The Chamberlain Group, Inc. v. Techtronic Industries Co. (Fed. Cir. 2019)
Chamberlain’s asserted patents cover various garage door opening inventions.
U.S. Patent No. 7,224,275 in particular claims a garage door opener that includes a status-condition-data-transmitter to know if the door is open or closed without looking. The jury found that Techtronic willifully infringed and the patent not invalid. The district court then awarded enhanced damages, attorney fees, and injunctive relief.
On appeal , the Federal Circuit has overturned the verdict — holding that the claims are invalid as directed toward the abstract idea of “wirelessly communicating status information about a system.” Alice Step 1. Further, the claims do not include any inventive concept under Alice Step 2. All of the physical elements in the claim were admittedly “well understood in the art” and claimed in a generic fashion. The only arguably new element is that the actual information being transmitted is “a status condition signal that: corresponds to a present operational status condition (open or closed).
Claim 1:
A movable barrier operator comprising:
a controller having a plurality of potential operational status conditions …;
a movable barrier interface operably coupled to the controller;
a wireless status condition data transmitter that is operably coupled to the controller, wherein the wireless status condition data transmitter transmits a status condition signal that:
corresponds to a present operational status condition defined, at least in part, by at least two operating states from the plurality of operating states; and
comprises an identifier that is at least relatively unique to the movable barrier operator, such that the status condition signal substantially uniquely identifies the movable barrier operator.
For its part, the N.D. Ill district court (Judge Leinenweber) had concluded that the claims are directed to “garage door openers that wirelessly transmit data . . . us[ing] a particular manner of sending and experiencing data.”
In reviewing the case, the Federal Circuit placed the invention here within the context of the art — finding that the “only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths—additional cost, exposed wiring, and increased installation time.” From that framework, the court easily found the claim directed to an abstract idea.
On Alice Step 2, Chamberlain argued an inventive step — since it proposed a new garage door opener “that includes an integrated controller and a wireless transmitter to transmit a status signal.” Nothing of record in the case provided evidence that such a setup was “well-understood, routine and conventional to a skilled artisan.” On appeal, the Federal Circuit rejected this approach finding that the patentee “misunderstands our case law.”
The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan (i.e., whether it lacks novelty), but rather, there are two distinct questions: (1) whether each of “the [elements] in the claimed [product] (apart from the natural laws themselves) involve well-understood, routine, conventional activity previously engaged in by researchers in the field,” and (2) whether all of the steps “as an ordered combination add[] nothing to the laws of nature that is not already present when the steps are considered separately” Mayo. In other words, beyond the idea of wirelessly communicating status information about a movable barrier operator, what elements in the claim may be regarded as the “inventive concept”?
Here, the court found that once the abstract idea was removed, nothing in the claim remained except for conventional and well known elements.
= = = =
The lawsuit also included a second Chamberlain patent that that the jury had also found infringed and not anticipated. U.S. patent No. 7,635,966. The second patent was directed to a garage door opener that includes a rechargeable battery backup for use if the normal power supply is temporarily unavailable. On appeal, the Federal Circuit affirmed the no-anticipation jury verdict — holding that the single prior art reference was “less than clear” and thus the jury had room to make its factual determination.
On remand, the district court will need to re-do its remedies analysis, including enhanced damages, attorney fees, and injunctive relief now that only one of the patents is infringed.
= = = =
Improper Venue. Venue was apparently improper under TC Heartland. However, that decision was released only three months before trial. The defendant requested a transfer of venue within 30 days of the Supreme Court decision. However, that request was denied. On appeal, the Federal Circuit affirmed — holding that 28 USC 1406(b) provides the court with authority to reject venue transfer requests that are not “interpose[d] timely.” The court writes:
TTI waited almost thirty days after TC Heartland and two months before trial to file a motion to transfer venue. The district court did not abuse its discretion in denying TTI’s motion to transfer venue under the circumstances here.
Here, a 30 day delay isn’t bad at all — except in the context of upcoming trial.
= = = =
Final note on the case and evidence. The defendant had petitioned the PTAB for inter partes review of the ‘966 patent. The PTAB however, denied institution. The district court allowed that denial to be admitted as evidence. However, the judge gave a limiting instruction to the jury — that the legal standards may differ. On appeal, the Federal Circuit found no abuse of discretion.
Looking for a way to reconcile the different approaches of different sovereign States to the distinction between eligibility and obviousness, I think I see a way.
English case law considers eligibility of an “invention” and that notion of an invention includes what Applicant is alleging to be the “invention”.
PCT Rule 5 imposes on applicants an obligation in their specification as filed to disclose their alleged invention in terms of a solution to a technical problem. If they fail to do this, they fail to disclose an “invention” eligible for patenting. How many applications as filed at the USPTO completely fail PCT Rule 5? A great many, I suspect.
Taking all this in aggregate, it seems to me that the CAFC’s eligibility methodology is defensible, even reasonable. And fully compatible with a separate 103 enquiry into obviousness.
101: is there at least an “alleged invention” disclosed?
103: Is the subject matter alleged in the application as filed to be a patentable invention truly so? Or is it instead simply obvious and therefore a Fail under 103?
Reconcile?
You do realize you that at times different choices by the different Sovereigns are things NOT to be reconciled, but each choice given its own respect and distinct understanding, eh?
Try it sometime.
Asked to define abstract, I offered: abstraction should be defined as the consumption of information by a human mind. No human mind, no abstraction.
