No Sovereign Immunity for Patent-Asserting State University

by Dennis Crouch

University of Florida Research Foundation, Inc. v. General Electric Company (Fed. Cir. 2019)

UF’s asserted patent is titled “Managing Critical Care Physiologic Data Using Data Synthesis Technology.” U.S. Patent No. 7,062,251.  From the patent title, keen Patently-O readers will recognize a potential eligibility problem.  N.D.Fla. District Court Judge Mark Walker dismissed the case on a R.12(b)(6) motion without taking any evidence — finding the asserted claims ineligible as a matter of law. On appeal, the Federal Circuit has affirmed.

Sovereign Immunity: Before reaching the merits of the eligibility claim, the Federal Circuit first addressed Florida claim of Sovereign Immunity under the 11th Amendment of the U.S. Constitution.  In a prior decision, the PTAB refused to consider an inter partes review (IPR) challenge of the ‘251 patent based upon sovereign immunity grounds. IPR2016-01275 (note – this is a questionable decision under St. Regis Mohawk).

The 11th Amendment has been seen as quite strong — preventing the Federal Courts from hearing “any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.” U.S. Const. amend. XI.

The for UF here is Waiver — UF filed the infringement lawsuit against GE and GE raised invalidity as a defense.  The Federal Circuit has clear precedent that “a state waives its Eleventh Amendment immunity when it consents to federal court jurisdiction by voluntarily appearing in federal court.” Regents of the Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003).  As the court explained in a prior case, “the Eleventh Amendment applies to suits ‘against’ a state, not suits by a state.” Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1564–65 (Fed. Cir. 1997).

Eligibility as a Defense: As part of its holding, the court continued-on to explain that lack-of-eligibility is a proper defense:

Even if § 282 did not extend to a § 101 eligibility challenge, such a challenge would still be a defense to a claim
of infringement. [Since w]e and the Supreme Court have long treated § 101 eligibility as a “condition[] of patentability” alongside §§ 102 and 103.

An interesting aspect of the court’s explanation here is the two citations that it uses:

  • Versata Dev. Gr., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1330 (Fed. Cir. 2015) (“It would require a hyper-technical adherence to form rather than an understanding of substance to arrive at a conclusion that § 101 is not a ground available to test patents.”);
  • Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 543 F.3d 657, 661 (Fed. Cir. 2008) (“It has long been understood that the Patent Act sets out the conditions for patentability in three sections: sections 101, 102, and 103.”).

The “hyper-technical” admonishment of Versata can be juxtaposed to the hyper-technical holding in Aristocrat holding the improperly reviving an abandoned patent cannot be a defense in patent cases because it does not fall within Section 282. Id. (“The salient question, then, is whether improper revival is “made a defense” by title 35. We think that it is not.”)

Eligibility Analysis: Moving now to the merits, the court looked at representative claim 1 that is directed toward “a method of integrating physiologic treatment data” and that requires steps of :

  • receiving physiologic treatment data from at least two bedside machines;
  • converting [the] data from a machine specific format into a machine independent format within a [remote] device …;
  • performing [a] programmatic action involving [the] data; and
  • presenting results from said programmatic actions upon a bedside graphical user interface.

The court explained this method as automating pen-and-paper methods — i.e., “do it on a computer.”

This is a quintessential “do it on a computer” patent: it acknowledges that data from bedside machines was previously collected, analyzed, manipulated, and displayed manually, and it simply proposes doing so with a computer. We have held such claims are directed to abstract ideas. . . . That the automation can “result in life altering consequences,” is laudable, but it does not render it any less abstract.

In examining the patent, the court was unable to identify any specific technological improvements but rather the particular key features of the system are defined in functional terms.  Thus, in addition to being directed to an abstract idea, the claims also fail Alice step two as merely reciting “well-understood, routine, conventional activit[ies]. . . . Here, the claims do no ‘more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.’ Quoting Alice.

Invalidity Affirmed.

62 thoughts on “No Sovereign Immunity for Patent-Asserting State University

  1. 7

    Blame it on the wrongly-decided State Street Bank decisions. Which also have created considerable problems in copyright law (in the Fifth Circuit, a university press affiliated with a state university has a free pass to infringe copyrights… one wonders about how the coursepack litigation pending in the Eleventh Circuit regarding Georgia State University would fare?).

    The real problem is that although the words of the Eleventh Amendment don’t change based on changes in “what states do,” they were not put in place at a time that states engaged in commercial activity… or owned patents or copyrights. It was, in the words of Frank Bormann regarding the loss of Apollo One on the launchpad, a failure of the imagination.

    1. 7.1

      Care to be more specific as how you view any “wrongness” from State Street as being a “cause” here?

      1. 7.1.1

        Much of the dispute — and, in all probability, sloppiness at UF relying on it (I’ve seen this in action at the Pentagon and have less than no reason to believe states are “better” about it) — turns on states (and arms of the states) being immune from suit in federal court, combined with the exclusive jurisdiction of federal courts over IP Clause actions (28 U.S.C. § 1338). An awful lot of attorney hours, words in wordcount-limited briefs, etc. were expended on this issue, because the Supreme Corut said that Congress didn’t find enough facts and wasn’t explicit enough that states had historically posed serious-enough problems that it could, and did, abrogate their Eleventh Amendment immunity.

