When Factual Allegations Masquerade as “Conclusory Legal Assertions”

by Dennis Crouch

Glasswall Solutions Limited, et al. v. Clearswift Ltd., No. 18-1448 (Supreme Court 2019)

The eligibility challenges continue to be petitioned to the Supreme Court.

Glasswall’s two patents are are directed to methods and devices for regenerating electronic files in a way that cuts-out non-conforming data. The approach here could be used as a virus filter, for example.  U.S. Patent Nos. 8,869,283 and 9,516,045.

Glasswall sued Clearswift for infringement back in 2016. However, that case was quickly dismissed on the complaint — with the district court holding that all of the patented claims were invalid as a matter of law (ineligible abstract ideas). On appeal, the Federal Circuit affirmed.  As is the standard approach with eligibility cases, both the district and appellate court considered the claims at issue and compared them with the claims adjudicated in prior cases. Here, the courts concluded that Glasswall’s claims are more-like prior invalidated claims.

The new petition for certiorari asks two questions that focus on procedure — essentially asking whether a patentee can structure its pleading to ensure that eligibility is not decided just on the complaint.  An important element of Glasswall’s argument here is that its complaint alleged that its patented invention particularly improved computer processing capability by “eliminating code or data that may perform unwanted operations on the user’s computer without the need to consult or update virus definition files.”

Questions presented:

  1. Where a threshold patent-eligibility determination under 35 U.S.C. § 101 is presented in a Rule 12(b)(6) motion to dismiss for failure to state a claim upon which relief may be granted, under what circumstances can assertions of fact pleaded by a patent owner, and statements of fact recited in a patent specification, be deemed “conclusory legal assertions” a court is “not bound to accept as true,” pursuant to Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)?
  2. Where a patent infringement complaint asserts as fact that the invention claimed improves computer function by eliminating a then-conventional method, does the Federal Circuit’s determination that the improvement is also conventional present a question of fact that underlies the legal question of patent-eligibility.

Read the Petition.

If the court took this case, it would end-up being an important civil procedure decision — adding substantial thought onto Iqbal and Twombly.

The Relationship between Eligibility and Functional Claiming

 

17 thoughts on “When Factual Allegations Masquerade as “Conclusory Legal Assertions”

  1. 3

    Off topic, but this thread is related to §101, so I will mention that I see that Sen. Tillis’ office has posted a draft revision to §§ 101 & 112. A few thoughts:

    (1) I really like the revision to §112. Most of the troubles that the courts try to resolve presently with §101 are really related to “functional” claiming, and would be much better solved by tweaks to §112(f) than by §§ 100 or 101 tweaks. In particular, I think that the idea of doing away with “means” language, and simply saying that functional language will—in all events—be construed in view of the spec disclosure is a nice, clean, straightforward solution to the present problems associated with functional claiming.

    Naturally, this should only apply prospectively (it is not fair to people whose specs were drafted before the rule was implemented). As a rule for future application, however, this is a great solution. Everyone will know what they need to do in order to get the correct claim construction, and will draft accordingly.

    (2) I think that it is a mistake to take out “new” from §101, or at least to take it out as they have done. Under the present §101, the “new” stops one from claiming natural products. If we remove “new,” then presumably natural products become potentially patentable.

    That would be problematic. Imagine that I discover a hitherto unknown brain protein. Your brain is producing and using the protein before I apply for my patent, and your brain continues to produce and use the protein after I obtain my patent. However, all of a sudden, you are now an infringer—despite the fact that you are doing nothing more than you had been doing before my patent. This cannot be how we mean for the patent laws to work.

    I suppose that one can answer my objection by saying that the brain protein is in public use, and therefore the claim fails under §102 instead of §101. If so, then my hypo poses no concern, but I would like to see some assurance that we all agree that this is how the “public use” bar of §102 functions—i.e. that we all agree that a “use” that no one intended, that no one perceived, that occurred entirely in a confined space (human skulls) to which “the public” has no access, and that no one recognized to be happening still qualifies as a “use in public.”

    1. 3.1

      Greg: simply saying that functional language will—in all events—be construed in view of the spec disclosure is a nice, clean, straightforward solution to the present problems associated with functional claiming.

      Wrong. In fact, it worsens one of the big problems with functional claiming which is that it makes it difficult or impossible to understand what the invention is based on a reading of the claims.

      Everyone will know what they need to do in order to get the correct claim construction, and will draft accordingly.

      Which is to say that claim drafting will become way worse than it is now and playing the game of hiding the invention by burying various descriptions of the “means” throughout the specification will become the norm.

      all of a sudden, you are now an infringer—despite the fact that you are doing nothing more than you had been doing before my patent. This cannot be how we mean for the patent laws to work.

      Why not, Greg? Based on many other comments you’ve made here, you apparently believe that it’s okay to claim a method of thinking about a correlation as long as the method recites some prior art context for gathering data. That means that I can be doing the exact thing (gathering data) before I read “your patent” that I was doing after I read “your patent.” Except for the thinking of course. And yet you’ve never just come out and stated that you support patents on “new” methods of thinking. And we all know why …

    2. 3.2

      “I think that the idea of doing away with “means” language, and simply saying that functional language will—in all events—be construed in view of the spec disclosure is a nice, clean, straightforward solution to the present problems associated with functional claiming.”

      It’s unclear whether you understand the draft revision as implementing this approach. I don’t see it achieving that.

      People will continue to claim “processor configured to (function)”, and that generic processor will be a recital of “structure … in support thereof”.

