Solutran v. Evalon: Processing Paper Checks and Patent-Eligible Subject Matter

By Jason Rantanen

Solutran, Inc. v. Evalon, Inc., U.S. Bancorp (Fed. Cir. 2019) 19-1345.Opinion.7-30-2019

Panel: Chen (author), Hughes and Stoll

This opinion involves review of a district court opinion denying summary judgment that claims 1-5 of U.S. Patent NO. 8,311,945 are invalid for failure to recite patent-eligible subject matter.  (The district court also granted summary judgment that the claims were infringed.)

Claim 1 is below.  Without knowing more, can you predict how the court resolved the appeal?

1. A method for processing paper checks, comprising:

a) electronically receiving a data file containing data captured at a merchant’s point of purchase, said data including an amount of a transaction as-sociated with MICR information for each paper check, and said data file not including images of said checks;
b) after step a), crediting an account for the mer-chant;
c) after step b), receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check’s MICR information; and
d) comparing by a computer said digital images, with said data in the data file to find matches.

The answer is after the jump.

The Federal Circuit reversed the district court, holding that the claims failed to recite patent-eligible subject matter.  The CAFC first held that the claims “are directed to the abstract idea of crediting a merchant’s account as early as possible while electronically processing a check,”  Slip Op. at 7, a conclusion that followed from Ultramercial v. Hulu, 772 F.3d 709 (Fed. Cir. 2014) and Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343 (Fed. Cir. 2014), and was not at odds with Enfish, LLC v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016).  The court then concluded that the claims did not “contain a sufficiently transformative inventive concept so as to be patent eligible” by, for example, “‘purport to improve the functioning of the computer itself’ or ‘effect an improvement in any other technology or technical field.'”  Id. at 12.  A key issue was that, even by the terms of the patent itself, the only potentially inventive concept was the abstract idea itself:

As we noted above, the background of the ’945 patent describes each individual step in claim 1 as being conventional. Reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) represents the abstract idea in the claim, making it insufficient to constitute an inventive concept.

Conclusion: claims invalid for failure to recite patent-eligible subject matter.

49 thoughts on “Solutran v. Evalon: Processing Paper Checks and Patent-Eligible Subject Matter

  1. 10

    What is interesting is the attitude of the academics. They have accepted sheer nonsense in the Alice test and seem to get off on it. The logic used in Alice is inconsistent with reality and the use of the term abstract in every sense of the word it is used except by the Scotus. The ladders of abstract are being completely ignored. The fact that claims are supposed to be interpreted by one skilled in the art (no snarkie little shots about the difference between POSIT and anyone skilled in the art). To one skilled in the art the claims are enabled, there is a WD, and the metes and bounds of the claim are clear.

    A computer is a machine. It requires energy, space, and time to operate. The conservation of information is the most important law in physics.

    Yet, we have all the arrogant hor rible academics getting off on Alice. And CAFC that go in their back chambers with wet warm towels and invalidate claims based on how they feel.

    1. 10.1

      It illustrates that the academics are not scholars or honorable people, but money wh ores. Dirty, filthy, little people that would burn down our system for their buck. They are holding their ankles and taking it up the a $$ for their money from SV.

      To put it mildly.

    2. 10.2

      Another to notice about the ankle holding wh ores is that they can and never had won a real argument about Alice and 101. What they do is put out their non-peer review articles with unethical cites and hide. They are f’ing little cow ard that could never win a moderated debate.

      They are the lowest form of humanity. The academics. Ankle holding money who res.

    3. 10.3

      You want sheer nonsense of academics? See the Prof Ghosh post.

  2. 9

    Paul If “Celgene’s attempt is part of the [constitutional “takings” argument] problem (listen to the oral arguments..” it was certainly not for not paying a sufficient fortune for “silk stocking” leading law firm representation. Listed for Celgene on this decision is a D.C. partner of Jones Day and 3 NYC attorneys, a San Diego attorney; and 3 Quinn Emanuel Urquhart & Sullivan attorneys! These are not the kind of firms that are likely leave possible argument or any legal rock unturned.