        The “management-level” problem is that when a person or organization believes it/they is immune from suit, compliance suffers. And one sees this at the intersection of IP law and civil procedure at least as far back as Blonder-Tongue. Florida’s contributions have included Bonito Boats, so it’s not exactly a stranger to the “the State of Florida is a special snowflake” argument that is further encouraged by purported immunity.

        Ironically enough, the patents actually at issue in one of the State Street Bank opinions are precisely the kind of patents that are now disfavored as at best CBM and more fundamentally as ineligible subject matter. But that kind of irony never plays well with courts, which really, really dislike having their fundamental errors pointed out to them (witness the seventy-five years it took to get Korematsu abrogated).

        I’d like to see this particular matter taken up on certiorari to correct the State Street Bank errors… but with this Court I’m unsure that would be the result anyway. I count four strong “state’s rights” votes for an even-more-expansive interpretation of the Eleventh Amendment, before considering the, umm, general unsophistication of this Court on IP and why IP Clause issues aren’t “just like” Commerce Clause issues…

        1. 7.1.1.1

          Your feelings are noted, but how are those feelings towards “business methods” a cause here for the State Sovereignty issue?

          1. 7.1.1.1.1

            Almost none; I merely noted the irony that if State Street Bank came up today it would be entangled with ineligibility, which was not even briefed in the 1990s. I suspect that might make it come out the other way… since an IPR could have been instituted without facially violating the Eleventh Amendment. And there’s a civil procedure quandary to warm the civil procedure nerd hiding inside…

            I have much broader problems with State Street Bank than “just” patent and/or copyright litigation; it puts an impossible burder on Congress to affirmatively hammer states — on the order of Voting Rights Act § 2 — so that states can be regulated as are any other commercial actor, when at the time of the drafting and adoption of the Eleventh Amendment nobody thought states could be commercial actors.

            1. 7.1.1.1.1.1

              I am still only seeing feelings abound, disconnected from topic to topic.

              As for States and their own fingers into the mercantile pie, I suggest that you could not be further from reality (if for one reason, think actual bank charters and the early coinage of currency)

            2. 7.1.1.1.1.2

              [I]f State Street Bank came up today it would be entangled with ineligibility, which was not even briefed in the 1990s.

              Can you give the West reporter cite for the State Street Bank decision you have in mind? The one that I have in mind was entirely and explicitly about subject matter eligibility, so I gather that you must be referring to some other State Street Bank decision(s).

              1. 7.1.1.1.1.2.1

                My guess is that C.E. Petit is suffering a different type of “failure of imagination” in trying to come up with a way to provide support for the rather wild statement that “State Street” is to blame for these various woes…

  2. 6

    Sovereignty?

    Well, UF; youz elect to play in the sandbox, youz gots to accept youz may jus’ get some sand kicked in youz face.

  3. 5

    The “hyper-technical” admonishment of Versata can be juxtaposed to the hyper-technical holding in Aristocrat holding the improperly reviving an abandoned patent cannot be a defense in patent cases because it does not fall within Section 282.

    Good point. This has always seemed to me like an unmerited gift to the USPTO. By making the Director the last word on whether an abandoned application should or should not have been revived (despite the presence of criteria in the statute by which that determination can and should be reviewable), the CAFC has turned petitions to revive into a pure profit center.

    The USPTO lets it be known that they will revive essentially anything if you pay the ($2000 full fare right now) fee. Patent attorneys pay the fee without complaint because it is cheaper than a malpractice suit. No one (including the down-the-line defendant) gets a look-in as to whether the statutory criteria for revival is met, because such is (supposedly) not a defense under §282.

    1. 5.1

      Good point. This has always seemed to me like an unmerited gift to the USPTO.

      I do not understand your apparent consternation here Greg, as this “gift” fully aligns with your view of patents as “Public Franchise” type of property (contrasted will Private Personal type of property).

      Franchise necessarily connotes a Franchisor, and who else but the State would be that Franchisor, and thus, there is no “gift” as you would attempt to distinguish here.

      There are simply necessary ramifications of converting the nature of property from Private personal to Public Franchise, and one of those ramifications shows up here.

  4. 4

    >At Alice step one, it determined the claims are directed to the abstract idea of “collecting, analyzing, manipulating, and displaying data.” J.A. 15

    That little quote above covers the job of pretty much everyone associated with the CAFC. This is another one that doesn’t look valid to me, but 103 was the proper tool.

  5. 3

    Does anybody think that these claims are eligible under the new USPTO Guidelines? I feel like converting sensor data into machine-independent formats to enable programmatic action on the shared data could be considered a practical application.

    As a patent prosecutor, I’m happy to see the loosening up of the eligibility requirements. This is what scares me about the new guidelines, though: if the USPTO is going to start allowing claims that are not going to hold up in litigation, my clients will be worse off.

    1. 3.1

      That absolutely IS a practical application.

      A rather broad practical application, but a practical application nonetheless.

      As to whether or not these would pass the Guidelines AND still hold up in court, well, I do believe that I was the very first in the blogosphere that pointed out that such passing of the Guidelines was NO guarantee as to anything in the courts.

