Chamberlain’s Garage Door Opener invalid as an Abstract Idea

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.

185 thoughts on “Chamberlain’s Garage Door Opener invalid as an Abstract Idea

  1. 26

    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?

    1. 26.1

      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.

  2. 25

    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.

    1. 25.1

      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
      F
      A
      I
      L
      S
      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
      F
      A
      I
      L
      S
      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.

    2. 25.2

      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.

      1. 25.2.1

        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.

      2. 25.2.2

        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.

        1. 25.2.2.1

          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. 25.2.2.1.1

            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.

            1. 25.2.2.1.1.1

              Your post spouts items that do not back up your views.

              And you want to accuse me of just having hot air….?

  3. 24

    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.

    1. 24.1

      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.

    2. 24.2

      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.

    3. 24.3

      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…

  4. 23

    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?

      1. 23.1.1

        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.

        1. 23.1.1.1

          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….

    1. 23.2

      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.

      1. 23.2.1

        Correction:

        Hi Blogtr0ll! [Malcolm waves to Malcolm looking at himself in the mirror]

        The number one Malcolm meme of Accuse Others strikes again.

    2. 23.3

      “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?

      1. 23.3.1

        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.

      1. 23.4.1

        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.

        1. 23.4.1.1

          …”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.

      2. 23.4.2

        – traffic lights and you STILL are not grasping the very basics of patent law and how utility is to be understood.

  5. 22

    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.

    1. 22.1

      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.

      1. 22.1.1

        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.

  6. 21

    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.

    1. 21.1

      Your “ambit of process” is not complete, as it merely reflects the judicial gloss (even recognized by the Supreme Court as merely a clue).

    2. 21.2

      Further, you are inserting a “physicality” requirement nowhere present in the words of Congress (and not even recognized as a requirement by the courts).

    3. 21.3

      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.

      1. 21.3.1

        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.

    4. 21.4

      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.

    5. 21.5

      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.

      1. 21.5.1

        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.

        1. 21.5.1.1

          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]

  7. 20

    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.

    1. 20.1

      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.

  8. 19

    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.

    1. 19.1

      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.

      1. 19.1.1

        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)).

  9. 18

    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.

    1. 18.1

      Note that the CAFC here appears to believe that adding a backup power supply was “inventive.”

      Wrap your head around that one.

      1. 18.1.1

        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.

    2. 18.2

      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.

    3. 18.3

      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).

  10. 17

    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.

  11. 16

    Is the court implying, on page 9, that “well-understood, routine [and] conventional” can be established by mere lack of novelty?

    1. 16.2

      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.

      1. 16.2.1

        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.

    1. 15.1

      That “other blog” had an article or two on how to “direct” your applications away from “no patent for you” art units.

  12. 14

    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.

    1. 14.1

      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.

      1. 14.1.1

        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.

        1. 14.1.1.1

          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

          – typical, trite, and ultimately merely self-defeating Accuse Others meme of yours…

  13. 13

    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.”

    1. 13.1

      “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]

    2. 13.2

      I think Gottlieb has said it all except I would add, “And we were selected by SV because we don’t like patents.”

  14. 12

    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”.

    1. 12.1

      Where in the statutes can I find this “in a prior art context” that seems do pivotably important to your rants?

      1. 12.1.1

        … are you by chance attempting to use the patent doctrine of inherency (in some ham-fisted manner)….?

      2. 12.1.2

        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.

        1. 12.1.2.1

          Pardon Potential (re)Peat due to count filter…

          Nice deflection. Now answer the question put to you.

    2. 12.2

      Dennis — so how many more times are you going to allow Moonbeam to defecate on you and all over your otherwise superb IP resource before you finally decide to join Gene Quinn in flushing the toilet?

      Just imagine the chorus of new voices from superb IP professionals we would all benefit in hearing from were this scourge removed.

      Just imagine.

      1. 12.2.1

        Hear hear! The ad hominem attacks are enough to shut the guy down.
        I don’t like to tell others what to do or comment much on here, but I think at some point Dennis must draw the line and stand up for himself.
        This is supposed to be a professional site – and the readership is probably 95% patent attorneys and agents.
        I’d love it if the comment board wasn’t anonymous in that respect. Then maybe someone could just report the instigators to their respective bars. I’d love to see an attorney have to defend themselves for calling someone a “smarmy @-s-s” on a professional site. Funny how tough people get sitting behind their keyboards.

        1. 12.2.1.1

          Dennis must … stand up for himself.

          LOL Really? Nobody else around here does that except for me and RG and few other people. Why should it be any different for Dennis?

          Dennis is perfectly free to pretend that nobody on the planet exists except for himself and the patent maximalists and a bunch of “confused” Supreme Court Justices who write perfectly sensible 9-0 decisions which are then punched full of exceptions by the CAFC.

          For example, if Dennis believes that correlations and other useful facts should be eligible for patenting if they are placed in a prior art context, he should just come right out and say so, straight up.