Response: This restriction is nonsensical once we’ve past the historical point (a long time ago) where information can be “consumed” (not exactly sure what that even means, according to you, but feel free to explain it) by machines that were created purposefully as proxies for “human minds” (e.g., for the purpose of storing data, processing data according to logic instructions provided by human beings, and communicating data upon request).
Abstraction will always remains a synonym for intangibility or summary, and as such, extrinsic factors in a patentability analysis. Too-abstract claims are NOT the same things as claims which are intrinsically abstract.
MM: Either information is abstract and ineligible, or it isn’t. You can’t have it both ways
Having it both ways is the essence of politics, and we have a political problem.
You know exactly what I mean by human consumption. A human being does not consume MPEG encoding directly, nor would a human grind two lenses to a formula I described below as an exceptionally interesting subject matter.
MM your denial that Alice etc. are unworkable and basically unjust must stem fro no better answer, but the truth is that many, many stakeholders in the patent system will never give up trying to patent new, non-obvious, technically useful information.
My take makes more logical sense than yours in the face of that reality. Oy.
Marty,
You make the mistake of thinking that Malcolm is looking to make sense.
He is not.
ALL that he is doing is riding his hobby horse that innovations in the computing sense do not deserve innovation protection.
Nothing more.
It simply does not matter to him what the physical reality is when it comes to computing innovations (for example, that software is MERELY a design choice of the various wares when it comes to computing.
For all his rants about “just logic,” he
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m1serably when considering that ANY software innovation COULD BE claimed in an “objective physical structure” (albeit, such may well comprise tens or hundreds of physical media physical descriptions that would NOT be recognizable DIRECTLY by a human reader) – likewise, he
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m1serably in understanding that patent law EXPRESSLY covers what he merely deigns as “proxies.”
While YOU are wrong in so many things when it comes to patent law, YOU may be “excused” as NOT being an attorney (even as you also deserve to be denigrated for refusing to understand the terrain upon which you would choose to do battle – but that’s a different story).
Malcolm has no such excuse and should know better. His condemnation is thus much more severe, and deservedly so.
I don’t know know what you mean by “human consumption” in the context of claiming information and logic. Please define the boundary, since it obviously incredibly important to your proposal. What is the boundary? Give examples of information that is eligible. Compressed information? Surely you just. Information for grinding a lens? Again, sounds like a joke.
Alice is “unworkable” only because of the ridiculous exceptions that the CAFC has stuffed into it, Marty. Now you want to stuff in another one. So be precise.
Sorry MM, but you are incorrect at a fundamental level.
“Alice is “unworkable” only because of the ridiculous exceptions that the CAFC has stuffed into it”
SHOULD READ:
Alice is “unworkable” NOT only because of the ridiculous exceptions that the CAFC has stuffed into it, but because the Supreme Court themselves scrivened p00rly, and has created a sum total of Common Law law writing that is — itself — NOT ABLE TO BE rendered into a coherent set of laws.
We see the mess at the CAFC because of the mess of the Supreme Court.
The answer, of course is NOT “stuffing in another one,” but instead (as Tillis explored), REMOVING the mess already in place because of the overly-officious Judicial Branch of the government writing (and explicitly NOT interpreting) the “statutory” law that we have today.
Human consumption is not tricky. The purpose of a method is to achieve a useful result. When that result is only an item of information, there are two paths of utility. One path is when the information possesses meaning or value to a human being, and the passing of the information to the human being completes the infringement. A faster stock trade, a diagnostic method, or an indication that the garage door is up. That human value is completely abstract and should not be a subject of the patent system. Another path is when a non-human actor uses the information toward some further end. Yes, a compressed data file, or a coordinate set for a lens grinding machine, or operating parameters for a tire press.
Its pretty easy to identify the proximate consumer of information when you want to. A strong sight easier than Enfish or DDR Holdings or all the other contradictory and arbitrary holdings we have seen in 5 years.
Your “proximate” and “result” continue to show a lack of understanding of what utility means in the patent context.
ALL utility is concerned with the end result of being consumed by humans.
That is the bedrock of patent law.
1) That a process demands a result could not be more bedrock.
Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139 (1876) “That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed. . . . A process is a mode of treatment of certain materials to produce a given result”
As to your notion that all utility is the same, do you have anything other than hot air to back it up? A sharper knife is considered to be more useful than a dull knife, and the knife does not need to be used to realize utility.
Your post spouts items that do not back up your views.
And you want to accuse me of just having hot air….?
The chain is running out below but Greg continues to dig his heels in spite of RG’s valiant efforts to pull him out of the mud:
Maybe some subset of patent law could get something more demanding than rational basis review. What is your authority for the contention that any subset of this law actually does get reviewed under anything more exacting than rational basis? Right now, I am still fairly comfortable in my prediction that if the constitutional supportability of the proposed Tillis amendments are ever challenged, they will be reviewed for rational basis and will be upheld.
First, the “Tillis amendments” (if they pass — and that’s a big if!) are guaranteed to be challenged because they are appalling to right-minded people, including many (most?) patent attorneys. This online crowd of self-dealing entitled screechers may have convinced themselves that “it will all work out because of [hand wave extravaganza]” but pretty much everyone breathing oxygen knows otherwise. I will personally see to it that the general public is made aware of the name of every individual who supported this bill and who had the power to stop it. Because the general public is going to be disgusted by what this bill permits, and they are going to be disgusted by the disgustingly anti-democratic method in which this bill was presented in the first place.