    2. 3.2

      “Does anybody think that these claims are eligible under the new USPTO Guidelines? I feel like converting sensor data into machine-independent formats to enable programmatic action on the shared data could be considered a practical application.”

      I don’t know. But I am certain that there are examiners who presently would not issue a 101 rejection for these claims, but prior to the new guidlines would have issued a 101 rejection.

      “This is what scares me about the new guidelines, though: if the USPTO is going to start allowing claims that are not going to hold up in litigation, my clients will be worse off.”

      You shame yourself doubting Father Iancu. He will bring consistency and high valuations to all patents if we just believe enough.

      1. 3.2.1

        But I am certain that there are examiners who presently would not issue a 101 rejection for these claims, but prior to the new guidlines would have issued a 101 rejection.

        By “are examiners” certainly you mean “every examiner.” There are so many “outs” for eligibility now and such a desire by the administration to get us out of the 101 business that you could simply ignore the 101 question altogether. You likely wouldn’t get an error, and if you did it’s so easily defensible based upon “practical application” and “technical solution” and “inability to prove conventionality using two references that contain all of the non-abstract limitation together” (none of which are actually applied in the way that the law applies them) that no error would stick if you fought it.

        Take the instant claimset. There’s no particular described translation, which means this 101 can’t be solved – this disclosure is legally stillborn. Why waste time arguing over an issue that the applicant is likely powerless to fix and won’t accept your conclusion on anyway when the office won’t give you an error for dropping it and may give you an error for continuing to argue it? (PS – The exact same logic applies to 112a WD and enablement rejections, which also should be made but would only result in a possible error if it were) You don’t work for the district court or the federal circuit, you work for the office and (though I’m not a big believer in this) the applicant. If they want to ignore the fact that the courts are superior and want to create a legal fiction you mind as well let them.

        Our function is not to generate what *we* believe is the highest quality allowances, our function is to generate what the office believes is the highest quality allowances.

        1. 3.2.1.1

          Your function is to examine under the actual law (the law written by Congress).

          Do you need a pincite for that?

          1. 3.2.1.1.1

            Your function is to examine under the actual law (the law written by Congress).

            You’d think so, wouldn’t you?

            I didn’t hear you complaining when the January guidance eliminated most of the abstraction buckets despite court cases specifically following them. I do not joke when I say that the guidance (and you can easily check this) would not allow us to make an eligibility rejection based on Electric Power Group, which is the exact reasoning for this case.

            If the office doesn’t reject based on electric power group and the courts do, you’re going to get invalid claims becoming patents.

            I didn’t write the guidance. I won’t be the one who would cite the guidance in response to a rejection. And I won’t be the quality person saying to get rid of a rejection.

            So whether you get an examination under the actual law actually has very little with what I would do.

            1. 3.2.1.1.1.1

              didn’t hear you complaining when the January guidance

              I was among the first to point out the flaws of that guidance.

              You have selective memory – and an affirmation bias that you constantly feed.

              Electric Power Group is one of the Common Law law writings that is in direct contradiction with other Common Law law writings. It is a decision VASTLY overused to disregard the law as written by Congress.

              So whether you get an examination under the actual law actually has very little with what I would do.

              That cuts AGAINST your many errant views that you share on this blog.

        2. 3.2.1.2

          “By “are examiners” certainly you mean “every examiner.””

          Nope. I think a significant percentage of examiners (at least in 3600) would presently issue a 101 rejection for these claims. That may not be true in the coming months depending on how agressive Dear Leader Iancu’s reeducation of our SPEs is.

          1. 3.2.1.2.1

            Nope. I think a significant percentage of examiners (at least in 3600) would presently issue a 101 rejection for these claims.

            You have a lot of 3600 examiners writing Electric Power Group-based rejections?

            1. 3.2.1.2.1.1

              No. But I think at least a quarter or so would find some way to rationalize an eligibility rejection of this result-defined dreck for themselves.

              Also, you should highlight the inconsistency between Electric Power Group and the Iancu guidance sometime in a top level post.

              1. 3.2.1.2.1.1.1

                Director Iancu ALREADY emphasized the inconsistency of the Common Law law writing, Ben.

                As have many others, including myself, for years now.

                Wake up son and see the bigger picture: the score board is broken (and broken by the Supremes).

    3. 3.3

      The claim is eligible under even the old guidelines because it addresses a problem of computers created by computers (incompatible machine depended information formats).

      I mean, I forget the exact wording of the court, but I’m sure there was an explanation of eligibility along those lines…. maybe it was in Enfish.

      1. 3.3.1

        The claim is eligible under even the old guidelines because it addresses a problem of computers created by computers (incompatible machine depended information formats).

        The claim is not a technical solution to a technical problem occurring only in computers (you’re thinking of DDR) because neither the claims nor the spec contain a technical solution to the problem.

        All computer-based inventions could be framed in terms of a technical problem. For example, Alice could be framed as prior to the patent’s disclosure the computers could not handle this type of economic calculation before, and thus there is a technical problem. But Alice, like this case, taught no technical solution, which makes it clear there was no technical problem in the first place.

