arts” would be hindered. As most of us are aware, these fantasies are the opposite of reality and the exception for software has only served to funnel money to the wealthy classes (including patent attorneys), create grifting opportunities for the least innovative people who ever walked the earth, and to erode the credibility and functioning of the system as a whole (by flooding the PTO with massive piles of “do it on a computer” g@ rb@ge).
>>MM Congress did not “reject Halliburton” because the prohibition against functional claiming at the point of novelty is an essential part of any sane, healthy patent system.
Again, we have the anti-patent judicial activists trying to delete the any person skilled in the art. Functional claiming is fine—just fine–anywhere in a claim when it is enabled. The scope of the claim is the scope of enablement.
It never ends with these twisted dishonest arguments.
Functional claiming is fine—just fine–anywhere in a claim when it is enabled.
This is false, as has been explained to you by your betters.
If the only novel feature recited in your claim (whether directly recited, or indirectly recited) is a new functionality, then you’ve failed the enablement requirement. You haven’t even reached the floor of the requirement.
“This is false, as has been explained to you by your betters.
If the only novel feature recited in your claim (whether directly recited, or indirectly recited) is a new functionality, then you’ve failed the enablement requirement.”
First, you are certainly not in any wild stretch of imagination, a “better.”
Second, you have explained nothing.
Third, you continue to confuse and conflate multiple concepts driven by the unexplained dichotomy of you wanting to remove from patent protection the most economical form of innovation out there (while maintaining your “making money is bad” ethos).
Items IN a claim do not necessarily control the statutory category of the claim as a whole. You have this inane script about “functionalities” not being a statutory category and that script is a strawman at best. You also here seem to think that the claim — alone — somehow must be fully enabling; but it is NOT the claim that must be enabling.
You crow about “not reaching the floor” when you are not even in a building with a floor. Come in first from the weeds and join the legal conversation before you crow.
Functional claiming is fine—just fine–anywhere in a claim when it is enabled.
This is almost correct. I would revise it only slightly to say that functional claiming is fine when it is enabled across its full scope. As a practical matter, however, how often does it happen that an inventor uses a functional term at the point of novelty and enables every manner of enacting that functionality? Almost never.
In other words, functional at the point of novelty is fine in theory. In practice, however, it fails §112(a). I certainly agree, however, that in the rare instance in which an application really does enable the full scope of the functional term, then the functional claiming is unobjectionable.
I would revise it only slightly to say that functional claiming is fine when it is enabled across its full scope. As a practical matter, however, how often does it happen that an inventor uses a functional term at the point of novelty and enables every manner of enacting that functionality? Almost never.
I agree, but I think there’s an important distinction between “functionality” and “functional language”. A claim that only recites a result of an operation to be performed describes the operation in terms of its functionality, and yes, is likely to lack enablement. But a claim that recites a specific implementation of steps to achieve the operation may use functional language, but is not directed merely to the end result, and may be both eligible and enabled.
For example, MPEP 2173.05(g) gives the examples of “comparatively large grains of such size and contour as to prevent substantial sagging or offsetting” as indefinite, and “transparent to infrared rays” as being definite. Additionally, both Enfish’s and Finjan’s claims used functional language: “an object identification number (OID) to identify each said logical row” and “Downloadable security profile that identifies suspicious code in the received Downloadable.”
But again, I agree – claims that recite only the desired functionality, and not the implementation of how to achieve that functionality, whether in functional or structural language – are likely to be both ineligible and indefinite.
Except it does not – as the use of terms sounding in function is present throughout 112 and the option in 112(f) is for only the PURELY functional.
Outside of purely functional, what Congress provided has nothing to do with the attempted “Point of Novelty” discussions.
Things to remember:
Many art fields use terms like “screwdriver” that are “functional.”
Think “Vast Middle Ground.
Greg, there is no basis for your assertions about 112(a). The famous case used the word “any.” That can cause a problem.
Your position is just absurd. A functional claim is ALWAYS fine as long as it is enabled. You are adding across it scope, but of course it must be enabled across its scope by what any person skilled in the art knows.
The whole problem comes in with new ways to solve the problem —and then the answer is to ask whether the new way to solve the functional claim element is non-obvious. There is case law to support my position.
Your position is just absurd–and frankly ridiculous. You are trying to require a claim to potentially include 1000’s of solutions —every solution known to an any person skilled in the art rather than use functional language.