    Yes but those are the kind of sleazebag firms you would hire if you just want a bunch of @ holes in suits to wave their ridiculous silk stockings around and cry a bunch of crocodile tears about derp da constertershern derp derp.

    1. 9.1

      “wave their ridiculous silk stockings around ”

      I will support it if we can also do shaved heads with wigs.

      1. 9.1.1

        … is that a part of Malcolm’s Derp Dance?

  3. 8

    Here is another case where eligibility clearly hinges on WHEN the application was filed, as opposed to whether the claims set forth nothing but an abstract idea. If the patent was to the process of scanning itself, and if the inventors were the first to come up with scanning, then the claim would likely to have been illegible even if the claim had the mere single step of “receiving said paper checks and scanning said checks with a digital image scanner thereby creating digital images of said checks and, for each said check, associating said digital image with said check’s MICR information” (assuming of course that the claim passes muster under 112).

    Another example, you could have a claim that merely recites the single limitation of “a non-transitory computer readable media that includes computer readable instructions, that when executed by a processor, cause a process to perform a method” be patent eligible But if you further recite what method is being performed, now the claim,which would be otherwise eligible because ineligible.
    a
    Courts have forced us into a situation where ADDING limitations to an otherwise eligible claim force the claims to become ineligible. In my opinion, 101 analysis should not depend on WHEN the application was filed.

    1. 8.1

      Doesn’t eligibility always depend on when a patent was filed, since that largely determines what the inventor can claim as his invention? If the Prometheus inventors had filed early enough to claim the full gamut of syringes, test tubes, and test kits for collecting and testing blood as their invention, they’d have been eligible for a patent, whether they included titrating to therapeutic drug doses or not. But just adding those concrete things to ineligible claims 100 years after their invention shouldn’t make that claim eligible, should it? Of course not. Because they didn’t invent the patentable bit. And no, this does not conflate eligibility with obviousness.

      1. 8.1.1

        Doesn’t eligibility always depend on when

        No.

        Again, see the Act of 1952 (and especially the writing of the jurist most familiar with what Congress passed: Judge Rich).

        1. 8.1.1.1

          Meet Bildo, the walking malpractice case.

          1. 8.1.1.1.1

            Your errant and mindless ad hominem is noted (as is the Accuse Others meme of your in action).

      2. 8.1.2

        Because they didn’t invent the patentable bit. And no, this does not conflate eligibility with obviousness.

        Absolutely wrong.

        Not only DOES this so conflate, you also conflate eligibility with patentability and appear to attempt to apply eligibility on less than the claim as a whole.

      3. 8.1.3

        IDS: Doesn’t eligibility always depend on when a patent was filed, since that largely determines what the inventor can claim as his invention? If the Prometheus inventors had filed early enough to claim the full gamut of syringes, test tubes, and test kits for collecting and testing blood as their invention, they’d have been eligible for a patent, whether they included titrating to therapeutic drug doses or not.

        Of course this is correct in the general sense with the major exception being the odd case where someone attempts to claim only the abstraction (which almost never happens because … most people aren’t that f—-ng st-00-pit or greedy). The additional prior art steps in Prometheus claims were put in the claim PRECISELY because Prometheus knew the would never get an assertable claim out of the PTO that recited “compare two numbers and determine whether to do nothing or do something based on the comparison.”

        Mike upthread lacks the intelligence to understand what Mayo v. Prometheus was about and why the case was a 9-0 case that can never be overturned. As long as patentees are allowed to recite whatever they want in their claims, there has to be a way of distinguishing between a recited prior art context and the actual innovative subject matter (which may be an ineligible abstraction, as was the case for Prometheus).

        To follow up on Mike’s own feeble efforts, the inventor of the first book could have gotten a patent on the book. But nobody thinks that afterwards anybody can repatent a “new book” based on, e.g., the non-obvious technical descriptions of scientific facts that are recited in “a book”, where that “book” includes prior art “books.”