      1. 3.2.1

        Ben, I am not following you.
        The claims you are referring to are interpreted as a processor programmed to execute the algorithm disclosed in the application that provides the “function.” What is wrong with claiming a machine that includes such processor?
        Do you mean that 112(f) should be further amended to state that a processor configured to should be interpreted as a processor programmed to perform the acts disclosed in the specification?

        1. 3.2.1.1

          “The claims you are referring to are interpreted as a processor programmed to execute the algorithm disclosed in the application that provides the ‘function.'”

          My understanding is that such claims (“processor configured to (function)”) do not invoke 112f, and thus are not limited to the disclosed algorithm for achieving the function, but instead capture any processor achieving that function.

          OPLA appears to have carefully avoided opining directly on the subject, and in the absence of any authority’s guidance I think the “aesthetic correction circuitry” case (MPEP2181) makes it clear that “processor configured to (function)” does not invoke 112f.

          I’d love to be wrong, so I’d welcome any argument to the contrary.

          I wasn’t trying to say how things should be. I was just trying to understand what Greg was saying. Greg seemed to be saying 1) this draft is good, and 2) we should evaluate functional limiations in a particular way. I was only trying to establish whether Greg interpreted the draft as instituting that way of evaluating functional limitations, as I do not see it in the draft.

          1. 3.2.1.1.1

            You ask a worthy question, Ben. I will try to give it a real answer tomorrow (on the other thread).

          2. 3.2.1.1.2

            Ben,

            Did you see an answer from Greg?

    3. 3.3

      Greg, I think senator Tillis thought that “through human intervention” in the definition of useful would be enough to exclude natural products, and did not think about the natural product created by the human body.

    4. 3.4

      Agree that there there seems to be no good reason, and a serious political threat to any draft 101 legislation success, by entirely removing “new” from 101.

      1. 3.4.1

        there seems to be no good reason, and a serious political threat to any draft 101 legislation success, by entirely removing “new” from 101.

        Paul, you need to understand we are dealing with simultaneously the most desperate, entitled and greedy people who ever walked the planet.

        They literally do not know what the f – ck they are talking about. They evaluate the soundness of their proposals based on the reaction they get from the “enemy.” And they rely on folks like Dennis to carry their water for them. Dennis, please ask me to explain to you what I mean by this if for some strange incomprehensible reason you don’t understand.

        1. 3.4.1.1

          Your feelings are noted.

  2. 2

    Dennis, just post the claims and stop carrying water for the owners of incredibly irredeemable junk like this:

    A method for processing an electronic file to create a substitute electronic file containing only allowable content data, the method comprising:

    Gee. Let’s imagine how this might work. We have to receive the file. And then we have to apply some logic to identify the content that isn’t “allowable” (which is an abstraction). And then we have remove the “unallowable” content to create the “substitute” file. Surely there is much more detail and structure to the claimed method, right?

    Wrong.

    the method comprising:

    receiving an electronic file containing content data encoded and arranged in accordance with a predetermined file type

    No kidding.

    determining a purported predetermined file type of the received electronic file and an associated set of rules specifying values or range of values of allowable content data

    ROTFMLAO. It’s kindergarten time, folks!

    determining at least an allowable portion of the content data that conforms with the values or range of values specfied in the set of rules corresponding to the determined purported predetermined file type;

    Good grief.

    extracting, from the electronic file, only the at least an allowable portion of content data;

    Nobody could have predicted!

    creating a substitute electronic file in the purported file type, said substitute electronic file containing only the extracted allowable content data;

    forwarding the substitute regenerated electronic file only if all of the content data from within the electronic file conforms to the values or range of values specified in the set of rules; and

    Right. If the method doesn’t work, you don’t get an improved file at the end. Deep stuff! But wait! There’s more. Get ready for the ultimate stroke of s00per genus ..

    forwarding the incoming electronic file if a portion, part or whole of the content data does not conform only when the intended recipient of the electronic file has pre-approved the predetermined file type when associated with the sender of electronic file.

    “Produce the thing that isn’t really desired if the recipient wants it anyway.”

    This is kindergarten grade logic. Applying that logic to a “computer file” is not “inventing.” It’s patent attorneys j e r king themselves off. Just stop it. Find another grift and let the patent system return to something resembling normal.

    The Supremes need to pull the plug on logic patenting, period. It’s the only way forward, and I’m sure that they know it. The era of coddling the Silly Con Valley Bros is over. Bring the curtain down, hard.

    1. 2.1

      DC: Glasswall’s two patents are are directed to methods and devices for regenerating electronic files in a way that cuts-out non-conforming data.

      Right. And I have a hundred patents directed to methods and devices for “regenerating” electronic files “in way” that [insert description of result of removing or adding some content]. I wrote them all in one afternoon and Iancu granted them because I bought him a nice dinner last time I was in DC and we both whined like babies over our king crab legs about how awful and “confusing” 101 was.

    2. 2.2

      Is that “logic parenting” of yours anything like “logic copyrighting?”

      How goes that project of your to copyright logic?

  3. 1

    ? What relevance does challenges of “assertions of fact pleaded by a patent owner, and statements of fact recited in a patent specification” have to an attempted cert from a decision holding that the subject claims were not claiming any of those asserted facts?

    1. 1.1

      The most relevant “fact” here is that the patentees and their attorneys are a bunch of b0 ttom-feeding l0w lifes. They should have been sanctioned for asserting this g@ rbage.

      1. 1.1.1

        Your feelings are noted.

        My, your feelings are all in a bother over the last several days.

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