Patently-O Bits and Bytes by Juvan Bonni

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44 thoughts on “Patently-O Bits and Bytes by Juvan Bonni

  1. 8

    Tangentially relevant to Paul’s below, Dr. Noonan has kindly alerted me on his blog to a footnote in the recent Univ. of Minn. v. LSI opinion that addresses my point about sovereign immunity and interferences:

    We did not hold that interference proceedings were barred by state sovereign immunity in Vas-Cath, Inc. v. Curators of Univ. of Mo., 473 F.3d 1376, 1382 (Fed. Cir. 2007), nor do we decide that issue here. We note that interference proceedings may more closely resemble agency adjudication between private parties as compared to IPR proceedings.

    This footnote accentuates the point that I am making: if interferences are even closer to adjudication between private parties, then the argument sovereign that immunity should apply is even stronger for interferences than it is for IPRs. And yet, precisely none of the voices currently advocating for sovereign immunity to apply in IPRs is on record as having held that sovereign immunity should have precluded interferences involving state-owned patents.

    This rather serves to illustrate that the folks making the pro-sovereign immunity argument in the IPR context are arguing in total bad faith. They do not actually care about the putative insult to the dignity of sovereigns—they just want any stick ready to hand with which to beat the IPR system. They just hate IPRs, and are content to throw any old nonsense at the wall—no matter how embarrassingly vacuous—in the hope that some of this slop will eventually stick.

    They care as much about the rights of sovereignty, or the inviolability of jury trials, or the prohibition against uncompensated takings (etc.) as they care about a timber wolf’s fart in the Yukon. Their impassioned dilation on these themes is all just so much flatus vocis.

    1. 8.1

      “… then the argument sovereign that immunity should apply… ”

      Er, “… then the argument that sovereign that immunity should apply… .” Mea culpa.

    2. 8.2

      Your “total bad faith” is clearly not.

      That you have a difficult time understanding this is definitely a YOU problem.

    3. 8.3

      Dear Greg DeLassus,

      Welcome to the reality of trying to discuss anything with the patent maximalists over the last ten years.

      For what it’s worth, I’ve yet to hear you or Kevin Noonan make a good faith argument in defense of reversing Mayo so maybe you should learn to enjoy the company you’re keeping in that regard? Or grow up. Your choice. Life is about choices. Noonan, of course, has made his deal with the devil already so he’s never going to change. That’s why he’s better off under the wheels.

    4. 8.4

      Relevant to an argument advanced elsewhere, it is worth noting that literally no one thought that it was a “Constitutional violation” for the PTO to administer interferences pre-AIA, and yet what is an interference but an instance of the “executive branch deciding disputes between private parties”? This whole argument is bad faith, and the proof of its bad faith nature is evident in the fact that when the SCotUS ruled against Oil States’ challenge, the contingent who had back Oil States’ position did not say “well, I guess that we were wrong about our Constitutional law argument,” but rather went chasing immediately after the next (i.e., St. Regis Mohawks) loony-tunes theory that was going to take down the IPR system.

      None of this is about principled legal analysis. 100% is about motivated reasoning toward a commercially convenient conclusion.

  2. 7

    Are abstractions like “learning models” eligible for patenting? Since when?

    Looking for a CAFC case that upheld the eligibility of a method for learning that doesn’t involve a new machine or transformation of matter…

    1. 7.1

      How is a learning model – as understood (as is required) by a Person Having Ordinary Skill In The Art – an “Abstraction” as that term is to be understood to be defined by the Court?

      1. 7.1.1

        Why is it the case that the logic arts keep borrowing terms from the logic arts to identify different purposes for logic?

        Must be some kind of strange coincidence. It’s a real mystery.

        Anyway, still looking for an answer: when has it been held that methods for learning are eligible for patenting (in the absence of any new devices to facilitate the learning, or in the absence of any tangible transformations of physical matter)? I seem to recall cases coming out oppositely but maybe I’m remember wrong.

  3. 6


    Are there any cases that the Federal Circuit has granted en banc review at the moment? Seems like quite a dry spell.