Second, Greg (an actual patent attorney) is bizarrely confused by how a patent law could get reviewed under anything except a rational basis standard. Well, what happens when the law is challenged under the First Amendment, Greg? Reminder to everyone: the Mayo decision which the disgusting “Tillis proposal” is designed to “overturn” (hint: won’t happen) destroyed Prometheus’ claims because those claims protected the ineligible step of understanding the meaning of a piece of data (i.e., making a correlation) in a prior art context. If the Federal government handing out patent claims that give the government itself or selected private citizens exclusive rights to “new” FACTS and LOGIC doesn’t create a First Amendment issue with strict scrutiny review, then just turn the lights out on this miserable country. Get your head straight, Greg. Find some new friends. Whatever it takes.
The mere fact that we are having this discussion should be extremely troubling to normal people who value free speech and the right to use their minds (and prior art tools, pencils, papers, calculators) to analyze problems and understand the world we live in. Mayo v. Prometheus was an incredibly troubling fact pattern, which is why Breyer recognized and highlighted the issue even before they took the case.
“RG’s valiant efforts”
You help no one feeding some examiner’s delusional views of the law.
If you really were a diligent attorney, you would recognize such — no matter your own personal feelings.
Say: La Vee.
“Well, what happens when the law is challenged under the First Amendment, Greg? ”
We ALL are still waiting for you to do more than mouth “First Amendment” and provide an actual cogent First Amendment argument.
This post of Malcolm’s is even worse a second read through…
“I will personally see to it”
so Internet tough guy of you – what, this will be in that fabled “book” of yours…?
“because they are appalling to right-minded people, including many (most?) patent attorneys.”
Your FEELINGS clearly overcome any sense of reality – or did you miss the ACTUAL HEARINGS held by Sen. Tillis? Your “right-minded” is also clearly (and merely) a p00r reflection of your own “one-bucket” syndrome (a VERY Trump like attribute of yours). And we should most definitely be clear that your “many” is NOT to be confused with most patent attorneys (and I use ‘patent attorneys’ in the proper use of that term – which excludes the likes of Paul Morgan and others who do NOT attempt to work to create innovation protection for clients).
“disgusted by the disgustingly anti-democratic method in which this bill was presented in the first place.”
Really? Because the method in which this bill was presented was “anti-democratic?”
Your feelings really have pushed you off the deep end…
The year is 2019.
Alice — and worse its widespread misapplication — has gutted American innovation.
Would someone kindly provide a positively-recited (no “whatever isn’t tangible” baloney please), non-circular definition of “abstract.”
Anyone?
How about “significantly more“….?
significantly more“
The requirement for a claim to recite “significantly more” than an ineligible abstraction (e.g., an ineligible abstraction like “think about what this correlation means”) means that for the claim to be eligible “as a whole” it must recite something inventive and eligible in addition to the ineligible abstraction.
Got that? The “inventive” part is the “significant” part. The “in addition to” part is the “more” part. Add it up and you get “significantly more.”
This is pretty much how anybody willing to understand the facts and issue in Mayo would understand the case. There really isn’t any other way to interpret it, unless you desire to be confused.
Thank you for the comment.
No – your “version” here is nothing more than NOT taking the claim as a whole.
Try again.
Maybe tie the phrase directly to the words of Congress…
0h wait….
Hi Blogtr0ll! [waves to Pro Say]
Abstract means lacking objective physical structure.
If that isn’t good enough for you, then perhaps you need to find another area of law in which to practice. Or maybe an entirely different line of work.
Nothing has been “gutted” by the way. I’m sorry that you’re out of work. I’m busy as heck, and getting paid large sums of money to provide my clients with non-junk claims. Must have been a rough transition for you after Mayo, since you are apparently unable to think ahead or think much about anything other than taking your client’s money and running to the bank with it.
Correction:
“Hi Blogtr0ll! [Malcolm waves to Malcolm looking at himself in the mirror]”
The number one Malcolm meme of Accuse Others strikes again.
“Alice — and worse its widespread misapplication — has gutted American innovation.” Has it really? In what way?
A patent infringement suit/threat always involves an alleged infringer that does something, and a patentee that may not. If the patentee never implemented the invention and the alleged infringer never saw the patent, who is the innovator in this scenario?
“ If the patentee never implemented the invention and the alleged infringer never saw the patent, who is the innovator in this scenario?”
NS II – genuine question: are you a patent attorney?
The reason why I ask is that ALL patent attorneys should be well aware of the canard inherent in your question.
There is NO “I did not see someone else’s PUBLISHED patent” defense, and US patent law has NEVER required a “must use” provision.
NEITHER have anything to do with — as your question mistakenly implies — WHO is an innovator and who is not.
Yet again, you speak up with a most odd point.
Pro Say, abstraction should be defined as the consumption of information by a human mind. No human mind, no abstraction.
abstraction should be defined as the consumption of information by a human mind. No human mind, no abstraction.
This restriction is nonsensical once we’ve past the historical point (a long time ago) where information can be “consumed” (not exactly sure what that even means, according to you, but feel free to explain it) by machines that were created purposefully as proxies for “human minds” (e.g., for the purpose of storing data, processing data according to logic instructions provided by human beings, and communicating data upon request).
Either information is abstract and ineligible, or it isn’t. You can’t have it both ways. There are great reasons for keeping information from being protected by patents. They apply equally to information that is “consumed” directly by humans or written in languages for “consumption” by machine proxies for humans.
…”machines that were created purposefully as proxies for…”
LOL – time for that most awesome word for Malcolm:
Anthropomorphication
Not only are machines a named statutory category, machines DO NOT THINK.