        The same basic logic should apply to computers, of course, and it usually does when the Examiner/court is fully awake and hasn’t had its eyes glazed over with kicked up dust from the applicant/patentee.

    2. 8.2

      … merely a symptom of the conflation of 102/103 into 101 (based in no small part on the fact that the Supreme Court has ignored the direct words — and reasoning — of the Act of 1952) See O’Malley echoing my own writings…

    3. 8.3

      mike if the inventors were the first to come up with scanning [sic], then the claim would likely to have been illegible even if the claim had the mere single step of “receiving said paper checks and scanning said checks with a digital image scanner

      If the scanner was newly invented and described in the same specification, using objective structural terms to distinguish that scanner from prior art scanners, there is ZERO eligibility problem with a claim that recites using that scanner (properly described, as set forth above) for the purpose of scanning information. You could even throw in downstream “limitations” about what to do with the scanned information. Heck, you could throw in “limitations” about the content of the scanned information if you wanted to (no idea why you want to do that other than to burn up the clients money … but it wouldn’t affect the eligibility of the claim).

      In that circumstances, the scanner itself — a new apparatus distinguished from the prior art in terms of its non-obvious structure — is the “inventive concept” that satisfies eligibility. This isn’t difficult stuff to understand. Why do people like Mike insist on making it difficult?

      Common sense has forced us into a situation where ADDING ineligible limitations to an otherwise eligible but unpatentable claim force the claims to become ineligible.

      Bold text added to change the hysterical shrieking into a factual assertion

      1. 8.3.1

        Malcolm’s quip of:

        Common sense has forced us into a situation where ADDING ineligible limitations to an otherwise eligible but unpatentable claim force the claims to become ineligible.

        is exemplified in Diehr.

        Or see: Big Box of Protons, Neutrons and Electrons.

        Oh wait…

    4. 8.4

      Here is another case where eligibility clearly hinges on WHEN the application was filed, as opposed to whether the claims set forth nothing but an abstract idea.

      Of course that’s true, why do you think that’s a problem?

      Courts have forced us into a situation where ADDING limitations to an otherwise eligible claim force the claims to become ineligible.

      Yes, why is that a problem? A disclosure that teaches how to create a non-transitory media improves the art by giving it the ability to store instructions. A disclosure that recognizes that such storage *already exists* is not attempting to assert that as how they improve the art. The fact that the invention is defined by the claims doesn’t mean that each term in the claims is equally valuable or that the terms don’t mean different things to the art at different times.

      A claim to a book + a story written in the book means one thing to a world that has never seen a book before and another thing to a world where books are commonplace. The first is an overly-limited claim to the advancement of binding pages, the second is an attempt to monopolize the story. One is clearly the type of improvement patents are designed to protect, and the other is clearly not.

      1. 8.4.1

        to BOTH Random and Malcolm for the mindless disregard for what software is: a design choice of wares in the computing arts, EASILY fitting into the exceptions to the judicial doctrine of printed matter (See anon, Simple Set Theory Explication), and certainly NOT “like a book” as postulated by Malcolm and Random.

        BOTH get a fundamental aspect of eligibility very wrong in wanting to insert some type of “timing” aspect that CLEARLY is conflated with what 102/103 cover (and just as clearly explained as to what the Act of 1952 entailed in this regard, written by the single most knowledgeable jurist with the very most insight on the matter (due in no small part as his position as WRITER of what Congress enacted).

        1. 8.4.1.1

          in wanting to insert some type of “timing” aspect that CLEARLY is conflated with what 102/103 cover

          A statement that says “I claim an article of manufacture that was previously invented by another” is ineligible under 101 by its terms in addition to being a 102/103 violation. 101 on its face only allows *the inventor* to secure rights.

          Similarly, there is zero difference between a claim stating that and the claim simply claiming the article of manufacture if *the specification* admits that the article of manufacture was invented by another.