  4. 5

    The only apparent novel claim feature in the above first article on the Tesla battery testing patent application seems to be: “determining a machine learning (ML) model using the database of spectra. The method includes determining the concentration of the component of the electrolyte in the sample solution using the machine learning model.”
    This illustrates another problem with artificial intelligence patenting: a claim with no meat on the purely functional bare bones of just “do [it] with AI” is going to run into the same problems as just bare bones “do [it] on a computer” claims. No claim language as to what the “machine learning model” actually is.

    1. 5.1

      ..and Paul, is that a (proper) 101 problem (hint: no) or a different section of law problem (hint: yes).

      1. 5.1.1

        Did Bildo just recognize a problem with a patent claim? Tell us what the problem is Bildo. Use your own words. Don’t assume that what Paul said is correct (he’s not skilled in the art LOL!).

      2. 5.1.2

        Re: “Paul, is that a (proper) 101 problem (hint: no) or a different section of law problem (hint: yes).”
        As always in these comments, Anon, that answer will depend on the important question of whether one is asserting personal opinions as to what one thinks the “proper” law should be, or is trying to give realistic, practical and useful opinions as to what a judge is actually likely to decide based on observations of the actual current controlling law.
        As you know, the latter answer is more likely 101 than 112, or possibly both. [Unless the pending anti-101 legislative proposals are enacted.]


          I don’t think that your characterization is accurate, Paul.

          There is a real difference between merely accepting a broken scoreboard and actually fighting for the law to be accepted correctly (even if that challenge is to ‘correct’ a court of law).

          That’s kind of why we have an appellate court system: courts of law Often make mistakes, and we (really) serve our clients by challenging what a court may do.


            Actually one is dis-serving clients as well as readers here by encouraging wasting money and antagonizing judges or APJs if one presents personal legal wish lists as if they are actual current law without clearly distinguishing them as such.


              You again make the same error of characterization — as if to bootstrap your position relative to what I have already posted.

  5. 4

    NW>> a “functional” claim that has a scope of say 1,000 solutions

    MM>>First of all, if the functionality is at the point of novelty, how do you determine the number of structures capable of imparting that functionality (particularly when the structures are implicitly novel)?
    “I claim a tricycle with wooden wheels, wherein the tricycle can hover up and down at a rate between 10 and 100 miles per hour”. What’s the “scope of solutions” for that functionality? Five? Or five thousand?
    Second of all, when we’re talking about logic on a computer, the issue turns into first into how many different languages can be used to instruct a computer so that it “achieves the functionality” of (for example) “substracting fees from a credit instrument automatically when an interest rate is dynamically calculated to reach a predetermined value, where the determination is performed based at least in part on a secure archive comprising at least five years of tabulated Compton’s Index units”? And after answering that question (or even before!) you can ask the question of how many different (and new!) structures can be engineered to perform the specified data processing function.
    The larger point here is that claiming functionality at the point of novelty makes a complete joke out of the patent system. The patent system is built entirely on and around the premise that you can not simply claim your desired functionality. You need to recite the structural/physical/tangible solutions that achieve that functionality. Otherwise you are stealing the public’s property.
    As everybody with more than half a brain understands (e.g., Dennis, Jason, most normal people, maybe even that Hricik guy), software patenting is a transparent EXCEPTION to this longstanding rule. And it’s a very silly exception that has done vast amounts of harm to the system. Has the existence of the exception made some people incredibly wealthy? Of course it has. Intimately market-related loopholes and exceptions created out of thin air almost always provide fantastic opportunities for grift and game-playing. Which is what happened. Which is why we saw a bunch of Supreme Court cases and why we saw the AIA get enacted.

    1. 4.1

      MM’s comments seem to accurately represent the anti-information processing patent people’s thinking.

      They simply are wrong. The fact is that one may select a solution to implement the invention recited in the claims and when one does that recites structure.

      There may 1000 solutions so you use functional language but a real solution requiring picking one of those 1000 solutions. Once you do then you have the structure of the invention.

    2. 4.2

      So really think about what MM wrote and ask if it is true.

      If a functional claim has a scope of enablement, then it does not include embodiments that are not enabled. And when it is actually implemented then it must have structure.

      The question then becomes does MM and the others believe that software running on computer not have structure? (There are literally 100’s of papers that say it does and none in computer science and engineering that say it does not have structure.)

      The important thing is that we can see that MM is wrong.