Your whining “proxy” has NO place in patent law.
Random Guy, in 6.1.2.2.3.2.3 below, you stroll right up to the core problem with information:
“Look information is an intangible, so the information by itself is not eligible
There is zero logical basis for why novel information [presumably useful information] affixed to paper using known writing is per se obvious but the same novel information travelling through the air using known transmission methods confers patentability
No, there is not. Here is an interesting subject matter situation:
Spherical aberration has been an unsolvable problem in optics manufacturing from the beginning. We have useful approximations but they cannot eliminate it.
A physics student worked relentlessly on the problem, had the stroke of vision, and solved the problem with tremendous elegance and utility. The result is pure information, and he published it to the world, but should he have been able to patent it? I think policy wise, I would have no trouble with it.
link to science.slashdot.org
No human being could compute or use this information: only lens making equipment could actually use it. Its unclear that today’s conventional machinery could work unadapted, so there may be interesting sub-questions of eligibility at some point stemming from this discovery.
That, to me, is the critical phase change, as I have said many times already.
RG: There is zero logical basis for why novel information [presumably useful information] affixed to paper using known writing is per se obvious but the same novel information travelling through the air using known transmission methods confers patentability
In fact, the case law on the so-called “printed matter doctrine” (a subject matter eligibility test, as everyone in 2019 knows, including the CAFC) makes no distinction between paper and other forms of communicating information. Electronic displays, vocal communication, flags, billboards, televisions, radio, whistles … the so-called PMD applies to all these things. So, too, does 101, of course, because 101 (including the so-called “judicial exceptions”) and the Constitution are the drivers of the so-called PMD. It sure the heck isn’t Section 103!
As a side note, because I note more “confused” commenters downthread, not only is the mere conversion of a non-wireless communication system to a wireless system per se non inventive (and that’s been the case for a long, long time) but that legal fact isn’t altered by describing with particularity the type of data that is being communicated by the device.
Another note for the “confused” commenters: don’t run with the words that I’ve written and extrapolate into silliness, as you are so often prone to do (with my words, and the court’s words). I’m not saying that “anything which uses wireless communication is per se obvious” and I’m not saying that every claim which describes an improvement directed towards making a device wireless is obvious. What I am saying is that a claim in the form “Prior art communication device, except wireless” is definitely per se obvious. And has been for pretty much the entire lives of most patent attorneys who are alive right now.
All this is exactly as it should be, if the goal is to promote progress. If the goal is promote litigation and hand out rights to undeserving rich people, then all bets off, of course.
Please Pardon Potential (re)Post due to the Count Filter…
“the so-called PMD applies to all these things. ”
Funny, you seem to have forgotten ALL about the exceptions to that judicial doctrine in your hurry to hear yourself rant.
As I have already noted to you, whether you want to “st1ck” this as a 101 item or as a 103 item is quite besides the point of how wrong you are in attempting to ‘apply’ it.
“Another note for the “confused” commenters: don’t run with the words that I’ve written and extrapolate into si11iness,”
LOL – translation: pay no heed to that man behind the curtain (nor look too closely at the FALLACY of the ‘logic’ that I am using.
I would like to introduce a distinction to be employed when thinking about the “abstract idea” exception. This term really encompasses two analytically separable and meaningfully different concepts:
(1) “Abstract idea” as process that can be done entirely in one’s head/b>. Think, for example, of the hypothetical claim “a process comprising: thinking of a pink butterfly; thinking of a red dog; and dividing 1,567,980 by the square root of 11.” This is rightly excluded from patentability under §101 both because it is not “useful” and because it does not come within the statutory ambit of a “process” (“an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing,” emphasis added, Cochrane v. Deener, 94 U.S. 780, 788 (1877)).
In other words, when such a claim is refused or invalidated as an abstract idea, it is not because of an exception to the statute. Rather, the exclusion of this claim is simply an application of the statute. Considered according to this sense of the term “abstract idea,” there is nothing objectionable about excluding abstract ideas from patentability.
(2) “Abstract idea” as a claim to a functionality untethered to a particular structure for effecting that functionality. Regrettably, tethered to the wholly unobjectionable exclusion for “abstract ideas” discussed in #1 above has grown up a meaningfully different exclusion for the “abstract idea” of (e.g.) growing a garden. Consider, for example, the claim “a method for treating a cancer, the method comprising making 100 tumor cells to die per hour for every healthy cell that dies in the hour, and clearing the dead cell debris from the tumor environment.” This claim does not suffer either of the defects noted in #1 above—that is to say, this claim is incontrovertibly “useful,” and it consists of a series of acts, performed upon physical subject-matter to be transformed and reduced to a different state or thing. In other words, there is nothing “abstract” about this claim in practice. It will be painfully physical to enact.
The “abstract”ion—such as it is—consists in the fact that the claim does not specify a means to achieve its stated function. Therefore it reads upon all means that achieve this end.
It would be useful to keep this distinction in mind when discussing “abstract ideas,” so as not to fall victim to a fallacy of equivocation. That is really all that is at work here—an equivocation—when one classes both of these distinct concepts together under the heading “abstract idea.” The Supreme Court has done the law no great favors by using the same term to discuss both distinct concepts.
Your “ambit of process” is not complete, as it merely reflects the judicial gloss (even recognized by the Supreme Court as merely a clue).
Further, you are inserting a “physicality” requirement nowhere present in the words of Congress (and not even recognized as a requirement by the courts).
The process steps are “making” and “clearing.”