It never ends with this attempt by the judicial activists to burn down the patent system.
“This really shouldn’t have to be explained to patent attorneys or anyone remotely associated with the patent system.”
Malcolm and his number one meme of Accuse Others, as he denies reality of what Congress DID DO in 1952.
Talk about “fevered dreams”…
What is the name of that case anon that goes through the reasoning of scope of enablement? It slipped my mind. But basically the issue was whether the new way of solving the problem should invalidate the claims of the asserted patent as being too broad.
Also, the doctrine of reverse equivalence. Shameful that patent attorneys try to ignore these case and the common sense logic and the practicality.
I actually not long ago wrote a patent for a mechanical device (big) that used hydraulics and it arguably had a point of novelty. At least conceptionally. But there were literally hundreds of ways that any person skilled in the art knew how to solve the problem. It was the combination as it always is. I can’t image having to had enabled and claimed ever possible solution. That would have been hundreds of pages.
Not sure which case it is that you are referring to, but I am reminded that the Court’s own penchant for empowering PHOSITA (as a “keep out” for obviousness) carries with it the “need” to include less in specifications (since what a PHOSITA may comprehend need not be included).
This is a parallel (but in the opposite direction) of the “what is to be included” notion.
Typical anti-patentists want the heightened PHOSITA for the 103 block, but do not want the mirror side of the easing of 112.
…additionally, that passage from KSR (that speaks as to why PHOSITA is to be empowered) need be read as also empowering the doctrine of equivalents — which deals with the “reach” of what is in a specification to that which is not (but that would be recognized BY a PHOSITA).
>Paul Morgan December 24, 2018 at 9:50 am
Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.
This really isn’t the story. We almost had all of this done with in the Bilski decision had Scalia signed onto all parts of the majority decision.
And, the concurring decisions are disturbing, e.g., in Alice, Breyer, Ginsburg, and Sotomayor said they thought NO business methods were patentable.
So the situation is a little more complex. And Oil States was 7-2, which is disappointing as had Alito signed on to the dissent and with the new justice, then we’d be at 5-4. All it would take is for Ginsburg to finally kick out of it while Trump is president and Oil States could have been reversed. Alito is a great disappoint as was Scalia.
I think the line of civility is interesting. You see when you get judges and justices applying the law and being fair minded that it would certainly be uncivilized to hope for a justice to finally kick out of it. But, when you have judges and justices that have gone rouge and think they can just do whatever they please ’cause they have the power, then it is fine to wish that they would leave their positions and how that occurs is their problem.
But I certainly would not feel any remorse if people like Taranto kicked it or Ginsburg. I would say about time that POS left.
I am less concerned with “civility” and the notion of “fair minded” (which is always up to the individual level of what is “fair”), and more concerned with the use of “civility” as some type of “let’s constrain the discussion and NOT use critical thinking.”
As I have noted, words SHOULD BE a little sharp — especially in view of things being done in an unthinking manner. See John Maynard Keynes. When “civility” is emphasized, AND the issues underlying any generation of harshness are not being fully engaged on their merits, then THAT call for “civility” is nothing but a smokescreen for “sh ut up and just take it.”
Our ethical duty demands more – and demands that we do NOT just “sh ut up and just take it.”
when you have judges and justices that have gone rouge
Gotta love it when the truth leaks out.
Oil States could have been reversed.
LOL
And then what?
Tell everyone your maximalist fantasies, Night Wiper! You’re a very serious person.
Thomas disappoints on patent law – time after time. Oil States just blew it. Too bad SCOTUS didn’t take Ned’s case instead.
Ned (rest in peace) was NOT the champion that we needed.
He had a rather myopic “one-plank” view and simply did not grasp all the reasons why the score board was broken.
Personally, I am glad that his case was not chosen.
Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.
To overrule Alice and Mayo, support a Congressional change to 101 that has been thought through and vetted more carefully for unintended consequences and prior specific unpatentable subject matter statutes than pending proposals.
Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.
This is a point that cannot be repeated too often nor emphasized too strongly. Misbegotten as I may think much recent drift in patent law to be, there is an undeniably bipartisan consensus behind recent patent law developments. If I were to lay you out a dozen recent SCotUS patent opinions (whether majority opinions, concurrences, or dissents) with the authors’ names effaced, and asked you to sort which are written by conservative justices and which by liberals, you could not do it.