          In THIS case, there is an outright admission that all of the steps were previously performed in concert with each other. By definition they cannot form the basis of eligibility, because submitting the work of another is not only a 102 violation, but a 101 violation. What this person invented was swapping the order of particular, previously performed steps, and that is true regardless of if he uses that language or if he wants to restate the previous steps in a different order. Eligibility does not depend upon the draftsman’s art.

          Granted, in other cases most practitioners are not so…honest. But all that requires is application of the SC’s “conventional” label – if one of skill reading the specification would recognize that reference to some feature was referencing someone else’s work (i.e. the thing is so conventional that the art would interpret the specification as not asserting they invented it) then it is the same thing as if the inventor had admitted non-inventorship. This is nothing more than longstanding patent law – the specification is construed as how one of skill in the art would read it.

          Referring to other people’s work in your claim doesn’t bolster the eligibility of your invention. This patentee could have also claimed the entire US banking check-writing system and a concrete ditch digging job which resulted in the pay that was cashed, and it still wouldn’t be eligible, as none of those things are what this guy alleges to have invented.

          Hypothetical for you anon – If Music Album X by Taylor Swift releases on Monday, can I file with the PTO a method claim for “playing Music Album X” on Monday? (Or even, if I can somehow get my hands on an advance copy – this Friday) After all, Taylor simply created the album, not necessarily played it, and certainly didn’t play it publicly in a prior-art-creating manner. According to you I’m the “inventor” of that “method,” under 101, right?

          1. 8.4.1.1.1

            What the F are you doing as an examiner?

            You have zero clue on patent eligibility.

            Absolutely zero.

          2. 8.4.1.1.2

            In THIS case, there is an outright admission that all of the steps were previously performed in concert with each other. By definition they cannot form the basis of eligibility, because submitting the work of another is not only a 102 violation, but a 101 violation.

            Indeed? Why did the Congress even bother extending Title 35 past §101? It would appear that there is not a single aspect of substantive patentability that cannot be decided solely with reference to §101.

            Does it not trouble you that your reading of §101 is so capacious as to render §§ 102, 103, & 112 largely or even entirely superfluous?

            1. 8.4.1.1.2.1

              Does it not trouble you that your reading of §101 is so capacious as to render §§ 102, 103, & 112 largely or even entirely superfluous?

              You know, I had the difference in books paragraph I normally write written in that post and I took it out because I figured it was too played, but apparently not.

              Assume A invents the ability to bind a book on Day 1 and files for protection. Further Assume B, lacking knowledge of A, independently invents book binding on Day 2. Assume C, a friend of A, hears from A how to bind a book on Day 3 and files a patent application stating that. Assume D, whose specification is silent about all of the above, claims a book on Day 3650 while the book has been in ubiquitous use.

              A is entitled to a patent.

              B is not entitled to a patent, solely because of Section 102.

              C is not entitled to a patent under 102 because of A and B’s filing, and is further not entitled to it under pre-AIA 102(f) or under AIA 101 in view of the patents clause of the constitution based on his own specification.

              D is not entitled under 102 or under (and here’s the only part where I’m marginally stretching) Alice’s conventionality logic, which imputes the knowledge of A’s invention to D.

              The vast majority (or to have the office tell it, a plurality) of people filing are B’s. Rarely does someone admit they are not the inventor (C) and rarely do people throw away money to claim something that is in widespread use (D). So understand that for the vast majority of rejections, 101 does not tread upon what you consider to be 102 ground.

              For the C people, this was textually a part of 102, so I can understand why you might consider this a 102 issue, and the debate is largely semantic, but it MUST continue to exist within the scheme. Congress simply does not have authority to grant a patent to someone other than the inventor, and the “inventor” within the patent clause is not subject to Congress’ definition. Congress can’t use a statute to define a term in the constitution. Consequently, when AIA 101 allows for a first to file system it MUST mean a first to file system only amongst Constitutional inventors.