          If Dennis believes that claims to methods of detecting “non-obvious” objects and phenomena using old detection methods should be eligible for patenting, he should just come right out and say so.

          If Dennis believes that ineligible logic and instructions should be eligible for patenting if a computer can follow the instructions, then he should just come right out and say so.

          If Dennis believes that new card games and new methods of bilking bank customers out of their money and new logical methods of keeping data secret should be eligible for patent protection, he should just come out and say so.

          And he should explain why he holds those beliefs.

          That’s what “standing up” looks like. You should try it yourself sometime.

          As with many other “commenters”, Dennis likes to express his wishes occasionally (“some software should be patentable”; “this detection method should be patentable”) but when pressed on details regarding the scope, implications or implementation he tends to skitter away.

        2. 12.2.1.2

          Funny how tough people get sitting behind their keyboards.

          Maybe I missed something but this entire discussion was started because some “tough people” filed a lawsuit and dragged other people into Federal Court based on a claim that recites a garage door opener with a (LOL) “status transmitter.”

          Those “tough people” are, quite plainly in my opinion, a bunch of greedy @ h0les and I’m glad their junk patent got tanked.

          [shrugs]

          But go ahead and defend those claims, “tough guy.” We’re all super impressed.

          1. 12.2.1.2.1

            You are deflecting again with wanting a “defend these claims,” when the issue is all about the Means by which the (your desired) Ends have come about.

    3. 12.3

      Being from Europe, I am inclined to agree with MM, that the title is unfortunate. That’s because here in Europe there is intense debate about how to assess “the invention” for eligibility: is “the invention” the contribution to the art that one finds in claim 1; or is it the thing defined by the claim as a whole, the thing put forward by the claim as a whole as “the invention”.

      So, suppose the claim is directed to an electric motor operated garage door opener characterized in that it includes a “status condition” and an “identifier”. For the EPO, the claim is eligible because it is directed to a real thing, part of which is an electric motor. At the EPO, you can indeed say that Chamberlain’s garage door opener is eligible.

      But anywhere where the contribution approach rules ie USA, it is misleading, because eligibility is not set by the preamble of the claim but by what one derives from the claim as the contribution to the art.

      Many in the USA who crave more patents also want the EPO approach. Numbered amongst them, I daresay, are many of the people surrounding Dennis. But until the USA swings into harmony with the EPO approach, there is I think, something of substance in MM’s criticism of the title.

      1. 12.3.1

        here in Europe there is intense debate about how to assess “the invention” for eligibility: is “the invention” the contribution to the art that one finds in claim 1; or is it the thing defined by the claim as a whole, the thing put forward by the claim as a whole as “the invention”.

        This isn’t a “debate”. This is a purely rhetorical game being played by a group of people who want to expand patent eligibility (or who don’t want to see it contracted in any way). How do you deal with people like that? You don’t “debate” them. You just point out how ridiculous their position is and you provide examples. If they can’t address the examples, then the game is over. And the game has been over for A LONG LONG TIME for these people. Unfortunately we have people like Dennis who have allowed themselves to be pawns in the game. It’s quite sad, actually. Things used to be different. He got his wrist slapped at some point is the simplest explanation.

        IF you want to disallow patent claims that protect certain kinds of subject matter AND you don’t want to put any meaningful restrictions on how those claims are written (e.g., all you have to do is describe a useful process or useful thing), then, logically, you MUST be able to compare those claims against the prior art to see what is actually being protected in whatever prior art context may be recited in the claim. This is not a rebuttable point. I mean, go ahead and rebut it if you think it’s rebuttable. You will fail, but if you need to try then go ahead and try. Please. Go right ahead.

        After you fail, I will repeat the question: what is this “debate” you are referring to? I don’t see any “debate”, since there is no logical room for disagreement over the issue you presented.

        If you want to debate what kinds of subject matter should be eligible for protection with a patent, that is an entirely different kind of debate. That’s a policy question and it should be answered by marshalling evidence, and by asking the public what they think (i.e., politics). It shouldn’t be answered with the response that “we just have to give these entitled whining rich @ h0les whatever they want.”

      2. 12.3.2

        MD, kicking up dust for no reason at all:

        suppose the claim is directed to an electric motor operated garage door opener characterized in that it includes a “status condition” and an “identifier”. For the EPO, the claim is eligible because it is directed to a real thing, part of which is an electric motor. At the EPO, you can indeed say that Chamberlain’s garage door opener is eligible.

        This is nonsense. The EP does the same analysis as the CAFC did here. They look at the prior art and they look at the claim to see what was added to the claim to get around the prior art. If the claim recites a “real thing” that was in the prior art (e.g., “a phone with a communicator”) and a “limitation” that reads “wherein the communicator sends a message to another phone regarding the user’s underwear status”, the EPO is going to come back and say that is latter limitation “is not a technical effect.”

        Same logic. And the same result: the claim is dead.

        Are there distinctions at the margins between the EPO and US? Of course. Different human beings, working with the same vague rules.