  6. 3

    I would pick a nit with Hrendash’s article with its (self-serving) “prioritization” of:

    The crucial question, however, is how quickly innovative ideas can be patented.

    This is NOT a crucial question in today’s patent world, as the options on speed are present, and those wanting speed can do decide.

    I see this more of an attempt to “carve out” a space for writing on the topic, and to me this hyperbole has the opposite effect of my NOT wanting to continue reading the paper.

    1. 3.1

      The problem with any discussion about a “professor’s” paper is that we know that the professors are often paid to write the papers, e.g., like $50K. We know there is no peer review. We know there is no consequences for unethical behavior such as not citing counter arguments or mischaracterizing cites.

      So discussing a “paper” is about like discussing a blog post. Professors are who res that should be treated as such. They have no ethics. No moral foundation. People like Lemley have admitted to making many millions burning down the patent system.

      1. 3.1.1

        While there is little doubt that most of what you say is true (I would still pick a nit in your use of “peer review” as that distracts from the deeper problem that academia itself is not a meritocracy, but instead is a self-perpetuating “group think” re-gurge” the desired philosophy system), but my point here was not on the “structuring of the narrative” as it is on the obvious over-sell of the “importance” of the topic.

  7. 2

    Prof. Asay’s essay was interesting, but I think that he lacked the courage of his convictions. After dozens of pages patiently building a case as to why Alice is an obstacle to the AI industry, he reaches a conclusion at the end that reversing Alice would just bring back the troll problem that Alice ended.

    Well, maybe, but there are more solutions to trolls than just the one solution enacted in Alice. Indeed, how do we actually know how much of the abatement in the troll problem is a result of Alice, compared to how much is a result of the roughly contemporaneous Octane Fitness, or the advent of AIA PTAB trials?

    To my mind, the right conclusion of Prof. Asay’s essay is that Congress will do well to continue its recent efforts to reverse Alice.

    1. 2.2

      how do we actually know how much of the abatement in the troll problem is a result of Alice, compared to how much is a result of the roughly contemporaneous Octane Fitness, or the advent of AIA PTAB trials?

      I don’t know about you, Greg, but I use my brain to determine the answer to such questions. Alice was huge and impacted not just the trolling of granted junk, but the acquisition of the junk in the first place.

      the advent of AIA PTAB trials

      IPRs, unfortunately, don’t permit eligibility challenges, which is what Alice is about. CBM challenges provide some relief in that regard, but they are dependent on Alice. Octane Fitness changed very little and, again, Alice is what gives Octane Fitness teeth.

      Kudos to Assay for pointing out the obvious regarding “Artificial Intelligence”, which is a trendy term useful primarily for determining that a patent is likely to be complete g@ rb@ ge. “Artificial Intelligence” is just data processing. It’s computing. Wake up already.

      You know what’s really cutting edge? Picotech. Way more awesome than nanotech.

    2. 2.3

      Congress will do well to continue its recent efforts to reverse Alice.

      And shortly after the massive cr@pst0rm of junk patenting that will inevitably follow, Congress will end up making it even easier to tank every patent.

      That’s how it works. And that’s how it’s going to continue to work as long as the public continues to have a stake in the system (they always will) and as long as there is sufficient transparency in the operations of the system at all levels (that also will not change; things will only become more transparent). The latter factor is huge, by the way, and it’s not a coincidence that the easier acquisition and dissemination of data about the system has increased simultaneously with greater public involvement in the system.

      1. 2.3.1

        and as long as there is sufficient transparency in the operations of the system at all levels (that also will not change; things will only become more transparent).

        Reminds me of the time when Prof Crouch was trying to make this place a “better ecosystem” and experimented with the DISQUS commenting system.

        There was a feature there that provided for more clarity, and at a certain point a certain regular poster (upon such clarity being shown to show how blightful that poster was) opted for an advanced level of “privacy” to shield and take away that clarity.

        That level was completely unnecessary for the rather feeble excuse offered by that certain regular poster, and more clearly provides that that poster has no real desire for clarity at all. Leastwise any clarity that does not align with his anti-patent feelings.

