Easy Ineligibility Decisions for the Court

by Dennis Crouch

The Federal Circuit released two non-precedential decisions today affirming lower court holdings of ineligibility.

Reese v. Spring Nextel (Fed. Cir. 2019). Mr. Reese’s patent claims a “method for sending a call waiting tone . . .” U.S. Patent No. 6,868,150. The problem for Reese is that the asserted claims are drafted in substantially functional form without reciting the particular technological solution.  The court explains:

The claims are directed to the abstract idea of receiving information (a calling phone number flagged as private) and sending an indication (an audible tone) to a party already engaged in a call. The claims do not recite any particular method of receiving the information and sending the indicating tone in response. . . . Although Reese argues that the claims require specific telephone features, merely limiting claims to a particular technological environment does not render the claims any
less abstract. . . .

[Regarding step two:] [B]y the ’150 patent’s own terms, the claims do not recite any non-conventional equipment.  Further, the claims recite functional language lacking “any requirements for how the desired result is achieved.” Elec. Power Grp. Nothing in the claims requires anything other than conventional telephone network equipment to perform the generic functions of receiving and sending information. Reciting an abstract idea and applying it on telephone network equipment is not enough for patent eligibility. Accordingly,
the claims do not contain an inventive concept.

Read Reese.

In re Greenstein (Fed. Cir. 2019) involves a “method for allocation of investment returns” when a single asset is collaboratively owned.  The key step in the invention appears to involve using a “computer to assign an investment return to the investor.”  According to the inventor, the beneficial focus of the invention is to be able to allocate risk between parties without having to actually buy or sell any additional securities.

On appeal, the Federal Circuit agreed with the USPTO that Greenstein’s claims are directed to ineligible subject matter.

[T]he claims are directed to the abstract idea of allocating returns to different investors in an investment fund, a fundamental business practice that long predates computer technology.  Claim 1 involves storing information about each investor in a database, changing the investment returns assigned to at least two of them, and using the computer to keep track of the transfers between investors in the fund. This is simply the “automation of the fundamental economic concept,” OIP
Techs., of allocating investment returns to different investors within a common investment fund. We have long held that such basic management of business information is an abstract idea. As a result, we conclude that the Board correctly held that the claims are directed to the abstract idea of allocating returns in an investment fund.

Nor do the claims recite any further inventive concept. The claims only invoke a computer as a generic tool to store information and record transactions; in times past, these activities could have been performed with pen and paper. As the PTO points out, Alice clearly held that “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”

Read Greenstein.

47 thoughts on “Easy Ineligibility Decisions for the Court

  1. 9

    Leaving out the actual language of the Greenstein claims from the article did the inventor a favor. They’re worth a read.

    I wish actual software innovators could figure out a way to seperate their claims from those like the Greenstein claims, and then trade the per se un-patentability of the Greenstein claims for an advantage for the remaining claims.

  2. 8

    Moving this up top because it’s important:

    Morse: Greenstein would have been Rule 36’ed but for it being a pro se appeal submitted on the briefs. But I have to chuckle at the Fed. Cir. saying “We have long held that such basic management of business information is an abstract idea.” Since Alice?

    State Street was the aberration and it didn’t last long before Bilski dialed the madness back in.

    1. 8.1

      Your strawman (and Bilski-FA1L Stevens losing the majority position) are noted.

      1. 8.1.1

        Bilski’s claims were tanked, 9-0.

        1. 8.1.1.1

          Stevens FAILED to kill the “Diehr-bots.”

  3. 7

    The Reese decision is a living example of why there were hearings in the Senate this week on patent reform. Alice has infected the judiciary with a disease of broken logic.

    1. 7.1

      Alice has infected the judiciary with a disease of broken logic.

      Please identify with specificity the break in the logic that you are talking about.

      1. 7.1.1

        Go read any bar journal. It’s on all the front pages!

        1. 7.1.1.1

          Malcolm is merely trying to play the Br’er Rabbit game of having you rehash what is already out there in the hopes that you misstate some tiny element.

          It’s not as if his question has not been FULLY answered many times now, or that he really does not know what the issues are.

          This type of duplicity is merely one of his rhetorical tricks.

  4. 6

    Those with a background in financial services only need read the claims in Greenstein to know that the factual predicate for this decision is not correct. Those without such a background should read the briefs prior to making conclusions concerning the merits of this case.

    1. 6.1

      Abstract to a judge on the CAFC means that they can understand the invention or think they can and using their hindsight reasoning think that they could have done it.

    2. 6.2

      Is there a particular factual predicate that you wish to identify as being dispositive?

      1. 6.2.1

        There are several one is the function of the claims was never done using pencil and paper and could never be performed using pencil and paper because each transaction depends on the accuracy of transactions proceeding it it and there are millions of transactions over the course of a month or two. Accurate evaluation is critical because the amounts a person can receive from their investment is determined based on that valuation

        1. 6.2.1.1

          Claim 1 as appealed contains no limitation as to the number of investors or transactions (other than there being more than one of each) so any argument regarding “millions” of transactions or any purported inability to perform the particular method of claim1 by pencil and paper is irrelevant to the 101 issue.