        But the logic of the analsyis doesn’t change, unless you want to radically change the patent systems and the manner in which claims are written. So please stop pretending otherwise.

      3. 12.3.3

        There is no substance – you merely agree with Malcolm’s (errant) feelings.

        Even your own version of “do it the EPO way because those are the glasses I wear” is quite crabbed here, with you admitting eligibility only after waffling about some “current great debate.”

        Additionally (even as you have always — weakly — denied it), your “great debate” “contribution versus claim as a whole” view mirrors the long trending de minimus Jepson claim format of the US.

        You appear to long for a “long-ago” state that even your own EPO largely does not hold as far as the eligibility question squarely presents. And how do YOU get there? It appears merely by feelings and a lack of understanding that Malcolm’s views are driven by feelings.

      4. 12.3.4

        [A]nywhere where the contribution approach rules ie USA, it is misleading…

        This rather begs the question. The very point of the debate is whether the (as you name it) “contribution” approach is U.S. law. It is not self-evidently true that we actually have a “contribution” approach here (as evidenced by the fact that U.S. academics like Kevin Collinson urge that the U.S. should adopt a “contribution” approach). In fact, U.S. subject matter eligibility law is so hopeless confused by now that it is hard to say much of anything clearly and truthfully about U.S. subject matter eligibility law.

        1. 12.3.4.1

          U.S. academics like Kevin Collinson urge that the U.S. should adopt a “contribution” approach

          How is “look to see whether there is something inventive in the claim beyond the ineligible abstraction” not a “contribution approach”?

          1. 12.3.4.1.1

            Good question, MM! What else is the US approach but a “contribution” approach to eligibility?

            I’m asking myself why, over and over again, you mis-characterize the EPO’s technical character/technical effect allocation between eligibility and non-obviousness. I think it must be because you are apprehensive that, as a result of relentless pressure from the patent maxi’s, and seduced by the ease with which the established case law of the EPO vaults so cleanly the successive hurdles of eligibility and obviousness, the US might adopt “technical character” as the test for eligibility, but without also adopting the EPO approach to obviousness. I agree with you on that: it is a nightmare scenario, because the integrity of the EPO approach hangs on their being applied in tandem.

            But it is nevertheless naughty of you, and disrespectful of you (Dennis please note) knowingly to mis-characterize the EPO approach, over and over again. At the risk of boring readers like anon, who have heard this from me countless times, at the EPO, and to put things right for new readers, the notion of a technical effect is part of the analysis of obviousness under the problem/solution approach, and is NOT involved in the EPO’s enquiry into eligibility.

            It is beyond this thread to debate whether it is conceivable that the USA could adopt the EPO problem/solution approach to the enquiry into, to use your words:

            “…whether there is something inventive in the claim beyond the ineligible abstraction””

            I continue to watch, to see what settled approach to eligibility will eventually emerge, in the USA. And then, what you do about the disaster that is the enquiry into obviousness.

            1. 12.3.4.1.1.1

              MD, still digging: I’m asking myself why, over and over again, you mis-characterize the EPO’s technical character/technical effect allocation between eligibility and non-obviousness.

              You should definitely stop asking … because I’m not mischaracterizing anything. Feel free to go ahead and assert otherwise until you are blue in the face, MD, if it makes you happy. You have already lost the argument a dozen times. None of the serious commenters here agree with you.

              Analytically, the EPO approach is indistinguishable from the US approach (with the acknowledgement of minor distinctions at the margins). That shouldn’t surprise anybody because, as a matter of basic logic, if you don’t put restrictions on the manner in which inventions are claimed, then you necessarily have to engage in the same logical analysis to determine whether the improvements over the prior art are improvements that are eligible for protection within the system. The words you use to refer to the failure of a claim to pass that test are essentially arbitrary. You could say “You are protecting ineligible subject matter in a prior art context so the claim is ineligible” or you could say “We ignore this improvement as a non-permitted non-technical effect.” But the logic is the same.

              I’m sorry if this is above your head, MD. But get used to it being over your head and stop crying about it. Or stop being a dishonest hack. Your choice.

              1. 12.3.4.1.1.1.1

                Thanks for that answer.

                One thing is for sure, MM. Your words only reinforce the impression that you have no grasp of how the issues of eligibility and obviousness are explored at the EPO. So with your assertion that “analytically” the EPO approach is “indistinguishable” from the US approach, all you are doing is talking to yourself.

                I think what you want to say is what the English judges constantly aver, when comparing the English approach with the EPO, that it comes down to the same thing in the end, that anything not in the nature of a combination of technical features that solves in a non-obvious way an objective problem in a field of technology has to be denied patentability. But as you yourself point out at 14.1.1, the 103 obviousness enquiry has been rendered so complex that it is no longer fit for that purpose so, for the essential filtering effort, the “heavy lifting” must, of necessity, be shouldered these days by the 101 eligibility enquiry. As a practical matter, it’s the only available way, in the USA. This much at least, I believe I do understand.