Similarly, whatever one might think of the AIA, it was a very bipartisan bill. Perhaps it was the last such bipartisan bill of the last decade.
Those of us who oppose most of the recent changes in patent law need to internalize and address this point. The patent law is changing because the American political consensus favors this change. If we want to turn this tide, we need to do the spade work around building a different consensus.
Those of us who oppose most of the recent changes in patent law need to internalize and address this point.
Most of the “recent changes in patent law” that were allegedly effected by the Supreme Court are nothing but reasonable corrections to the horrible “less recent changes in patent law” that were effected by the know-nothing patent maximalists who infested the patent bar and held the PTO and CAFC hostage. State Street Bank was one of the worst decisions in the history of the CAFC, matched only by the CAFC’s disgustingly inept decision in Prometheus v. Mayo.
And let’s make no mistake: the worst actors in that bunch were (and are) stalwart members of the Repyu k e Party, which is officially the Trump Party now (i.e., self-absorbed glibertarians who care about nothing beyond enriching themselves). Big Jeans and his crew are quintessential examples of these rotten excuses for human beings.
What you need to “internalize and address”, Greg, is that the profession was been turned into a cl0wn show by a pack of loudmouthed l0wlifes from East Texas. And a lot of those people are “still with us”, unfortunately. Their playthings need to be expunged. Then they will find another grift, surely, but at least the patent system will be left alone and people will be free to use computers for their intended purpose without having to deal with a zillion utterly cr@ p patents filed by patent attorneys who can’t argue their way out of a paper bag.
Your rant is noted.
Not what I got out of listening to the Oil States oral arguments. No, I heard liberal-minded nonsense coming from at least two justices and the more recently appointed conservative justices opposing said views.
What counts is the votes, not the oral arguments. Oil States was 8-1, and the 1 was more of a rant against any kind of administrative proceeding.
Paul,
In this instance, “less” is not “more,” and the better understanding comes from taking into account the socio/political views and animus of the individual Justices.
…and I would further add that your call would have some (minimal ) merit, IF the Bench was not legislating a desired (policy) Ends.
The “policy” aspect necessarily implicates the “political.”
7-2
Shouldn’t we actually wait to see how Justices Gorsuch & Kavanaugh vote in Helsinn before concluding that Pres Trump has appointed justices with a different view of patent law than the rest. After all, the same Federalist Society that vouched for these two also vouched for Roberts & Alito. There has long been a bipartisan consensus behind badly deteriorating the patent law. Until I see evidence that the two newest justices are different, my default assumption is that these two are just like the rest of the GOP-appointed justices.
There has long been a bipartisan consensus behind badly deteriorating the patent law.
LOL
What “bad deterioration” are you talking about, Greg? Be specific.
Good point, Greg. I think there is only 1, though. Gorsuch I think we know is for patents.
Like I said, let’s wait for his Helsinn vote before drawing any conclusions. A single swallow does not a summer make, nor a single Oil States dissent.
Greg: The patent law is changing because the American political consensus favors this change. If we want to turn this tide, we need to do the spade work around building a different consensus.
Yes, good luck convincing people that information and logic pertaining to their medical information should be protectable by patents handed out by the wealthy attorneys at the PTO to their wealthy attorney friends in Texas.
Pretty sure that’s going to be the least popular position in the room every time.
So what’s Plan B, Greg? How are you going to hand over ownership of correlations to the patent attorney class? Just sneak it through in the middle of the night because “you know better”?
“handed out by the wealthy attorneys at the PTO to their wealthy attorney friends in Texas.”
Done dissembling yet?
Ok, let’s start by ‘trust busting’ the network effect companies. Because believe me, there is a ‘consensus’ the patent system is downright bothersome to those owning a natural monopoly.
Notions of “consensus” should certainly NOT be accepted at face value.
The “consensus” that Greg speaks of is the type of “consensus” that brought us to the S&L collapse.
“Criticizing individual Sup. Ct. justices is pointless given that most Sup. Ct. patent decisions in recent years have been unanimous or nearly unanimous.”
Disagree.
Yes, most recent cases have had large (cross-aisle) majorities, but such does NOT mean that we should not be looking at the individual judges, their proclivities, AND the politics of the Bench in assessing what is going on in patent law.
Much of the 101 landscape, for example, draws much insight by paying particular attention TO the animus and politics of the individual Justices.