You are confusing yourself with a “Turtles all the way down” problem with wanting another layer (and merely purportedly for some type of “how”) to the positively recited process steps.
There is nothing that would prevent the application of that SAME logic to a claim WITH that additional layer, but now wanting the “how” of the actions IN that additional layer to themselves carry a layer of “how.”
Stop and think Greg — your logic induces an infinite series and CANNOT be correct.
It is JUST like the ill-advised desire to demand a “definitions section” in an application for words that appear in the claims.
ANY such definition section would necessarily be composed of…
… wait for it…
…. wait …
… wait …
…words.
And those very words would then NEED a definition section for the words that appear in the first layer of a definitions section.
Turtles all the way down.
You are confusing yourself with a “Turtles all the way down” problem with wanting another layer (and merely purportedly for some type of “how”) to the positively recited process steps. There is nothing that would prevent the application of that SAME logic to a claim WITH that additional layer, but now wanting the “how” of the actions IN that additional layer to themselves carry a layer of “how.”
“Derp derp derpity derp derp derp DERP derp DERP derpity derp DERP”
Kids, the above gibberish from Bildo is reason 43,095 why you should stay away from hard drugs, and also why you should stay away from glibertarianism. It’s also why the patent maximalists will continue to lose. Forever. They are rotten people. Shame on them. And shame on Dennis for letting them clog up his comments section with drivel like this, for years. Dennis should know better.
Yay! Malcolm has nothing cognitive to say, so he pulls out his Derp Dance!
Wheeeee
Greg/Dozens, I like this comment better than most because you are trying to eliminate confusion rather than create it, or simply to complain that “it’s all too confusing.” We really do have the ability to educate people, provided that they want to be educated.
For sure, the term “abstract idea” is unfortunate because all ideas are abstract, by definition (even “concrete ideas” are abstract — there actually is no concrete there, folks, and “concrete ideas” don’t weigh more and aren’t more “solid” than “half-baked ideas”, at least from the perspective of the patent system).
The least ambiguous way to approach the problem of at least this one form of subject matter ineligibility is to identify abstract subject matter (or abstractions) in the claim. Abstractions are just that: abstractions. “Things” that don’t have objective physical structure. That includes information and logic, in addition to more specific categories (dreams, sentences, diagrams, legal/quasi-legal status (including “authorized”, “copyrighted”, “permitted”, “password protected”) etc.).
An easy and totally legal and proper analysis under 101 is simply to identify the ineligible abstraction first then ask: is there anything inventive and eligible in the claim other than this abstraction, or is the claim just adding an ineligible abstraction to a prior art context. If the latter, then the claim is ineligible.
The analysis can get more complicated when the abstraction being protected isn’t “spelled out” in plain language but is instead buried in the claim language. A familiar example of this would be a “system” for organizing a business where nothing physical is changed but the relationships and flow of information/money between existing entities is changed. In cases like this, the challenger of the claim will need to work marginally harder to identify the “abstraction.” But it’s still a do-able task and shouldn’t confuse a decent attorney or judge.
Note that this summary doesn’t include all flavors of ineligible subject matter. There is still the flavor of subject matter where the claim recites the detection or transmission of information relating to previously unknown (but still ineligible) natural phenomenon (e.g., a DNA sequence, a Greenland oil well, an Amazonian frog), where the detection method encompasses prior art detection methods. Those claims, too, are ineligible because they effectively protect the natural phenomena (by preventing people from looking at them or communicating about them using prior art, public domain or properly licensed tech methods).
Lastly, with respect to the claiming of ineligible “functionality”, these sort of failings are best described, I think, by calling them out for what they are: claims that protect ineligible functionalities. The “abstraction” in those claims is the functionality. As RG (and I) have noted repeatedly: you can not protect functionalities with patent claims. You an protect new structures that perform functions, and you can protect new transformative methods that achieve results. But you can’t protect a “new” functionality or a “new” result on its own term (unless the “result” itself is a new structure that can be claimed on its own terms) without those aforementioned features. At least, that’s how the system was set up to work before the CAFC decided to create ridiculous, nonsensical exceptions in the computer context.
The Supreme Court has done the law no great favors by using the same term to discuss both distinct concepts.
Sorry, I see that I stopped this post too soon. I had not yet proposed a more clear set of terms.
To my mind, it would be useful if—when people are discussing the “abstract ideas” category—folks would keep clearly in mind whether they mean to discuss the category #1 above (what you might call “it’s-all-in-your-head abstractions” or “h-abstractions”) or category #2 (what you might call “unspecified abstractions” or “u-abstractions”).
It seems to me that even Alice-skeptics like myself can acknowledge the unpatentability of h-abstractions because they do not satisfy the statutory “useful” requirement. My beef with Alice is that it dealt with a u-abstraction, and u-abstractions are not necessarily §101 noncompliant. If fact, near as I can tell the u-abstraction in Alice did satisfy §101. The u-abstraction in Alice deserved to fail, but under §112(a), not §101.
It seems to me that even Alice-skeptics like myself can acknowledge the unpatentability of h-abstractions because they do not satisfy the statutory “useful” requirement.
This is a terrible path to go down, Greg. And you give the game away by putting the term “useful” in quotation marks. Exactly what meaning are you purporting to give to the term so that it does all of the work that you want it to do? Information is useful. Logic is useful. These things are incredibly useful. The problem with these things isn’t their lack of utility. It’s their lack of any objective physical structure.
Now, if you’ve got some coherent defensible legal position that “useful” means something very different from its ordinary meaning, then let’s hear it.