                1. Your words only reinforce the impression that you have no grasp of how the issues of eligibility and obviousness are explored at the EPO.

                  LOL – MaxDrei, the same thing applies to Malcolm’s grasp of US patent law.

                  Not sure how you want to “politely” put that, but YOUR attempts to “understand” ANY conflation of 103 and 101 is d00med to failure.

          2. 12.3.4.1.2

            I give up. My long and painstaking answer blocked by the filter. What a waste of time, contributing here.

            1. 12.3.4.1.2.1

              Particularly since certain people know exactly how to get around the filter with their @d homin1ms.

              1. 12.3.4.1.2.2.1

                I’m not without hope of my filtered-out offering appearing belatedly. It would not be for the first time. I imagine Dennis can review what the filter caught, and let it through, if it pleases him so to do. Might depend how busy he is today, with other things.

                Mind you, I did include a note of criticism of Dennis. Perhaps that’s what caught the attention of his filter.

                1. Mind you, I did include a note of criticism of Dennis.

                  ?

                  Was this your criticism OF Dennis:
                  But it is nevertheless naughty of you, and disrespectful of you (Dennis please note) knowingly to mis-characterize the EPO approach, over and over again

                  Your asking Prof. Crouch to note Malcolm’s naughty and disrespectful (but sadly only too typical) mischaracterization game is a criticism of Crouch…?

                  Methinks you do not know what that word “criticism” means.

        2. 12.3.4.2

          … academics like Kevin Collinson urge…

          Yikes. I mistyped Prof. Collins‘ name. How embarrassing. My apologies.

    4. 12.4

      This is plainly the correct result

      For the millionth time, the Ends do not justify the Means (especially in law).

  15. 11

    Hilarious to watch the games being played here by the usual “confused” suspects.

    This was an easy case. Dennis Crouch is so “confused” he just flat out lies to his readers in the title of his post (yet somehow accurately manages to summarize the straightforward analysis in the commentary below — which is the exact same analysis that’s been applied to 99% of these ineligible cases before AND after Mayo/Alice).

    GregDeLassus plays the game of being “confused” by the eligibility statute as written. Of course, “as written” the eligibility statute prevents nothing that is “useful” from being eligible for patenting. Why is that? Because “as written” — as everyone knows — the statute literally says that any useful process is eligible for patenting, and any useful manufacture is eligible for patenting. That would include useful methods of thinking about stuff (absurd and unonstitutional) and useful books with new information in them (absurd and unconstitutional). It could even include useful “manufactured” signals comprising non-obvious facts, like light waves and sound waves (absurd and unconstitutional). Was Greg born yesterday? He sure acts like it. But maybe he was at some secret meeting when Congress decided that all these things should be eligible. Sure he was.

    And then we’ve got Les who apparently can’t even be bothered to read the claim, and who is apparently incapable of making the simplest analogy possible. What if the claim was to a method of using a piece of paper (an article of manufacture!) to communicate a non-obvious fact “related to computer prices”. Is that patent eligible? Who believes that? Literally nobody except some @ h0le patent attorneys.

    1. 11.1

      Strawman much?

      Your last paragraph is an inane attempt to NOT recognize the meaning of the judicial doctrine of printed matter (and the attending exceptions to that judicial doctrine).

      It’s as if you are willfully and woefully ig nor ant of what have been provided to you in the simple and direct explication of the Simple Set Theory.

      And yes, we both know why you refuse to engage that explication, and instead would prevaricate (yet again).

      For all of your bluster for calling out certain academics for the way “they phrase things,” your duplicity is stultifying.

      1. 11.1.1

        the meaning of the judicial doctrine of printed matter (and the attending exceptions to that judicial doctrine).

        Yes, it is a subject matter eligibility test. That’s not a debatable point (unless you are an in s@ne idi 0t, or an @ h0le).

        1. 11.1.1.1

          You are STILL not recognizing the meaning of the judicial doctrine (and the importance of the exceptions to that judicial doctrine).

          Jumping up and down and wanting to declare it to be an eligibility doctrine is entirely NOT on point.

          But you already know that, eh?

    2. 11.2

      ” What if the claim was to a method of using a piece of paper (an article of manufacture!) to communicate a non-obvious fact “related to computer prices”. Is that patent eligible? ”

      Yes. Whether it is anticipated or obvious is, of course, another matter.

      Of course this tirade directed at me has nothing to do with what I said in the post at 7. Why not take a breath and read it again. It is a whole sentence long; well two sentences long if you count the quote, so pace yourself.

  16. 10

    How many times must patent law be swallowed until the patent patient is dead and swallowing is no longer possible?

    1. 10.1

      I’m swamped with patent prosecution work and 101 is the least common of the rejections that I see. So whatever is being “swallowed” it’s not patent law.

      Seems to me like what’s being “swallowed” is incredibly junky logic and information claims. That’s a good thing. My clients don’t like being sued over these junky claims. And my family doesn’t like footing the bill for the lawsuits.