Further still, some decisions can easily be seen to garner cross-aisle support when viewed in a manner of a CAFC versus SC battle (think of the put-down of the Breyer position prior to the Court providing Breyer a bully pulpit).
As to the other view of Paul in his post at 12, I see more of the same type of “sniping from the sidelines” in the implying of “need” for “vetting more carefully… than pending proposals.”
Maybe Paul can actually engage on the merits of the proposals, discuss the points (and counter points) INSTEAD OF merely attempting denigrations….
…to wit on the personal Justice observations, it is enlightening to remember that Justice Stevens was the protege of one of the historical worst Justices (vis a vis patent law) in Douglas, had attempted to “book-end” his career (and LOST the majority writing position in Bilski), and whose own protege is the noted Sotomayor, who has continued in the anti-patent mindset.
To not pay attention to such matters would be a disservice to the critical thinking and the responsibility of most all attorneys (as I have also noted, with the exception of the Commonwealth of Massachusetts, most ALL state attorney oaths require attorneys to place the Constitution ABOVE the Supreme Court).
Yes, paying attention to the animus and politics of individual Justices may “feel bad,” and may impugn the Court, but we have an ethical obligation to NOT place the Court above the Constitution itself (and remember well, that ALL three branches are designed to be of limited powers).
It is interesting to compare Richard Linn’s opinion in the present case with that of the UK Patents Court in Clearswift v Glasswall [2018] EWHC 2442 (Pat)http://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Patents/2018/2442.html&query=(glasswall). The patent in issue was EP-B-1891571 which is a counterpart of the two US patents in issue here. In the UK the patent was attacked on the ground of obviousness and survived challenge.
The difference is at first sight surprising since Richard Linn is a very experienced member of the CAFC and was before that a patent attorney with a qualification (if my memory serves me right) in electronics.
Functionality is a serious and inadequately addressed issue. If you look at the patent in issue in State Street Bank, you will see many blocks in a block diagram but very little to populate any of them. The most potent objection, which ought to have been pursued but was ignored, was not eligibility but lack of support under 35 USC 112(6) as it then was, now 112(f).
Very interesting Paul. Thanks.
I see that the EPO was all set to refuse the application but that Applicant asked for (ex Parte) “oral proceedings” which ran all day, finally concluding at 6:15 pm with a decision to allow a claim copiously amended during the course of the day. One might suspect that the Examining Division got tired, and wanted to go home. refusing the application involves much more work than simply letting it pass through to nissue.
And then you say that the most potent doubt about patentability is with clarity/definiteness, exactly the issue that, in Europe is not justiciable after grant.
Nevertheless I am reminded of another notorious case at the EPO in which an all-day Hearing resulted in the issue of a patent that in the end proved to be invalid.
What do we learn from such cases? First, that only inter Partes proceedings can spotlight the core issues of validity.
Second, that those who argue that a duly issued claim is not valid succeed only when they have competent representation.
“refusing the application involves much more work than simply letting it pass through to nissue.”
Maybe MaxDrei can explain this canard — the “wearing down” and it is somehow “easier” to allow than to properly maintain a rejection (which in the US Sovereign has always been painfully, plainly untrue).
Explain? Here you come:
The work is in formulating and then writing the required reasoned “Decision to Refuse” that has to be signed by all three members of the Examining Division. It has to be appeal-proof, because appeals against such decisions are customary, and the careers of the 3 Examiners will not be advanced if the Board of Appeal finds fault with their decision.
So the reasoning has to be unassailable. And making it so takes much time and mental effort.
Much easier just to allow oneself to be persuaded by the blandishments of the Applicant’s advocate at ex Parte oral proceedings, especially as the sun goes down, the evening sets in, and Applicant’s advocate continues tirelessly, exercising in full Applicant’s untouchable “right to be heard”.
That’s not “wearing down” as much as it is a lack of professionalism.
If the proffered arguments are better than the examiner’s position, then it is only logical that an allowance is in order.
No matter how much “mental effort” there may be – from either side.
One expects — professionally — that the best effort be put forth. The sense that you advance, with this notion of “gee, my career may be limited” is utter balderdash.
I think that this may come from an animus of yours that allowing patents must somehow naturally be “bad.”
As often is the case, there appears to be an inordinate preoccupation with Type I errors to the exclusion of Type II errors.
Further, you fail to recognize that THAT pressure may exist on both sides of the coin, and that applicants are just as easily — if not more so “worn down.”