Adding: beyond the lack of objective physical structure, the other magnificently enormous problem with patenting information and logic — recognized long long long ago — is that these things are too useful in the sense that they are fundamental and necessary for any system of knowledge to progress. That’s why they are excluded.
[and try to wrap your ahead around the “cognitive dissonance” of self-professed glibertarians demanding that the Federal government (!) hand out patent rights on information and logic; funny, funny, funny stuff but … that’s glibertarianism for you … truly the d-u-m-b-e-s-t people on the planet, bar none]
I remain concerned that the “inventive concept” inquiry under § 101 sometimes seems to effectively function as a less developed (and thus potentially more subjective) version of the “obviousness” inquiry under § 103. This is troubling, even if the correct result vis-a-vis invalidity (or patentability) is frequently reached in individual cases.
In this case, the Court notes that “[t]he only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly, in order to overcome certain undesirable disadvantages of systems using physical signal paths—additional cost, exposed wiring, and increased installation time.” Slip op. at 5-6.
This would appear to present a straightforward question of obviousness. In particular, if “[t]he only described difference between the prior art movable barrier operator systems and the claimed movable barrier operator system is that the status information about the system is communicated wirelessly,” slip op. at 5-6, the question would seem to be whether it would have been obvious to modify a prior art movable barrier operating system to utilize a known method of “wirelessly communicating status information about a system.” Slip op. at 5.
Instead, the Court had to muddle through § 101 jurisprudence to conclude that “claim 1 is directed to wirelessly communicating status information about a system,” slip op. at 5, and “find that no inventive concept exists in the asserted claims sufficient to transform the abstract idea of [wirelessly] communicating status information about a system into a patent-eligible application of that idea.” Slip op. at 10.
Here, the Court had to make a judgment call regarding whether *application* of the identified idea of “wirelessly communicating status information about a system,” slip op. at 5, to a movable barrier system represents “‘an inventive application’.” Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2358 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80 (2012)).
While the conclusion that there is no inventiveness in this application of this idea may have been easy to reach, this will not always be the case, and there is not a lot of guidance for distinguishing between inventive and non-inventive applications.
Where, as here, a claim is simply alleged to be directed to an idea that is in the prior art, it seems like any concerns that the claim does not represent an inventive application of that idea could be addressed more consistently by just considering whether “the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains”. 35 U.S.C. § 103.
Good observation. Yes, they seem to be relying on 101 as a low-effort way to apply what is essentially a rejection over obviousness. By invoking the ghost of Alice and chanting the incantations of the Abstract to do their magic, the wizards avoid the toil and trouble of establishing obviousness. No need to argue literature and give your patent-holding opponent numerous opportunities to defend the patent. Ka-zaam, it’s over with one wave of the abstraction wand.
Another poop decision by the Court. Their telling statement, “The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan (i.e., whether it lacks novelty)…” goes to the heart of why Alice should have stayed lost in the woods rather than leading others through a Myriad of Mayo. The Court has lost its way.
Rick: Their telling statement, “The appropriate question is not whether the entire claim as a whole was “well-understood, routine [and] conventional” to a skilled artisan (i.e., whether it lacks novelty)…” goes to the heart of why Alice should have stayed lost in the
This is just another empty content-less gripe. What are you talking about? There is nothing controversial about what the CAFC is saying here. This is a claim that presents a clear eligibility problem (because it involves an otherwise ineligible “step” of communicating data that is described according to its “non-obvious” content). Of course the eligibility of the claim can’t be decided based on an analysis which includes consideration of the novelty of the ineligible subject matter itself. That would be a self-defeating pointless test, and it would allow any claim that recites novel data content to be eligible (because, by definition, something “new” can’t be routine).
This seems self-evident to me and many other reasonable patent attorneys. If you are confused, let me know what’s confusing you and I will happily explain further.
Of course, you have to be careful not to conflate an identified abstract idea (here, “wirelessly communicating status information about a system,” slip op. at 5) with a particular application of that idea (here, “wirelessly communicating status information about a movable barrier operator,” slip op. at 10).
While the abstract idea itself should not be considered for purposes of the analysis, one must consider (and in fact it is arguably the entire point of the step 2 analysis to consider) whether application of the identified idea is “‘an inventive application’.” Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2358 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80 (2012)).
How did a claim broad enough to cover sending a wireless signal that any door is open or closed pass a 103 test in the PTO? Are there no prior patents or publications on such signals receivable on cell phones from any prior burglar alarm systems?
[I got a “wireless” signal that my old garage door closed every time, because it closed with a loud bang.]
Also note that electrical signals of garage doors being open and closed were already universally available – they have to be, to shut the garage door motor off.
Note that the CAFC here appears to believe that adding a backup power supply was “inventive.”
Wrap your head around that one.
Who would have thunk that configuring things like a mere three basic elementary particles (and doing so ONLY according to the Laws of Nature) would ever yield anything “inventive”…
THAT is the “logic” you are engaging in Malcolm.
You are hiding behind a “Ends justify the Means” denial of the changes that Congress enacted in the Act of 1952 to put a stop to an anti-patent Supreme Court and that Court’s malfeasance with “Gist of the Invention” (or dozens of other like sounding terms).
Try being a bit more inte11ectually honest about patent law history.
Looks like it went from having TWO anticipating references to allowed without comment by the examiner.
“Also note that electrical signals of garage doors being open and closed were already universally available – they have to be, to shut the garage door motor off.” Maybe on a fancy garage door opener. Mine just pulls/pushes based on a timing circuit.