      Of course, if you are wealthy or have a cushy tenured job at a substantial state university then maybe this all seems like an abstraction for you. A lot of people suffer from that kind of near-sightedness in this country. Maybe try growing up and getting outside of your bubble for a change.

      1. 10.1.1

        I’m swamped with patent prosecution work and 101 is the least common of the rejections that I see.

        contrast with:

        a guy like me who merely has a biochemistry Ph.D. and a law degree and 20 years of experience dealing with the utility patents in the computer arts.

        Which is it? Or perhaps a better question, what exactly do you mean by “experience dealing with”

        CLEARLY, that experience is NOT in trying to obtain innovation protection for clients.

        1. 10.1.1.1

          CLEARLY, that experience is NOT in trying to obtain innovation protection for clients.

          No, that experience is opinion drafting and (in the old, old pre-Alice days) enforcing on behalf of tr 0lls. Successfully, I might add.

          What point were you trying to make?

  17. 9

    “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”

    Sounds like a great 103 argument. But its relevance to 101 is like the peace of God: it surpasses all understanding.

  18. 8

    So what is the difference between the step 1 and step 2 prongs again? I thought you dont compare to prior art under the first prong, just the second. The Alice test feels more and more circular every day.

    1. 8.1

      Look, it’s really simple. Step 2 (in the nomenclature of the courts) has no “prongs”, and involves the conventionality of the elements. Step 1 has two prongs: Prong 1 asks whether the claims “recite” an idea. Prong 2 asks whether Iancu would think the claim should be eligible or not.

      Easy.

      1. 8.1.1

        asks whether Iancu would think the claim should be eligible or not

        Is THAT what your training told you? Is THAT what you write in your Office Actions?

        Or are you just being an arse?

        1. 8.1.1.1

          Is THAT what your training told you? Is THAT what you write in your Office Actions?

          Or are you just being an arse?

          Yes. No. I’d say he’s being a little cheeky.

          1. 8.1.1.1.1

            Cheeky for sure, or maybe the hole in the middle, but your first two answers are incongruent.

      2. 8.1.2

        Step 1 has two prongs: Prong 1 asks whether the claims “recite” an idea. Prong 2 asks whether Iancu would think the claim should be eligible or not.

        hahahahaha

  19. 7

    “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”?”

    In other words, if you take away an element that makes the combination of elements an invention, what elements remaining in the claim may be regarded as the invention?

  20. 6

    “CGI argues that the ordered combination of the as-
    serted claims’ elements provides the inventive concept be-
    cause “there is no evidence in the record” that “a new type
    of movable barrier operator that includes an integrated
    controller and a wireless transmitter to transmit a status
    signal” was “well-understood, routine and conventional to
    a skilled artisan.” Appellee’s Op. Br. at 28 (citing Berk-
    heimer, 881 F.3d at 1368). CGI misunderstands our case
    law. The appropriate question is not whether the entire
    claim as a whole was “well-understood, routine [and] con-
    ventional” to a skilled artisan (i.e., whether it lacks nov-
    elty)”

    It’s nice to see this arguement so clearly put to bed.

    I’m sure that attorneys will be still billing their clients to make this argument six months from now.

    1. 6.1

      This is like Ptolemaic epicycles. Find a problem in the whackadoo model you promote? Don’t abandon the model, just add one more whackadoo layer of complexity to it.

      “Routine & conventional” has taken on a life of its own as a point about which we can endlessly argue, despite the fact that neither word makes any appearance in §101. Even if we can now regard this aspect of the “routine & conventional” analysis settled, I can guarantee with nearly apodictic certainty that this refinement on the “routine & conventional” analysis will merely engender new vistas of nonsense about which to argue, because it is nonsense all the way down.

      35 U.S.C. §101 only articulates three requirements:
      (1) the claimed invention must be “new”;
      (2) the claimed invention must be “useful”; and
      (3) the claimed invention must be characterized as a ” process, machine, manufacture, or composition of matter.”

      Everything that Congress meant to accomplish with §101 can be achieved by analyzing one of those three aspects of the claimed invention. If one wanders the §101 analysis off into epicycles of “what is the claim ‘directed to’?” or “is there sufficiently more beyond the abstract idea?” or “is that ‘something more’ too ‘routine & conventional’ to amount to an ‘inventive concept'” then one is just doing the analysis wrongly. “New,” “useful,” and four categories—that is enough.

      1. 6.1.1

        Greg – close.

        There is NO “new” requirement in 101 because Congress expressly deals with that actual requirement in 102 and 103.

        Your misstatements here merely conflate that which Congress explicitly separated.

        Judge Rich wrote on this very thing.

        1. 6.1.1.1

          How do you decide which of Giles – ‘A diaper service is non-statutory’ – Rich’s opinions inform how to interpret patent law?

          1. 6.1.1.1.1

            Take all of his writings as a whole and recognize the historical evolution as the ideas saw his experiences on the bench.