              Again, the C situation is not a person who mistakenly believes he invented it himself, but someone who explicitly knows they are merely copying someone else’s work. They are not inventors within the meaning of the constitution. Only a person like B, who independently invents (even if they do so later than A) meets the constitutional definition of inventor. If one construes the scheme as a whole to be able to grant to C, the scheme is unconstitutional with respect to that granting. Because 102(f) was removed, the only way to make the scheme pass constitutional muster is to construe AIA 101’s grant to “Whoever invents or discovers” as being an original (regardless of whether they are “first” which is something that 102 deals with). In other words, because the grant cannot occur and because the explicit limitation has been removed, the statute granting must be construed to be more limited.

              Regardless, far from “rendering 102 superfluous” it only applies to limited cases where the applicant is admitting they didn’t invent the subject matter claimed. Again, in THIS case, the Applicant helpfully admits he literally only invented the words “after step a)” and “after step b)” in the claims. Were Applicant to strike those words, Applicant’s specification would be sufficient evidence to prove a 101 or a 102 violation, the former because he admits he didn’t invent the subject matter, and inventing the subject matter is necessary under 101, and the latter because he admits someone else did, which is invalidating under 102. I don’t know what other outcome you expect here – The PTO has two higher authorities (Section 101 and the patents clause) which limit patent grants to inventors, so I don’t know how you can say its not a 101 violation when someone admits they are not an inventor.

              I pose the same question to you as anon – If someone else writes music, can I claim a method (clearly a statutory 101 category) that claims playing that music so long as the claim does not postdate the music release? If 101 is not available as a rejection conduit that claim would issue, as the music is not prior art. I’d submit that the only protection for such a situation is the fact that I am not the creator of the music, and therefore not the inventor of the method.

              The fourth person, D, violates 101 by the result of applying standard patent principles – Because the specification is silent, and because it is construed by one of skill, and one of skill could not reasonably conclude that the claim is for something that everyone knows to have invented. Here I do say that 101 intrudes onto 102 solely for things which a judge could essentially take judicial notice of anyway – conventional subject matter. For example, if I was to claim I invented the television in 2019, I don’t view that as a fact issue which necessitates a trial over 102, but something that can be dismissed under summary judgement under 101 via judicial notice – it is plainly evident to all that I did not invent the television. I suppose one could go further and provide evidence that Person X invented the television, or that the television was in public use, and certainly the fact that I am not the inventor and someone else generated prior art (including by applying for a patent) are intertwined issues, but I see no reason that it should be a solely-102-realm concept.

              A scope may be ambiguous and therefore indefinite, and yet either ambiguous scope could contain an anticipated or obvious embodiment. Nobody seems surprised that a claim could violate 112(a), 112(b), 112(d), 102 and even 103 simultaneously, so I wonder why you have a problem with also violating 101. It’s possible for the same evidence or logic to support a 101 rejection as a 102/103 rejection, just as the same evidence supports an enablement and written description rejection. In short, I don’t know what your problem is other than “we haven’t done it this way in the past” (although as I point out with pre-AIA 102(f), really you have done it this way in the past).

              I’ll say the same thing I often say with other cases – I definitely think this claim CAN be tanked under 103, but you haven’t made a case why it MUST be tanked under 103, especially when it was previously examined by a 103 “expert” and let through to issue. The scope of this claim (as construed by the spec) is “In the admittedly known context of performing CBAD, instead perform ABCD.” It is not improper to construe the invention as “after step a)” and “after step b)” and to find that that is not eligible subject matter. The fact that there is a strong obviousness case is neither here nor there, the only question is whether “after step a)” and “after step b)” constitutes the kind of subject matter that the patent clause was meant to protect, as that is the only teaching by the specification.

              1. 8.4.1.1.2.1.1

                The “difference in books” merely evokes the Wolfgang Pauli phrase of “Not even wrong.”

            2. 8.4.1.1.2.2

              Greg I also don’t recall us having this conversation (though maybe we have) –

              Can you point to where in the statutory scheme is the textual support for the printed matter doctrine? If I claim a book + story, where is the statutory basis for ignoring the story and calling it obvious over a citation to a blank book?