Consider “How…a claim broad enough to cover sending a wireless signal that any” Internet of Things device action or status passes.
BTW If your garage door closes with a loud bang it may need adjustment for safety. Garage door openers must reverse (by standards/regulations/laws) when hitting an obstruction including the ground, independent of other sensors such as the photocells. But you are sort of close in that the loudness of a garage door opener is recognized by a segment of people as a signal that somebody may be leaving or returning home. That loudness is a primarily result of AC motor 60 hz harmonics, confounded with loose/inexpensive (affordable) bearings rails and squeaky panels. Almost all GDO’s at that time were AC powered.
That leads to at least one enablement issue with the 966 patent that seems to me to be “merely do it with a battery” and offers nothing more. It’s a big deal now because by law in California all new GDO installations must have battery backup (ie DC motors).
If this movable barrier operator is not patent eligible, then an Examiner can now rely on this case to invalidate anything that moves, powers, controls, or communicates with anything else.
Is the court implying, on page 9, that “well-understood, routine [and] conventional” can be established by mere lack of novelty?
NON-precedential.
Yes, and that’s the correct result. The CAFC had been improperly relying on dicta when they came up with their silly “conventional and routine” test.
A lack of novelty of the physical structures (or transformative steps) in a claim Can not possibly qualify as an “inventive concept” that can rescue a claim whose only novel element is an ineligible abstraction.
This was all predicted by the way. It was predicted here, by me, in these blog comments. And it wasn’t a difficult prediction. It’s basic reasoning.
Your “basic reasoning” is also directly wrong – as the current legal situation exists, Malcolm, as prior CONTROLLING panels have already expressly stated otherwise — AND while you allude to this, YOU are simply wrong with the plain meaning of what “conventional” entails. Bottom line is that conventional REQUIRES more than merely not novel and more than merely obvious. If the Supreme Court wanted to use those direct words (and the ensuing necessary legal meaning of those words), then they SHOULD HAVE used them.
They did not.
You must be wrong – and THAT is basic reasoning.
Now I “get” that your feelings intrude and that you feel that the law should be something other than what it is, but PLEASE stop being Trump and @$$uming that your feelings MUST be how the world is.
Oddly (as well), you AGAIN want to overplay your insistence on treating the optional claim format of “objective physical structure” as something that is not optional.
OT, but is there a website around that predicts which AU your application will go to?
That “other blog” had an article or two on how to “direct” your applications away from “no patent for you” art units.
Juristat has such a tool, but they require a subscription. I am not aware of a free tool for that purpose.
since it proposed a new garage door opener “that includes an integrated controller and a wireless transmitter to transmit a status signal.” Nothing of record in the case provided evidence that such a setup was “well-understood, routine and conventional to a skilled artisan.”
Wireless communication from a device with an integrated controller wasn’t well-understood at the time of filing? Really? (answer: of course it was well-understood)
Oh but wait! This is a “garage door opener.” That changes everything because garages and wireless communication were understood to be totally incompatible.
That’s “in the record”, right?
[crickets]
Bottom line here: nothing remotely inventive in the physical components. And the information communicated by the controller can’t provide the inventive step because both the information and the communication of that information are ineligible abstractions.
Somehow this is confusing? If so, it isn’t the Supreme Court’s fault. It’s the fault of the CAFC and their ridiculous attempts to get around the Supreme Court, and it’s the fault of the patent maximalists and tenured professors who do nothing except contribute to the confusion. Heckuva job.
Based on your analysis, it seems like you think the rejection should have been based on 103 rather than 101. Correct? I would suggest that any kind of “do it on a computer” invention for applications filed after around 2000 (or even sooner in many cases) would be better off rejected under 103 rather than 101 unless there were clear difficulties with the invention that were specifically computer related. After all, an “inventive concept” is most similar to obviousness in other jurisdictions.
I would suggest that any kind of “do it on a computer” invention for applications filed after around 2000 (or even sooner in many cases) would be better off rejected under 103 rather than 101 unless there were clear difficulties with the invention that were specifically computer related.
LOL
I agree that most “do it on a computer” claims are obvious and could also be rejected under 103. But that doesn’t make 103 “better”. In fact, 103 is decidedly worse for everybody because of the judicial activist “tests” that were introduced to permit otherwise obvious subject matter to overcome the test. Note that some of those “pro-patent” judicially created tests are completely opposite to the plain language of the statute (e.g., the use of post-filing considerations to determine non-obviousness, which by statute is determined at the time of filing).
The other problem with 103 applied to “do it on a computer” inventions is that the abstract nature of those claims and the flexibility of the English language used to describe “new” abstractions (among other issues) makes it extremely difficult for the PTO to properly examine the claims for “obviousness”. That’s one of the reasons we had such massive amounts of junky obvious claims coming out of the PTO and it’s that pressure (among other things, like some terrible CAFC decisions) that led to increased reliance on 101.
Lastly, subject matter eligibility considerations aren’t going anywhere. It’s a real thing. You can’t protect information with a patent. You can’t protect logic with a patent. Those things are ineligible abstractions. The legal issues that the courts have been grappling are whether you can protect information “on a computer” (that’s been resolved without too much controversy: definitely NOT) and whether you can protect logic “on a computer” (in some cases, almost everyone agrees that you cannot; it’s the scope of the exclusion that is “debated”, although I must say the proponents of “logic on a computer” patents are uniformly the worst and least intellectually honest debaters out there). Likewise, literally nobody believes that you can patent “A method of instructing computer, comprising typing instructions wherein said computer can read and carry out the instructions, wherein said instructions comprise the steps of blah blah”. That’s also ineligible, and it’s not a controversial proposition. Go figure. I’m sure you’ve thought a lot about this stuff already before bothering to comment here.