            It helps as well not to be wed to a “patents are bad” mindset at the beginning (so that you do not overly glom onto things that became more clarified over time).

      2. 6.1.2

        “This is like Ptolemaic epicycles. Find a problem in the whackadoo model you promote? Don’t abandon the model, just add one more whackadoo layer of complexity to it.”

        This sounds as applicable to Alice as it is to pre-KSR 103.

        1. 6.1.2.2

          I am not sure how analogous are the complaints that one might legitimately raise against Alice to those one might legitimately raise against pre-KSR obviousness law. The statutory requirements of §101 are fairly straightforward on their face. The Court had to work to make §101 problematic.

          By contrast, the statutory standard for §103 is facially problematic. It is defined in terms of this imaginary “person having ordinary skill in the art,” so first we must decide what characteristics this imaginary person does and does not have. Then, even, after we come a decision about those characteristics, we have to ask whether she considers the claimed invention to be “obvious” (a question that is often hard to answer even for a real person). We do not get to ask this imaginary person any questions about what she knows/thinks/considers, because she is imaginary.

          In other words, it seems to me fair less meaningful a criticism to note that courts have made a hash (at times) of §103 than to note that they are making a hash of §101. It is perhaps unavoidable that §103 will be messy, but that is no reason to make §101 messy as well.

          With all that said, I will nevertheless concede (in the words of In re Yates, 663 F.2d 1054, 1056 n.4 (C.C.P.A. 1981))

          The Solicitor, relying upon In re Aller, 42 C.C.P.A. 824, 220 F.2d 454, 105 U.S.P.O. 233 (1955), argues that it is “not unobvious to discover optimum or workable ranges by routine experimentation.” In many instances, this may be true. The problem, however, with such “rules of patentability” (and the ever-lengthening list of exceptions which they engender) is that they tend to becloud the ultimate legal issue — obviousness — and exalt the formal exercise of squeezing new factual situations into preestablished pigeonholes. Additionally, the emphasis upon routine experimentation is contrary to the last sentence of section 103.

          1. 6.1.2.2.1

            The requirements of the TSM test and Alice are both extra-statutory judicial doctrines used to patch a rotten law.

            I wasn’t trying to make a broader point so much as responding to your complaint about adding layers of complexity to deal with a whackadoo model.

          2. 6.1.2.2.2

            The Court had to work to make §101 problematic.

            That’s called Legislating from the Bench, and there have been many posts elucidating the many Constitutional Infirmities with the actions of the Supreme Court (including Separation of Powers, Void for Vagueness, and Advisory Opinion violations).

          3. 6.1.2.2.3

            The statutory requirements of §101 are fairly straightforward on their face. The Court had to work to make §101 problematic.

            Only if you view the constitution’s grant of authority to Congress as unlimited. What if Congress wrote 101 with no utility requirement. I suppose you’d say “Well its not in there, so it must be extrajudicial to add it” as if the constitution doesn’t place any requirement on the use of the patent power.

            Courts interpret statutory language to avoid a constitutional problem all the time, it’s a cannon of interpretation. The fact that Congress wanted to allow the patenting of anything under the sun made by man simply means congress expended their maximum authority in forming the statute, not that Congress’ authority is absolute. Congress never gets to say the extent of Congress’ authority, that’s kind of how the whole separation of powers thing works.

            With all that said, I will nevertheless concede (in the words of In re Yates, 663 F.2d 1054, 1056 n.4 (C.C.P.A. 1981))

            Presumably you also concede that the printed matter doctrine is of the exact same kind of extrajudicial drivel that you accuse Alice of. As is nonstatutory double patenting. As are mental steps. As is the current standard of if means-plus is invoked.

            I ask you, what makes less sense in a “consider the claim as a whole” mandate – that some limitations are considered *less important* in an analysis because they are routine and conventional, or that some limitations, even entirely novel ones, are wholesale ignored simply because they happen to be affixed in a particular medium?

            1. 6.1.2.2.3.1

              The hypocrisy of the maximalist position in this regard has been laid at their feet for years. They just ignore and keep screeching.

              1. 6.1.2.2.3.1.1

                There is NO such hypocrisy as Random is quite out of his league on matters of law – he is out of his league on the patent law (of which he is supposed to examine to) and is totally out of his league on Constitutional law.

                And you are simply not equipped to even know the difference.

              2. 6.1.2.2.3.1.2

                Please Pardon the Potential (re)Post due to the count filter…

                There is NO such hypocrisy as Random is quite out of his league on matters of law – he is out of his league on the patent law (of which he is supposed to examine to) and is totally out of his league on Constitutional law.

                And you are simply not equipped to even know the difference.

            2. 6.1.2.2.3.2

              Only if you view the constitution’s grant of authority to Congress as unlimited.