          As for a background in financial services, my MBA may be more than 40 years old but I didn’t need it to read claim 1 as written — and neither did the Fed Cir.

          As an aside, without inviting discussion and in the interest of candor I’ll readily admit my bias against so-called “business method” patents. Far too many recite only desired goals rather than identifying the means by which those goals are achieved.

          1. 6.2.1.1.1

            I’ll readily admit my bias against so-called “business method” patents. Far too many recite only desired goals rather than identifying the means by which those goals are achieved.

            Fine and good, but this should be treated as a §112 failing, not a §101 infirmity.

            1. 6.2.1.1.1.1

              this should be treated as a §112 failing, not a §101 infirmity.

              It’s both. That’s a feature of having multiple checks on junk claims, not a bug.

              There is no improvement to anything “technological” here. “Funds” is an abstraction. “Tracking funds” is also an abstraction. Using a computer doesn’t change anything. That these abstractions may be “important” to some people also changes nothing.

              1. 6.2.1.1.1.1.1

                no improvement to anything “technological” here.

                You do realize that such is not the law currently, right?

              2. 6.2.1.1.1.1.2

                Ahhhh … so very many “abstractions” there, Moonbeam.

                Then (sine you’re an obvious expert on such) it should be no problem for you to enlighten us and Dennis’ 1.000s of readers as to what your definition of “abstraction” is, right (and sorry; no; “I know it when I see it” doesn’t cut it)?

                O.K., go ahead, we’ll wait …

                Waiting …

                Waiting …

                Waiting …

                Still waiting …

                1. It is FAR less important whether or not Malcolm can provide a definition for that word and FAR more important that the Supreme Court expressly chose not to.

                  Have Malcolm explain why (with holding him to be on point and being inte11ectually honest).

                2. your definition of “abstraction”

                  Lacking objective physical structure/character.

                  That includes concepts like “information,” “correlations”, “functionality”, “money”, “risk”, “logic”. All of these are abstractions and all of them are ineligible for patenting on their own terms. The problem faced by the patent system is when a certain tiny class of people wishes to protect “innovations” in these concepts as they “exist” in prior art contexts. The only way to do that, logically, is to make it illegal to ask the question: is the novelty in this claim imparted by an otherwise ineligible concept? That’s what you are your sick little buddies are transparently trying to do, as everyone with a working brain understands (but, alas, some people — like Dennis — can’t even discuss the issue because their masters prohibit it).

                  I have to wonder, though: did someone tell you that identifying or defining an abstraction was difficult? Because it’s not. So … where on earth would you get the idea that it was difficult? Hmmm, such a mystery …

                3. It is FAR less important whether or not Malcolm can provide a definition for that word and FAR more important that the Supreme Court expressly chose not to.

                  Bwahahahahahhaahhahhah!

                  Stay away from drugs, kids.

                  LOL

                4. wishes to protect “innovations” in these concepts as they “exist” in prior art contexts.

                  LOL – are you trying for the patent law doctrine of inherency with this “prior art context” you keep blabbering about?

                  As is, your “logic” and your “in prior art context” is untethered to any cogent legal doctrine.

                  Instead of doing your exact same script, maybe (just maybe) tie your feelings into actual law.

          2. 6.2.1.1.2

            Perhaps one of the judges also had a 40-year-old MBA and believed that that gave them a background in how financial markets operate. However my statement was not theoretical I provided the claims to an attorney who currently works in the financial services area and it took him less than 10 seconds to recognize the absence of any understanding of how current financial markets function.

            1. 6.2.1.1.2.1

              financial markets

              Whoooo! It’s so complicated! Mark Greenstein must be s00per d00per smart.

              LOL

        2. 6.2.1.2

          the function of the claims was never done using pencil and paper

          Pencils and paper are just tools for facilitating mathematical operations. Calculators and computers are no different in this regard. They perform the math we tell them to perform. It’s not eligible for patenting, for the same reasons: logic and data processing are fundamental and the “right” to carry out logic on data is not something that you can “own”. Sure, some self-dealing “attorneys” disagree (but they can’t defend their views, legally, and refuse to even try in the case of know-nothings like Greg DeL) but let’s go the Supreme Court and discuss this in view of the First Amendment, mkay?

          each transaction depends on the accuracy of transactions proceeding it

          So?

          there are millions of transactions over the course of a month or two.

          Is that limitation in the claim? You seem to have been steered in the wrong direction by a cl u e le ss patent attorney. That’s too bad. Maybe you can sue your attorney. Find a better next time. Better yet, get a life and stop stinking up the patent system. Thanks.

          1. 6.2.1.2.1

            let’s go the Supreme Court and discuss this in view of the First Amendment, mkay?

            LOL

            Maybe YOU should try to actually compose a cogent FA argument first.

            Yeah, you mouth the words all the time – and you should know that such is no substitute for an actual cogent legal argument.