Thank you for the comment.
“extremely difficult for the PTO to properly examine the claims for “obviousness”. That’s one of the reasons…that led to increased reliance on 101.”
That’s called conflation and YOUR portrayal of this as somehow “ok” is called obfuscation.
The Ends do NOT justify the Means.
Your “on a computer” is also objectively false – as the previous counter points that I and others have put on the table for discussion have shown (counter points that you REFUSE to acknowledge and integrate into the discussion in any sense of inte11ectual honesty).
Points like: the Simple Set Theory explication of the exceptions to the judicial doctrine of printed matter, the fact that one cannot “just use” a computer (for software innovation) until that computer is first configured with that design choice of wares(which calls out your canard as reflected in the put-down of Big Box of Protons, Neutrons, and Electrons) – and which also calls out the PROPER patent doctrine of inherency AND the Grand Hall experiment.
“proponents of “logic on a computer” patents are uniformly the worst and least intellectually honest debaters out there”
To paraphrase the Federal Circuit – “We feel that the claimed garage door opener is obvious, but we’re too lazy to do the obviousness analysis, so we find the invention is patent ineligible. Alice and Mayo allow us to do this. If you don’t like it, tough ti**ies.”
“We feel that the claimed garage door opener is obvious, but we’re too lazy to do the obviousness analysis
Not what happened. What happened is that defendants smartly recognized the eligibility issue and their able patent attorneys made the better arguments (not that those better arguments were particularly difficult to make … especially if you read the comments section of this blog regularly where at least one commenter has been making the better arguments for so long that his opponents were forced to engage in payola before the US Senate where they will also ultimately fail to achieve what they are seeking).
If the patentee had provided some evidence that the non-abstract and non-eligible subject matter in the claim was itself inventive (i.e., non-obvious) they might have gotten somewhere. But they couldn’t do that. “Wireless” hasn’t been inventive for a long, long, long time. But y’all knew that already, right? Because you’re very serious people and you really “understand the tech”. Right? C’mon. “Take a stand”, why don’t you? Let’s hear the argument that “wireless” is inventive as of the filing date of this junk patent.
[crickets]
I think Gottlieb has said it all except I would add, “And we were selected by SV because we don’t like patents.”
That’s a completely inaccurate characterization.
This is plainly the correct result and it’s very easy to understand why.
And yet, here’s Dennis Crouch, a tenured professor at a substantial law school, with this hot take: Chamberlain’s Garage Door Opener invalid as an Abstract Idea
Why run with this title, Dennis? Do you think it’s amusing?
Serious question.
You know that it’s misleading and confusing to a lot of not-so-intelligent attorneys, right, as well as law students, and the public. Right? Or do you want to argue otherwise?
Because right below the headline in your own post you come much more closer to an accurate description of the legal issue: the claims are invalid as directed toward the abstract idea of “wirelessly communicating status information about a system.”
To any halfway educated patent attorney, that is a profoundly different statement of what’s going on here. Nobody anywhere during the course of this case argued that a “garage door opener is an abstract idea.” Nobody. So Dennis Crouch the Missouri Law Professor is just telling lies to satisfy his most intellectually stunted and dishonest commenters. Heckuva job, Dennis!
The legal problem with the claim is that the claim described only (1) an old garage door opener (a prior art apparatus) and (2) an ineligible abstraction (“a status condition signal”) that could not be claimed on its own terms in any patent system in the world, including the United States. This claim, as the Federal Circuit plainly explains, therefore illegally protects ineligible subject matter in a prior art context. That’s not permitted. Why is it not permitted? It’s not permitted because permitting such claims would make the entire concept of subject matter eligibility superfluous. Why is that? Because anybody can salt any claim protecting an ineligible abstraction with the recitation of some prior art context (e.g., “in a city”) or step (e.g., “while drinking coffee”).
So … when are you going to admit that you understand this, Dennis? Please grow up, act like the professor that you allegedly are and either admit that you understand this or describe what part you find confusing. Because you aren’t helping anybody and you just come off like an smarmy @-s-s who doesn’t really care one way or the other because “you got yours”.
Where in the statutes can I find this “in a prior art context” that seems do pivotably important to your rants?
… are you by chance attempting to use the patent doctrine of inherency (in some ham-fisted manner)….?
Where in the statutes can I find this “in a prior art context”
The only reasonable way to interpret 101 so that it does any work at all and so that it isn’t an unconstitutional mess is to interpret it in exactly in the manner that the Supreme Court interpreted it in Mayo.
A subject matter eligibility screen that doesn’t take into account the prior art doesn’t actually screen anything. If you can’t take the prior art into consideration, all you’ve done is create a tiny hurdle of a claim drafting formality and anybody can scriven right around whatever eligibility screen you had in mind.
Mayo was a predictable 9-0 decision, by the way. Also predictable (and predicted, by intelligent reasonable people not including your hero Big Jeans, or Kevin N00nan) was the fact that the patent system kept right on working and innovations continue to be made and protected right up to this very moment.
But go right ahead and pretend that somehow the rest of the patent statutes (including whatever activist judge-created doctrines that you deem to be perfectly fine, unlike the ones that are the worst things ever) can pick up the slack. That’s always good for a laugh. Go ahead. You’re a very serious person.