        Your argument would apply if the specification taught a particular propriety to machine independent conversion and argued that that conversion was new and beyond the skill of one of the art to achieve on their own, and then the claim was limited to that conversion. Now there’s a technical problem (the first format to second format conversion) and a technical solution (the newly disclosed steps that make up the conversion). I’m still not sure it would be eligible, but that would at least bring the claims under DDR logic.

        1. 3.3.1.1

          You are doing that “super-Jepson” thing again, Random…

    4. 3.4

      As a patent prosecutor, I’m happy to see the loosening up of the eligibility requirements. This is what scares me about the new guidelines, though: if the USPTO is going to start allowing claims that are not going to hold up in litigation, my clients will be worse off.

      Prosecutor – PTO stop giving 101 rejections, you’re not lawyers.

      PTO – Okay no more 101s.

      Prosecutor – PTO stop allowing claims that won’t hold up in court.

      Of course this claim would have passed the new guidance. That is the point of the new guidance. Not only would you be able to win on a practical application argument, you wouldn’t even have to make it, as the claim does not fit any of the new “buckets” of abstraction guidance. It isn’t a mental step because it uses computer-defined formats, which would disqualify it under the guidance. It is not math. It is not a method of organizing human activity. It’s eligible under the first step.

      I feel like converting sensor data into machine-independent formats to enable programmatic action on the shared data could be considered a practical application.

      Because any format could be proprietary and any format could be machine-independent depending on which formats the system is capable of using, the claim is literally “change the form of data in any manner whatsoever.” Information is an intangible. You simply cannot get more abstract than this. You’re confusing “practical application” with “utility,” which is, of course, the point. If you torture the phrase “practical application” it becomes synonymous with “utility” and everything has utility, which is why the guidance is written the way it is.

      A practical application would be particular steps that transform a .lol file (propriety data format I just made up) to a .html format and then using the .html formatted data in a way that data formatted in .lol could not be used, not just a statement that some vague sort of format conversion occurs. I still don’t think that would be eligible, but at least it would be a practical application under the actual judicial meaning of that term.

      Beyond that, reformatting data, as a function, is abstract. Moreover if it wasn’t already known to the art, it would be undescribed and unenabled, as the specification does not teach how to transform the data, so at best it is conventional functionality.

      tl; dr – Of course the courts would find this abstract under EPG or Digitech logic, and of course the office would find this eligible, as it no longer follows EPG or Digitech. This is what you guys wanted.

      1. 3.4.1

        Your “dichotomy” is erased based on my comment at post 3.2.1.1.

        Of course, the REAL problem is that the score board is broken. But push come to shove, that is simply beyond anything that you can do, Random.

      2. 3.4.2

        “Prosecutor – PTO stop allowing claims that won’t hold up in court.”

        I can’t laugh at the joke here because any prosecutor who voices concerns over Iancu’s guidance is infinitely better than all the prosecuters who are quietly enjoying how it just became a little easier to separate fools from their money.

      3. 3.4.3

        It isn’t a mental step because it uses computer-defined formats, which would disqualify it under the guidance.

        Not so… From the Jan. 9 abstract idea examples:
        This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind.
        The claim recites “converting [the] data from a machine specific format into a machine independent format within a [remote] device”, and the “within a remote device” is a generic computer component. The remainder of the step is “converting data from one form into another,” and that can be performed mentally. Similar analysis for the other steps in the claim – receiving data from a generic computer component, performing a programmatic step, and displaying data on a generic computer component. The entire claim can be performed mentally, except for the token recitation of various devices that don’t change the mental functionality of the claim.

        As for a practical application, while the specification may suggest that the computer implementation provides a benefit, as the Court noted, the claim doesn’t include any limitations as to how the benefit is achieved. Step 2A/prong 2 requires that the claim includes limitations that integrate the abstract idea into a practical application, not just that there’s some practical reason to use the invention generally. There are no limitations in this claim beyond the mental steps and the “within a remote computer system” and “from a bedside machine”, and so, no claim limitations that integrate those mental steps into a practical application.

        As an aside, given that the specification admits that the process was previously done manually, it could easily have been rejected as obvious over applicant admitted prior art. Unlike McRO, for example, the present claim doesn’t recite any steps that weren’t previously performed manually:
        receive blood pressure data from a bedside machine (like a sphygmomanometer),
        write it into the patient’s chart in a standardized format (say, systolic over diastolic),
        give the patient blood pressure meds (performing a programmatic action involving the data), and
        write the results (in the form of new blood pressure data) into the patient’s chart (presenting the results of the action in a bedside GUI).
        The addition of using a remote computer system for standardizing the blood pressure reading may mean it’s novel, but with claims that broad, it’s surely obvious.

        1. 3.4.3.1

          Excellent points.

          someone here at least can still do some critical thinking.

        2. 3.4.3.2

          That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind.

          That’s not the standard, the standard is whether the concept was performed in the human mind – such as an observation or an opinion. It’s true that when an observation is performed by a processor it is still ineligible under the guidance, but the question is not “can this act be performed in the mind” but “does the mind perform this act.” A human does not convert computer formats from one to another. I agree it could, but that’s not the standard.

          I assume you’re referring to example Claim 3. Claim 3 is an observation (determining an amount of time).

          The remainder of the step is “converting data from one form into another,” and that can be performed mentally.