            1. 6.2.1.2.1.1

              cogent legal argument

              First off, go e f f yourself, you fascist pile of human waste.

              Second, absent an extremely narrowly tailored statute and a compelling reason, the First Amendment prevents the government from directly or indirectly preventing me from communicating or using facts, information or logic, or from using public domain tools to detect, store or disseminate such facts and information. The right to free communication of facts and fundamental knowledge (e.g., how to apply logic to solve a problem) is the essence of the First Amendment and without that freedom, the First Amendment is a dead letter.

              Asking for a “cite” for this is basically asking for a baseball bat to your face. Happy to provide that if you keep insisting, however.

              1. 6.2.1.2.1.1.1

                You use the term “fascist” but you appear to not understand what that term means.

                This may be due to your losing reason (again) because your emotions are running amuck (again), or it may be because you just do not understand the term in the first place (but it “sounds” in something “bad” in your “ideological leanings”).

                As to your Fa reply, well, at least you attempted to grab some of the terms that might be used in an actual FA argument (but again, you do not appear to understand what those terms mean, or how to use them in anything but your emotional rant). Baby steps are a good thing, I suppose.

            2. 6.2.1.2.1.2

              One would imagine that a glibertarian — of all types of people — would have some sort of understanding of the principles at stake here.

              But that’s why we call them glibertarians: they’re idi 0 tic hyp 0crites who will do and say anything if it they think it will bloat their wallet. In this case, Bildo (along with his mentally defective mentor Big Jeans) will respond to an obvious First Amendment issue by pretending that the issue doesn’t exist, or by pretending that a “cogent argument” has not been made.

              This behavior is a big part of their legacy. It’s pretty much all they got.

              1. 6.2.1.2.1.2.1

                …and here you switch from fascist to glibertarian…

                Your made up words do not impress. In fact, what they do DO is show that you are mired in your emotions and cannot get out of your own way (and this is a prime reason why YOU are the Trump of these boards).

                (and there need be no “pretending” as to any cogent FA argument – you STILL have not presented one)

    3. 6.3

      Mr. Greenstein,

      It’s just patent law. Ideas can win you the Nobel Prize in Economics. But here and at the Federal Circuit we’re just talking about patent law.

  5. 5

    With a hat tip to Winston Churchill:

    The Alice decision is a riddle, wrapped in a mystery, inside an enigma.

    Making disposing of inventions as easy as flipping on a light switch.

    Our Constitution and Congress be d.a.m.n.e.d.

    1. 5.1

      I’ve got work coming out of my ears and I’ve never had a claim rejected in view of Alice or Mayo.

      1. 5.1.1

        Your post is inapposite to the point presented.

        But that being said, your wonderful feelings have been noted.

  6. 4

    “China is going to take the lead in the waiting tone arts!”

    “I am alive today because the PTO used to grant patents on altering phone notifications based on a callers predetermined credit rating.”

    1. 4.1

  7. 3

    >>The judges unanimously found that the trial judge was wrong to tell jurors that individual elements of a song such as its notes or scale may not qualify for copyright protection, because a combination of those elements may qualify if they are sufficiently original.

    Same game as point of novelty. Reduce something below what it is to destroy it.

    1. 3.1

      … otherwise known as the “Gist/Abstract” sword.

      On the other thread, an article about Canadian patent law is presented dealing with the power of judges to be able to eliminate patents that otherwise meet all statutory criteria (the Siebrasse article: link to papers.ssrn.com ).

      There are interesting notions of the eliminating concept most all NOT existing separate from other statutory concepts.

      While not quite the same, there are parallels to the use of 101 in the States.

    2. 3.2

      Also known as “Let’s look at what was actually ‘invented’ here.”

      It’s what normal, competent patent attorneys do every day.

      1. 3.2.1

        What is “actually invented” has been explicitly assigned the duty/responsibility BY Congress – and it is not the Court that was so assigned.

        You clearly missed the point of the thread here.

        1. 3.2.1.1

          “Derp derp derp derp”

          1. 3.2.1.1.1

            Ah yes, the Derp Dance from Malcolm.

            How charming.

  8. 2

    So what we have is an “easy” 101 invalidation of the claims being equated with something that appears to be obvious under 103.

    Not patent law, but a rule of equity that a judge can invalidate claims under 101 if they feel they are obvious.

    1. 2.1

      “Not patent law, but a rule of equity that a judge can invalidate claims under 101 if they feel they are obvious.”

      It was easy. No logic required. No thought required. We’re talking Judge Reyna here

  9. 1

    Not only easy, but predictable.

    And most of the really easy and predictable cases end up Rule 36’d.

    1. 1.1

      Greenstein would have been Rule 36’ed but for it being a pro se appeal submitted on the briefs. But I have to chuckle at the Fed. Cir. saying “We have long held that such basic management of business information is an abstract idea.” Since Alice?

      1. 1.1.1

        State Street was the aberration and it didn’t last long before Bilski dialed the madness back in.

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