              Which, for all intents and practical purpose, it is as regards the present discussion. Remember, the Congress’ powers under Art. I, §8, cl. 8 are reviewed under rational basis scrutiny. Golan v. Holder, 132 S. Ct. 873, 889 (2012). No approach to substantive patentability that any actual Congress might actually enact is ever going to fail to pass constitutional muster under that standard of review. The idea that the (so-called) “judicial exceptions” to §101 are a matter statutory construction in the service of constitutional avoidance is an interesting idea, and it has a lot of support in dicta, but it is ultimately untenable in view of the Golan holding. Clearly you want to proceed as if (what we might call) the “Stevens” hypothesis is true, but I am not willing to play along with that game when there is so little reason to do so.

              Presumably you also concede that the printed matter doctrine is of the exact same kind of extrajudicial drivel that you accuse Alice of. As is nonstatutory double patenting. As are mental steps. As is the current standard of if means-plus is invoked.

              Er, no, I do not concede that. Printed matter/mental steps, ODP, improper Markush rejections and the like are all necessary to the well-functioning of the patent system, and can all be supported as penumbrae of the statutory text. The “judicial exceptions” (when rightly understood and rightly applied) are simply straightforward applications of the text as written. The Alice two-step approach to the application of the “judicial exceptions” is just nonsensical hooey that mostly serve to frustrate rather than apply the statutory text.

                1. “In matters of statutory construction the duty of this Court is to give effect to the intent of Congress… .” Flora v. United States, 357 U.S. 63, 65 (1958). Meanwhile, “statutory language has meaning only in context… [and c]ourts have a duty to construe statutes, not isolated provisions.” Graham County v. U.S. ex rel. Wilson, 559 U.S. 280, 289 (2010). Therefore, when interpreting the patent statutes, the courts need to be mindful not only to give effect to the ends that Congress intends to further with Title 35, but also not to create obstacles to the ends that Congress intended to further with other statutory provisions (such as Title 17).

                  Congress created patent law with a 20 year term of enforcement and no exceptions to liability. Congress created the copyright law with a 70+ year term and many exceptions (fair use, first sale, etc). Therefore, it is important for the courts—further to their duty to give effect to the whole U.S. code—to police the boundaries between copyright and patent law. Although one cannot point to any specific line of text in either Title 35 or Title 17 that sets out the printed matter doctrine, the statutory necessity of a printed matter doctrine arises from the very fact that Congress enacted both Title 35 and Title 17. The courts do not defy the statute or even enlarge the statute, but rather give effect to the statutes as a whole by enforcing the printed matter doctrine.

                2. Sorry, Ben. I wrote you a reply, but it is caught in the filter. Hopefully it will come through eventually, because it was too long for me to try to retype it from memory.

                3. Thank you for taking the time to reply.

                  I am initially perplexed because there seems to be overlap in IP protection schemes. A program’s source code can be copyrighted while a CRM with it’s functionality patented, right? Branding materials can be trademarked in isolation, and then copyrighted when include in a particular expressive image, right? A ornamental design indicating source can be design-patented and trademarked, right? How can the printed matter doctrine be necessary to implement the combination of IP protection schemes in that context?

                  It also seems like the PMD excludes material that already isn’t copyrightable. The MPEP says that a “electrical wiring information” on a measuring tape is non-functional printed matter. But if it’s just wire gauge conversions or a resistor color guide, that material wasn’t copyrightable anyways. So why is it necessary to exclude that material to “give effect” to 17 USC and 35 USC?

                  It seems like it isn’t about copyright, but rather that the PMD is just necessary to exclude stuff textually patentable but that the right people know wasn’t meant to be patented. But isn’t that exactly what some people say about Alice? Why isn’t Alice just implementing patent law the way it’s “supposed to be” implemented.

                  I suspect you’d say it’s because 112/103 could be used to resolve the problematic subject matter currently addressed by 101+Alice. Why doesn’t this also undermine the PMD? We could interpret 112 such that we give written description rejections to “a book comprising a story about three pigs”, because no application will ever show possession of every story with three pigs. We could interpret 101 such that the inclusion of specific non-functional compositions are not “useful improvements” to known devices and reject under 101.

                4. Ben,

                  You should know that I posted a simple and direct explication of the judicial doctrine of printed matter — and the important exceptions to that doctrine over on the Hricik side of the blog and nigh countless links and even reposts on this side of the blog.

                  Of course you know this, as you are the person that “upvoted” Malcolm constantly back in the DISQUS days, so your “wonderment” here comes across as more than a bit disingenuous.

                5. Greg: [The printed matter doctrine exists]… to police the boundaries between copyright and patent law.

                  Ben: I am initially perplexed because there seems to be overlap in IP protection schemes.

                  You are perplexed? Welcome to my world. I used to hope that the law would make sense when view from a more global perspective (and of course it does to some limited extent), but I have learned not to expect complete coherency. Different points of law are sometime mutually contradictory, as will often be the case in a distributed system run by humans spread out over both time and geography. Suffice it to say, if you care to trace the printed matter doctrine back to its earliest case law antecedents (Guthrie v. Curlett, 10 F.2d 725, 727 (2d Circuit 1926)), you will see that it is about policing the boundaries between copyright and patent.