          No, the remainder of the step is “converting [the] data from a machine specific format into a machine independent format.” I agree that electric power group states that what the data represents isn’t relevant, and that digitech seems to expressly consider data format conversion (adding two fields together and storing them) but those cases no longer apply. The question isn’t whether converting data can be performed mentally, but when converting a machine specific format data to a machine independent format data is a concept that is performed in the mind.

          Similar analysis for the other steps in the claim – receiving data from a generic computer component, performing a programmatic step, and displaying data on a generic computer component.

          The next step asks if the claim is a practical application, and as I’ve stated above, under the office standard (not the legal standard) it is a practical application.

          But let’s not take my word for it. You’ve referred to the guidance and I’ve just been holding this one back for a second in the hopes that someone would do just as you did –

          Go take a look at Example 42. Example 42 contains the limitations

          b) providing remote access to users over a network so any one of the users can update
          the information about the patient’s condition in the collection of medical records in real time
          through a graphical user interface, wherein the one of the users provides the updated
          information in a non-standardized format dependent on the hardware and software
          platform used by the one of the users;
          c) converting, by a content server, the non-standardized updated information into the
          standardized format,
          d) storing the standardized updated information about the patient’s condition in the
          collection of medical records in the standardized format;

          And guess what logic Example 42 contains?

          The claim as a whole integrates the method of
          organizing human activity into a practical application.
          Specifically, the additional elements recite a specific
          improvement over prior art systems by allowing remote
          users to share information in real time in a standardized
          format regardless of the format in which the information was
          input by the user.

          Bravo, Office. Bravo. (Golfclap) Literally proving my argument that the office doesn’t decide 101 correctly, the office comes to the exact wrong conclusion on the exact same subject mattter within what? six weeks of a court.

          Unlike McRO, for example, the present claim doesn’t recite any steps that weren’t previously performed manually:

          Ah but they weren’t previously performed by a computer, and anon is going to smack you with an anthropomorphication argument here. (Even though I agree with your logic).

          But this case almost certainly wasn’t given to a bio examiner, it was given to a computer examiner, which means they didn’t know how to search what we all know to be the case.

          Excellent points.

          someone here at least can still do some critical thinking.

          Oh, I was wrong.

          1. 3.4.3.2.1

            “That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind.”

            That’s not the standard, the standard is whether the concept was performed in the human mind – such as an observation or an opinion. It’s true that when an observation is performed by a processor it is still ineligible under the guidance, but the question is not “can this act be performed in the mind” but “does the mind perform this act.” A human does not convert computer formats from one to another. I agree it could, but that’s not the standard.

            For one, that is the standard, according to the USPTO – that was a direct quote from their eligibility analysis. We can disagree about whether that’s the proper standard, but that is at least the standard that Examiners are being instructed to apply.

            And for two, while I’m not necessarily sure I entirely agree with the standard, I do disagree with your formulation. Specifically, eligibility is not a question of “has a human mind previously performed this act”, because that confuses 101 and 102. I believe 101 is more based in a policy argument about what acts should be patentable, and that the courts believe that that does not include acts that can be purely performed in the human mind.
            Specifically, say I was to patent a method comprising: “considering a visual representation of a number having at least six significant figures; and imagining the number having a visual representation colored with an alternating mixture of zebra stripes and clownfish stripes.” That’s surely novel and non-obvious, as no one has ever remotely approached that idea. And yet, simply by describing it, you have imagined such a visual representation and infringe my patent. If I described that in a specification, simply by reading the specification and considering it for a moment, you’ve infringed it. Lest you think this example is crazy, if you read the patent application at issue in Mayo, you infringed it – someone administered a drug, you read the clinical data provided in the examples of the application, and you now have determined whether to increase or decrease the administration of the drug for that example patient.
            SCOTUS was trying to avoid that specific result, in their usual hamfisted way.

            And as to whether that is the standard – rather than whether you or I would like it to be the standard – that comes directly from Cybersource v. Retail Decisions: “the Supreme Court appeared to endorse the view that methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas…”

            Continuing:
            I assume you’re referring to example Claim 3. Claim 3 is an observation (determining an amount of time).

            Not sure what you’re referring to – Example Claim 3 is directed to digital image processing. I’m referring to the USPTO provided example claims at: link to uspto.gov

            The remainder of the step is “converting data from one form into another,” and that can be performed mentally.

            No, the remainder of the step is “converting [the] data from a machine specific format into a machine independent format.” I agree that electric power group states that what the data represents isn’t relevant, and that digitech seems to expressly consider data format conversion (adding two fields together and storing them) but those cases no longer apply. The question isn’t whether converting data can be performed mentally, but when converting a machine specific format data to a machine independent format data is a concept that is performed in the mind.

            And regardless of what I’ve discussed above, it is. For example, if I tell you that computers use binary code such that the binary number 10 is equivalent to the decimal number 2, you have just “converted a machine specific format into a machine independent format.” If the applicant wanted to claim conversion from reverse-Polish notation PASCAL to BCD-encoded hashed assembly, then were certainly able to… but they claimed merely “converting from a machine specific format” such as binary “into a machine independent format” such as decimal. They’ve claimed a mental process that has no specific relationship to computers.