              I’d submit to you that what you consider to be a 103 doctrine is, in fact, a 101 doctrine, and it is more cutting than the Alice logic. Do you accept that the printed matter doctrine is correct, or do you think that most fiction books are also patentable? If it is correct, what is the basis for ignoring part of the claim scope when the obviousness analysis requires an analysis of whether the claim as a whole is non-obvious over the prior art? Conversely, doesn’t the story constitute an abstract idea which, under alice analysis, might cause a claim to be ineligible no matter how non-obvious it is?

              I’m just trying to show you that 101 does not encompass all of the 102/103 analysis, but that it can be more expansive than just “is this a statutory category” without the system falling apart.

              1. 8.4.1.1.2.2.1

                is the basis for ignoring part of the claim scope

                STILL not even wrong (and not even in the ballpark).

                How the F are you an examiner?

                1. How the F are you an examiner?

                  I love it every time you say this. I’m constantly correct about what the courts do. You’re arguing against the very logic that is used to invalidate a claim on a post that reports that the claim was invalidated with a link to that logic. I can imagine how one so out of touch with reality is constantly upset with the world, but that doesn’t make it any less entertaining for me.

                  Please, tell me again how you can’t believe I’m an examiner. Could you sandwich it with statements about how the Supreme Court doesn’t have authority to do Alice and how congress and the CAFC are fighting back against it? Five years you’ve been going on about it. Five years you’ve been wrong – constantly.

                  How are you not disbarred, hahaha.

                2. Recognizing that the score board is broken is NOT wrong.

                  Maybe you should pay attention to the Tillis hearings, what those in the know have been saying instead of mindlessly celebrating.

                3. Maybe you should pay attention to the Tillis hearings, what those in the know have been saying

                  You just…don’t get it do you? Let’s assume (as that’s what it is) that the hearings produce a bill that is signed into law and that bill just wipes away the judicial exceptions. That doesn’t change the fact that all it does is shift the issue from a statutory one to a constitutional one. Congress does not have the jurisdiction to issue patents that fail to advance the art. Does it change Mayo? Maybe. Does it change Alice? No. Congress does not have the power to issue the Alice patent, and no statute is ever going to change that.

                  But that’s years away from me being proven right on that one. Right now, I’m still sitting on my previous victories, victories you’ve been crowing about for five years while you’ve been proven wrong over, and over, and over again. First the supreme court would never do it in Mayo, then they wouldn’t reaffirm it in alice, then the CAFC wouldn’t follow suit, then certainly they would see the error of their ways in the fetal DNA case, blah blah blah. Every landmark on this runaway freight train must be constantly gnawing at you.

                  instead of mindlessly celebrating.

                  I don’t care what the rules are, because my only job is to apply the rules I’m given. I don’t care whether you get a patent or not, only YOU care whether you get a patent. *I* get paid either way. I only care if I faithfully apply the rules set forth, and every time I see a case that applies the reasoning as I know it, I am ever more sure that I am applying the rules and you are just fuming about your inability to either understand the rules or to get a patent. If tomorrow they changed the rules so that everyone always gets a patent, that’d be just fine by me too – it’d probably allow me an extra water cooler break.

                  The fact that I’m good at determining where those rules are headed (no great feat, I actually just, you know, read the cases…which appears to be too much for some) is just a fun little game, which is why it has a scoreboard. Every time you get upset and wonder how I am an examiner (misguided, considering the office isn’t even playing by these 101 rules anyway, so there’s no causal connection), I just think that you’re not having fun playing the game simply because you’re losing, anon. If you can only have fun when you’re winning, then you should either get better at the game or play a different game that isn’t so difficult for you. Or complain about the scoring, cause that’s fun to watch you do too. Either way I’m not sure why you’re so upset, I assume you also get paid either way.

  4. 7

    As we noted above, the background of the ’945 patent describes each individual step in claim 1 as being conventional. Reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) [is so ridiculously obvious that we’re going to make up some absurd abstraction just to get this case out of the system], making it insufficient to constitute an inventive concept.