    3. 2.4

      Re; “how do we actually know how much of the abatement in the troll problem is a result of Alice, compared to how much is a result of the roughly contemporaneous Octane Fitness, or the advent of AIA PTAB trials?”
      Good questions. Even the extent of PAE suit abatement can be questioned. However, there is one statistical comparison study that could and probably should be made. That is, make a simple numerical total count of successful, appeal sustained, Alice-101 defenses in patent suits vis a vis the total of successful, appeal sustained, IPR petitions in patent suits, during the same time period. Will not the latter be at least an order of magnitude greater?

      1. 2.4.1

        Even the extent of PAE suit abatement can be questioned.

        I confess, this surprised me. Can you point me to scholars questioning this? I had thought (perhaps naively) that the diminution of troll activity and troll suits over the last five years was a point on which everyone agreed.


          Most everyone (at least those who are inte11ectually honest) will acknowledge that a VAST amount of the “tr011” scare tactics was nothing but propaganda.

          Even the US government had come out with a report (even using Lemley driven data) and said that the “Tr011” thing was overblown.


          Greg: I had thought (perhaps naively) that the diminution of troll activity and troll suits over the last five years was a point on which everyone agreed.

          It certainly has diminished and there is no doubt about it.

          But that doesn’t mean that reality can’t be questioned! You just lack imagination, Greg. Go around the corner behind the Arlington 7-11 and get a hit off that sweet patent maximalist crack. Everything will become “crystal” clear, if you get my drift.


            But that doesn’t mean that reality can’t be questioned!

            Don’t you mean:

            But that doesn’t mean that spin and propaganda can’t be questioned!

            After all, it is the very “Tr011” narrative that has been shown to be a vastly overblown hype machine by the Efficient Infringers that was rightfully questioned.


          Yes, sorry, my intended emphasis was on not having seen a specific measured EXTENT of PAE suit abatement, not that it has not abated. The total number of new patent suits is indisputably down. But has the percentage of suits by PAE’s declined far more that suits by non-PAE companies with patented products or by inventive research organizations? I am still seeing classic PAE suits on fire sale patents acquired from bankrupt companies for the purpose of their being sued on by the shell companies that acquired them, but I have not so far seen actual numerical data. Does anyone else have it? [“Troll” statistics are not vert helpful if that term is not carefully defined as attempted above for PAE’s.]


            If it helps, there was a segment of the US government that took a look at the so-called ‘Tr011’ problem some 3-5 years ago (even using the Lemley-associated data) and concluded that there was NO such “Tr011” problem to begin with.

            That is “helpful” that is if you want to shuck off the propaganda that has saturated the discussion points.

            I suggest that you look up some of the more detailed writings of Ron Katznelson for some “non-personal feelings” substantiation (if you are genuine).


            “Troll” statistics are not vert helpful if that term is not carefully defined as attempted above for PAE’s.

            A worthy point. According to Unified Patents, PAEs were filing fewer than half as many infringement suits in 2017 than they were in 2015. By contrast, infringement suits by operating companies are down only ~20%. In other words, the drop in patent infringment suits appears to be disproportionately a drop in PAE suits.


              Consider the source (Unified Patents is hardly an unbiased entity, and their entire business model depends on the “Tr011” mantra.

    1. 1.1

      The author does not have a true patent (or innovation protection) background, and has a streak of anti-patent articles.

      The American Spectator carries this info in its “About” section:

      …Published remarkably without regard to gender, lifestyle, race, color, creed, physical handicap, or national origin.

      The American Spectator Foundation educates the public on new ideas, concepts, and policies that favor traditional American values, such as economic freedom, individual liberty, self-sufficiency, and limited government. To this end, the Foundation also trains and cultivates young writers for careers in journalism and serves as an outlet for a host of both young and established conservative writers and thinkers.

      1. 1.1.2

        It reads like he gets his talking points from the EFF, which seems odd for the spectator.

    2. 1.2

      Haha, the article writer almost makes Malc sound tame in comparison.

      “trial lawyers who tried to extort you slink away for the day”

      “trial lawyers and vampiric patent-holding companies known colloquially as patent tr011s, hate Section 101 with a passion and want to defang it. ”

      “thanks to the patent snowflakes among America’s trial lawyers, who find any judgment on the merits of their bogus patents triggering,”

      “the lawyers and their corrupt friends ”

      “this bill, and the coalition of leeches pushing it, is anti-American gar_b_age”

      “the patent bloodsuckers like to wrap their policies in the mantle of property rights”

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