            “Similar analysis for the other steps in the claim – receiving data from a generic computer component, performing a programmatic step, and displaying data on a generic computer component.”

            The next step asks if the claim is a practical application, and as I’ve stated above, under the office standard (not the legal standard) it is a practical application.

            You’re confusing the requirement that the claim contains limitations that tie the abstract idea to a practical application, with the idea that the claim have a practical application. Specifically, you’re confusing prong 2 with the old “does the claim have a specific utility” requirement.
            All of the claims at issue have a specific utility or practical application. That’s why someone’s willing to spend five figures (or more!) to get a patent on them. But the eligibility test goes farther. It doesn’t merely ask “does this claim have a practical application”, but “is the practical application integrated in the claim limitations?”
            If I claimed “a method for traveling through time comprising traveling through time”, that clearly has a practical application: why, I could make billions gambling on future sporting events. But I haven’t claimed anything more than the abstract idea of traveling through time, and my claim doesn’t recite any details that implement that idea. There’s no practical application of the abstract idea in my claim. Hence, despite being clearly novel and non-obvious, it’s ineligible (112 issues notwithstanding).

            But let’s not take my word for it. You’ve referred to the guidance and I’ve just been holding this one back for a second in the hopes that someone would do just as you did –
            Go take a look at Example 42. Example 42 contains the limitations
            b) providing remote access to users over a network so any one of the users can update
            the information about the patient’s condition in the collection of medical records in real time
            through a graphical user interface, wherein the one of the users provides the updated
            information in a non-standardized format dependent on the hardware and software
            platform used by the one of the users;
            c) converting, by a content server, the non-standardized updated information into the
            standardized format,
            d) storing the standardized updated information about the patient’s condition in the
            collection of medical records in the standardized format;

            And guess what logic Example 42 contains?

            The claim as a whole integrates the method of
            organizing human activity into a practical application.
            Specifically, the additional elements recite a specific
            improvement over prior art systems by allowing remote
            users to share information in real time in a standardized
            format regardless of the format in which the information was
            input by the user.

            I was hoping someone would bring this up because I’ve been mulling over it since the decision (and it’s the subject of an article I’m publishing shortly).

            Yes, on the surface, it seems inconsistent. Both 42 and the UFRF claim are directed to medical record solutions, and both claim converting data from a non-standard format into a standard format.
            And yes, the USPTO’s guidance appears to be inconsistent with the Federal Circuit’s decision. One could argue that the Example claim includes additional features that promulgate the updates “in real time”, which the USPTO explicitly identifies as the feature that provides a practical application.

            Would the Federal Circuit be persuaded?
            Personally, I don’t think so. But I think that’s a failing with the USPTO’s overly optimistic guidelines, rather than a failing with the test.

            “Unlike McRO, for example, the present claim doesn’t recite any steps that weren’t previously performed manually:”

            Ah but they weren’t previously performed by a computer, and anon is going to smack you with an anthropomorphication argument here. (Even though I agree with your logic).

            But this case almost certainly wasn’t given to a bio examiner, it was given to a computer examiner, which means they didn’t know how to search what we all know to be the case.

            On the other hand, a bio examiner says “change an atom, and the resulting chemical has unpredictable results, so therefore can never be obvious.”
            … they’re not wrong, mind you, but it sure cuts into the heart of bio litigators who say “change an atom, and it’s still fundamentally the same chemical and so therefore infringes our patent.” ;)

            1. 3.4.3.2.1.1

              Random is just venting because his views are not being allowed to run rampant – most likely, directly on the job.

            2. 3.4.3.2.1.2

              …and you might want to note that I was the very first in the blogosphere to point out that the new protocols are deficient in that while first recognizing that the Common Law law writing about 101 has produced outright contradictions, the protocols went ahead and attempted to fold in all of the contradictory cases.

              It really does not help all that much that Iancu tried to be clever and put the protocol in layers.

            3. 3.4.3.2.1.3

              “I believe 101 is more based in a policy argument about what acts should be patentable, and that the courts believe that that does not include acts that can be purely performed in the human mind.”

              Factually untrue, even according to the USSC themselves. According to them, they were ever thus excepted from patent eligibility (either from the English lawl that preceeded the patent lawls and/or impliedly from all the patent acts themselves before or since) and the congress never has changed that and has never expressed any intention to change that.

              1. 3.4.3.2.1.3.1

                “…acts that can be purely performed in the human mind.” (emphasis added)

                Factually untrue, even according to the USSC themselves.

                cite please.

        3. 3.4.3.3

          My last comment is caught in the filter and hopefully will break free soon, but maybe check Example 42 before you critically think the guidance supports you.

    5. 3.5

      It’s nice because it keeps down costs for applicants, but it’s always been the prosecutor’s responsibility to independently evaluate validity. The 101 issue just puts it in relief. It’s a shame that dependent claims get no respect in the courts, because that’s one way to cope with an uncertain legal line.

      Another thing to consider is that 101 law could very well change quickly. Which raises a side question: if a patent is held invalid by an IPR or court, and 101 law changes, is that patent still good?

      While diverging, why not run with it … I took a jurisprudence class in law school and a theme of the class was whether judges decide cases intuitively and then work the reasoning to fit the outcome they want, or whether judges are actually objective (it’s a mix of both, but in what proportions)? Having read opinions for 20 years now, I feel more and more that the biased approach is much more common than the optimistic law student would expect.