    Quick question to anyone here – Does anyone think that given that each of the individual steps were admittedly known in the prior art, and (given that the only thing being done is manipulation of information) the result of changing the order of the steps is predictable, that there was any basis whatsoever that this claim could have been found non-obvious? Moreover, if you read the spec it’s clear that the “invention” is motivated purely by compliance with the recently-passed Check Clearing Act. It would be like trying to claim “going through a security scan…but at the airport” after 9-11 – as if compliance with a federal statute isn’t its own motivation.

    I’m just a poor country lawyah here, but aren’t there ethical and malpractice rules that would prohibit someone from advancing a clearly legally invalid argument just because the examiner is too uninformed to not buy it? Presumably the argument that was made (as its the only argument that could be made given the admissions in the background) is that reordering the steps is a non-obvious act. But that would require a legal conclusion that simply re-arranging old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement could lead to non-obviousness. This application is from 2007 and thus a post-KSR filing (and certainly a post-KSR examination). The lawyer would have to know that it can’t be non-obvious, as the Supreme Court literally considered that very act and said it is obvious. That’s not a conclusion a lawyer practicing reasonably careful skill could make, right?

    I say this tongue in cheek, as the much larger issue is not what the applicant tried, but the fact that it succeeded.

    1. 7.1

      See MPEP 211.01 II:
      Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003) (Although the specification discussed only a single embodiment, the court held that it was improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order).

      1. 7.1.1

        What’s your point? I’m not arguing it’s anticipated, I’m arguing that under KSR it must be obvious. KSR explicitly stated that simply changing the order that results in expected outcomes is per se obvious. This is that fact situation.

        1. 7.1.1.1

          “is per se obvious”

          Really? Per se…? Do you REALLY think that the Supreme Court rendered such a BRIGHTLINE rule…?

          Or is this merely more of the same gloss and error that you only retain that which you like that infects all of your dross?

          1. 7.1.1.1.1

            Really? Per se…? Do you REALLY think that the Supreme Court rendered such a BRIGHTLINE rule…?

            The case speaks for itself. From KSR –

            Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. Id., at 282.

            The court could have spoken in a non-categorical manner, but it did not. When old elements perform their same function in an arrangement and yields expected results, the combination is obvious. That is this fact pattern – there are admitted old elements, and they are being rearranged, and the result of rearranging them is expected. It is obvious.

          2. 7.1.1.1.2

            This took 10 seconds to google and search within the pdf. You should try reading things before commenting, it might prevent you looking bad.

    2. 7.2

      “ethical and malpractice rules that would prohibit someone from advancing a clearly legally invalid argument just because the examiner is too uninformed to not buy it? ”

      I’ll take ethical rules for $1000, RandomAlex.

  5. 6

    Bildo: Celgene is merely typical of the excesses of Big Pharma.

    How many other “Big Pharma” players have raised the “takings” issue to challenge the Constitutionality of the IPR regime?

    The last time I checked, the maximalist script was pretty clear on the point that Big Pharma was responsible for setting up the IPR regime. Is there a new script circulating Big Jeans sweat chamber this week? If so, I’m sure that it’s very serious and totally not a bunch of dust-kicking to obscure the “excesses” of some other industry group.

    1. 6.1

      What is it with you and that Quinn 0bsess10n?

      No wait – I don’t want to know.

  6. 5

    Without looking: The claim is badly written and has 112 issues. The court killed it under 101, though the problems are clarity issues under 112.

    1. 5.1

      After looking… the tell tale sign of applying the wrong statute, the ole is abstract because it is old routine:

      “As we noted above, the background of the ’945 patent describes each individual step in claim 1 as being conventional. Reordering the steps so that account crediting occurs before check scanning (as opposed to the other way around) represents the abstract idea in the claim, making it insufficient to constitute an inventive concept.”

      sigh

      1. 5.1.1

        the ole is abstract because it is old routine:

        That’s not what the CAFC is saying. They are saying that the alleged “inventiveness” of an abstract step can not be relied upon to establish eligibility of claim that otherwise recites only the prior art.