  6. 2

    [T]he particular key features of the system are defined in functional terms. Thus, in addition to being directed to an abstract idea, the claims also fail Alice step two as merely reciting ‘well-understood, routine, conventional activit[ies]’…

    Functional language at the point of novelty does the patentee no great favors. That is how it is, and how it must be for a sound-functioning patent system.

    Maybe the inventors really had an invention here. The description in the case (“the ’251 patent proposes replacing the ‘pen and paper methodologies’ with
    ‘data synthesis technology’ in the form of ‘device drivers written for the various bedside machines’ that allow the bedside device to present data from the various bedside machines ‘in a configurable fashion within a single interface,'” slip op. at 8) certainly sounds like a technological advance for this particular industry. Unfortunately, the patentee got greedy (or else, the prep-&-pros attorney got lazy), and tried to claim all methods of achieving the desired end, rather than limiting themselves to the means that the inventors had actually invented.

    That should not be a §101 failing. It should be a §112(a) failing. Still and all, the claims deserve to fail.

    1. 2.1

      The use of pen and paper would also be an “advance” over data management without those tools, but not an eligible one.

    2. 2.2

      “That should not be a §101 failing. It should be a §112(a) failing. Still and all, the claims deserve to fail.”

      Speaking of which, the Computer-Implemented-Functional-Claim-Limitation-Compliance-with-112 training announced with the new eligibility guidelines was released awhile ago. If anyone was hoping that some improvement in 112 enforcement might come under Iancu’s watch, you should probably quit. Not only is the training just a refresher restating existing policy from MPEP, Iancu couldn’t be bothered to budget funds for instructor lead training. Instead we got a droning CBT (computer based training) that’ll immediately be forgotten. With this, Iancu has demonstrated that he’s fine with existing 112 enforcement.

      1. 2.2.1

        Ah, pity.

      2. 2.2.2

        improvement in 112 enforcement might come under Iancu’s watch, you should probably quit.

        That IS disappointing (and this comment is snark free).

      3. 2.2.3

        With this, Iancu has demonstrated that he’s fine with existing 112 enforcement.

        Which itself would be fine if all he did was instruct the quality people not to stand in the way of the already-existing language, but the lack of knowledge in 112 is so pervasive that you’re likely to get an error for actually applying the refresher.

    3. 2.3

      The description in the case (“the ’251 patent proposes replacing the ‘pen and paper methodologies’ with ‘data synthesis technology’ in the form of ‘device drivers written for the various bedside machines’ that allow the bedside device to present data from the various bedside machines ‘in a configurable fashion within a single interface,’” slip op. at 8) certainly sounds like a technological advance for this particular industry.

      That’s just a statement that you would like a result to occur without any disclosure as to how to do it. Either the ability to translate something into a format is known (i.e. people can convert english to spanish) in which case there is no advancement at all, or the ability to translate is not known (i.e. people could not understand heiroglyphics before the rosetta stone) and a command to translate is just an unenabled wish.

      I agree that a particular translation that was not previously enabled could be eligible and patentable if the claim was drawn to that particular translation, (i.e. if you found the rosetta stone a claim to greek-hieroglyphic translation is probably eligible and patentable) but the act of non-means-limited translation is by definition abstract, because it covers the shifting of all structures of one type to all structures of another type, which by definition cannot be a concrete change.

      Unfortunately, the patentee got greedy (or else, the prep-&-pros attorney got lazy), and tried to claim all methods of achieving the desired end, rather than limiting themselves to the means that the inventors had actually invented.

      That should not be a §101 failing. It should be a §112(a) failing. Still and all, the claims deserve to fail.

      Virtually everything that starts with InputA and ends up with OutputC without claiming ParticularMeansForTransformationB is a 101 issue in addition to a 112a issue. (And I only say virtually because I can’t purport to know all situations, I know of no situation where A->C skipping a claim to B is eligible).

      It’s quite the assumption to assume the patentees invented anything, as they did not disclose any particular means. The most accurate way to look at it is that applicants had an idea, but ideas aren’t patentable, and they never bothered to follow up on it to try and become inventors.

      1. 2.3.1

        because it covers the shifting of all structures of one type to all structures of another type, which by definition cannot be a concrete change.

        You have an odd sense of providing for a shift in structure not being concrete… by “definition” no less.

        Of course, you are talking out your arse here, and your LONG whining posts indicate that you have recently been smacked down somewhat hard on one of your “favorite” arguments, and likely will be seeing “quality deductions” if you wander off the path like that again…

        As they say: su cks to be you.

      2. 2.3.2

        It’s quite the assumption to assume the patentees invented anything, as they did not disclose any particular means.

        This is a very fair point.

        1. 2.3.2.1

          It’s quite the assumption to assume the patentees invented anything, as they did not disclose any particular means.

          This is a very fair point.

          This. It sounds as if this patent application and claim set could have been drafted in response to someone saying, “gosh, wouldn’t it be nice if there was a system that could take all of these different monitor outputs and put it into a single, easily readable interface?” Identifying a problem isn’t the invention but merely the request to create an invention, but far too many patents stop there and try to claim a solution without ever identifying how to achieve it.