        Level of intelligence required to understand this analysis: pretty much a 9th grade education or above. It’s actually frightening to think about Les or any of the blogosphere’s most relentless patent maximalists trying to prosecute patent applications. Of course, these are lifelong practitioners who in many cases never filed a PCT application until five years ago.

        1. 5.1.1.1

          who in many cases never filed a PCT application until five years ago.

          ? relevance (no snark)

    2. 5.2

      What 112 issues do you see?

  7. 4

    The far more interesting case this morning is the Celgene case. Celgene’s disgusting claims** were incredibly junky and definitely would have collapsed under 101 if tested but here they were tanked instead in an IPR. The best part? Celgene’s p@thetic and total failure of an attempt to have the application of an IPR proceeding to a pre-AIA patent deemed an unconstitutional “taking” under the 5th amendment.

    Ah, nothing like the scent of supreme patent maximalist desperation and burnt toast on a Tuesday morning. Delicious!

    ** Fyi, these types of disgusting claims are representative of the kind of appalling abuse of the system that will become commonplace if anything resembling the proposed “revisions” to 101 are actually enacted

  8. 3

    Jason, your account has been credited. Also, you are an authorized user.

    I won’t trouble you with the logical processes that went into these changes because you aren’t an expert and you would never understand them. Suffice it to say that machine learning was DEFINITELY involved, which is how you know that the methods are super important and trendy and worth investing in. The bill for my services will be sent to your proxies by my proxies, using another method that is so Post-Information Age that it will blow your mind and also blow your computer’s electronic brain.

  9. 2

    I would have guessed non-infringement for step c) [the pre-existing bank-run system] not being performed by, or controlled by, the same entity as presumably-new steps a) and b).

    1. 2.1

      Also, because of the “after” limitations in this claim it would seem that it could be avoided simply by scanning the checks first? [Which could also provide the MICR [magnetic ink numbers] on the check.]

    2. 2.2

      Obviousness was yet ANOTHER predictable outcome. All that’s happening here is some event is being “accounted for” and then, after being “accounted for”, there is a post-event “reconciling” of the accounting. Everything else is just content-based g@ rbage. If you’re going to hand out patents on cr @p like this, you might as well hand out ten zillion additional patents reciting every type of item being processed, the clerk’s hairstyle, the location of the server (“in a state that ends with a the letter A”). It’s just abstract irrelevant nonsense. But the “more patents are better derp!” crowd just can’t get enough. And, hey, that crowd is mostly rich white entitled Rep u k k k e @ h0les so we have to pay attention to them, right?

  10. 1

    [WARNING: m@ ssive dose of sarcasm follows]

    The answer to Jason’s question is that it is totally IMPOSSIBLE to predict the f@te of this claim. Literally no attorney could have predicted that a claim reciting the steps of “receiving data”, “crediting an account” (LOL!) and “comparing two things” would be ineligible!

    Nope. It’s all just too confusing, Jason. You should read some other blogs to fully appreciate how confusing it is. Trust me on this: it’s really really really confusing and totally impossible to understand any of this, no matter how hard you try. You have to be like, twenty or maybe even twenty five times smarter than Stephen Hawking was when he was in his prime to even begin to figure this stuff out.

    The real issue for our society is: how are struggling banks going to improve their services without patents like this one? Is our society — the greatest society that Western civilization has ever known — to be trapped in the Paper Age forever?

    These Federal Circuit judges know nothing the science of checking account creditology, which is one of the most difficult sub-fields of creditology out there. Obama appointed every one of these people because of their communist tendencies, not because they had advanced 21st century creditology skills. Just last year it was discovered, for example, that crediting an account is three to four times more efficient if the crediting occurs under the shadow of a stretched snakeskin, where the snake has been sacrificed on an election day within forty four steps of a voting booth (See Journal of Advanced Account Creditology, V.32, pp. 233-235).

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