          1. 2.3.2.1.1

            In my experience, the words “wouldn’t it be nice if…” only in appear in two contexts.

            The first ends “we were older” and you’re listening to a Beach Boys song.

            The second ends with a statement of utility, and its an accurate summary of 95% of computer implemented patent disclosures.

            1. 2.3.2.1.1.1

              The second ends with a statement of utility, and its an accurate summary of 95% of computer implemented patent disclosures.

              I’d agree. But I’m happy to be in the 5% that turns back to the inventor and says, “yes, that’s great, but how do you do it?” ;)

              1. 2.3.2.1.1.1.1

                Are you confusing enablement and eligibility…?

                1. Are you confusing enablement and eligibility…?

                  No. It’d be closer if you suggested I was confusing the written description requirement and eligibility, and in truth, the two are somewhat linked: the former is about describing an invention, and the latter is about claiming the invention. Describing only a problem to be solved or just claiming that it is solved without either including implementation details leads to both a lack of written description and ineligible claims.

                2. I do not think that your answer here is accurate (you moved the fence posts a bit AND still manage to conflate 35 USC 112 (both before and after the fence post move) with 35 USC 101.

                  (The fence post move was from your comment of “how” which IS an enablement issue to you later different discussion that you want to pin to written description)

                  As it is — either way — you still are very much conflating two different sections of law.

                3. (The fence post move was from your comment of “how” which IS an enablement issue to you later different discussion that you want to pin to written description)

                  It’s also a written description problem. If I have a claim that recites a method for time travel, comprising traveling through time, and I have a specification which describes all the wonderful things I can do once I’ve traveled through time, I’ve nonetheless failed to show that I actually had possession of the invention, since I haven’t provided any support for how it’s done. Similarly, it’s ineligible under 101 because I’m merely claiming the solution – travel through time – but not an implementation. It also lacks enablement, because if I don’t possess the invention, then there’s surely no way that I’ve enabled others to do it.

                  As it is — either way — you still are very much conflating two different sections of law.

                  Not conflating – they’re absolutely distinct, but they’re related. 101 requires that you claim an invention, 112 requires that you show you possess that invention. If you never actually had the invention, just recognized a problem to be solved (by someone else), then you can satisfy neither 101 nor 112.

                4. Sorry Abstract iDan – but you ARE conflating here.

                  Yes, both need to be met, and absent meeting 112, you may also not be able to meet 101 – but the discussion here is attempting to move from the opposite direction (with a focus first on eligibility).

                  The conflation is attempting to USE 112 as a proxy for 101 – but in and of itself, discussing 101 simply IS a separate legal discussion than discussing whether or not 112 has been met.

                  In other words, while one CAN discuss a missing aspect of 112 as ALSO being something that may (or may not) be a missing aspect of 101, it is simply legal error to attempt to CONFLATE a discussion of legibility into a focus purely of 112 aspects.

                  The fact of the matter that YOU may be able to contemplate each of the separate laws in your own mind and (to yourself) not view the items as being conflated, does NOT mean that others following your discussion points are so capable. Quite in fact, the person engaged here (Random) has repeatedly shown an INABILITY to not conflate these concepts — and worse, he gets each concept independently WRONG.

                  Your very attempt to pursue a conversation based on “related” is the epitome of conflating.

                  You have — in essence — made my case for me.

  7. 1

    Show of hands: how many of you thought that sovereign immunity protected a state university that asserts its patent in court from finding its claims invalidated under §101?

    None of you? Good, you are all more clever than the appellant’s attorney in this case, who wasted the majority of his brief and of his oral argument time flogging this dog of an argument.

    1. 1.1

      When you have the facts, argue the facts. When you have the law, argue the law. When you have neither the facts nor the law, pound the table.

      1. 1.1.1

        Plenty of law and facts have been put on the table – not sure just who you think is pounding the table, Random….

        (and before you sputter your reply, note that I have disagreed with Prof. Hricik’s view on this matter)

      2. 1.1.2

        When you have neither the facts nor the law, pound the table.

        To my mind, the better choice in this case would have been, “when you have neither the facts nor the law, do not waste the resources on an appeal.”

        Unless they mean to use this case as a vehicle for an en banc challenge to Dealertrack. If so, they have a deal more resources to spend yet, and (much as I agree with the logic of the argument for such an en banc reversal of Dealertrack), scant hope of victory.

        Even if such en banc review were their goal, however, then the appeal strategy was a very ham-handed job. People should listen to the oral argument. It was clear that the appellant had chosen to use this case as a means to argue for an understanding of sovereign immunity that goes at least ten miles beyond any previous understanding of how much immunity a sovereign possesses. The argument advanced here was an entirely foreseeable failure, and it failed as thoroughly as one might have expected.

    2. 1.2

      I think he just recycled his arguments from St. Regis but I’m not sure, because both cases were such obvious losers I did not bother to read either.

      1. 1.2.1

        While I like the moniker, saying that you have not even bothered to read something and then calling that something “loser” only points out that the loser is you.

        You exemplify the distinction between having an opinion and having an informed opinion.

        It is always better to be informed. Especially if you are going to venture forth and make a public statement.

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