                  If you mean to say that it does not serve it practice to police those boundaries very rigorously, I will not contradict you. It would also be true to say that it has taken on a life of its own (as judge made doctrines are wont to do), and now gets puts to use (often a manner salutary to the overall functioning of the system) for purposes other than policing the boundaries between copyright and patent.

                  Still and all, its core function remains the work of policing those boundaries (however inefficiently). My point is that this core function genuinely derives from the statutes considered as a whole, even if it is not possible to point to this or that line of the statutes as establishing the doctrine.

                6. Ben, your observations and critiques of Greg’s response to your question are spot on.

                  The so-called printed matter exception is a subject matter eligibility exception. It has nothing to do with “avoiding overlap with copyright” because copyright law ALSO does not permit the protection of logic and useful information (e.g., facts, correlations, on their own terms, as opposed to some expressive embodiment of those abstractions). Ultimately it’s a First Amendment issue and gets right to the core of what the government is entitled to own (or give away to private citizens). At least, we should all pray that it is or the super rich glibetarian @ h0les out there will literally take everything under the sun and make us pay rent or risk jail time for it).

                7. Greg, thanks for the cite to Guthrie.

                  However I can’t read it as being about policing the copyright-patent boundry. Yes, they tangentially mention that information content is copyrightable. On the otherhand they harp on information content not being patentable subject matter.

                  They pretty explicitly dissect the claims by disregarding the information content and considering the inventiveness of what remained. I was sincerely taken aback reading it. Guthrie has a proto-Alice invalidation!

                  Returning to your point about implementing the PMD based on reading the statutes as a whole, I think I understand your point but remain unpersuaded.

                  I understand that statutory interpretation can lean on contextual factors. Are not those contextual factors weighted well below the explicit language of the statute? The PMD defies the plain wording of 103: “…if the differeneces between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious…”. So the PMD defies the statute to achieve an implicit goal of the statutes. Sounds exactly like Alice. The difference between the PMD and Alice is that Alice isn’t old and is messy. The latter is an argument against Alice’s particular implementation rather than the philosophy behind the basis for invalidity.

                8. Thank you, as ever, Ben, for a typically thoughtful reply. I have two comments to offer in response, for whatever little either might be worth.

                  (1) I can’t read [Guthrie] as being about policing the copyright-patent boundry. Yes, they tangentially mention that information content is copyrightable. On the other hand they harp on information content not being patentable subject matter…

                  This seems to me like a distinction without a difference. Policing the boundaries between copyright and patent is necessarily an exercise in subject matter eligibility. I believe that everyone agrees around here that the PMD is a kind of subject matter eligibilty test. In any event, it seems we agree this far, so I do not have much more to say on that point.

                9. (2) The PMD defies the plain wording of 103.

                  I see RandomGuy advances this same argument at 3.3.1.3. Suffice it to say, I am not convinced that this reflects a correct interpretation of §103 when §103 is construed in view of the whole Title 35. To make that point more clear, let us consider the actual words of §103 when the other statutory sections are properly considered. Title 35 provides a list of definitions of various terms in §100. Let us take those definitions and swap them into their respective locations in the §103 text. In so doing, we get the following:

                  A patent for a claimed inventionsubject matter defined by a claim in a patent or an application for a patent may not be obtained, notwithstanding that the claimed inventionsubject matter defined by the claim is not identically disclosed as set forth in section 102, if the differences between the claimed inventionsubject matter defined by the claim and the prior art are such that the claimed inventionsubject matter as a whole would have been obvious before the effective filing datethe filing date of the earliest application for which the patent or application is entitled, as to such inventioninvention or discovery, to a right of priority… or to the benefit of an earlier filing date of the claimed inventionthe subject matter defined by the claim to a person having ordinary skill in the art to which the claimed inventionthe subject matter defined by the claim pertains. Patentability shall not be negated by the manner in which the inventioninvention or discovery was made.

                  N.B., the text of §103 never actually uses the phrase “claim as a whole.” Rather, the actual phrase in the statutory text is “claimed invention as a whole,” which actually means “subject matter as a whole” when §103 is construed in view of the §100 glossary.

                10. So, what does “subject matter” mean? I have two thoughts to offer on that question.

                  First, clearly whatever “subject matter defined by a claim” means, it cannot mean just “the words in the claim.” If that is all that were meant by “subject matter,” it would be much more to-the-point for §100(j) simply to say “the words in the claim” rather than “the subject matter defined by a claim.”

                  Second, the best way to know what a term means in a statute is to consider how the term is used in the rest of the Title. To wit, 35 U.S.C. §8 provides that “[t]he Director may revise and maintain the classification by subject matter of United States letters patent, and such other patents and printed publications as may be necessary or practicable, for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed,” (emphasis added).

                  It is clear that search classification scheme is not organized merely by words (one does not search prior art for a claim to a “computer” in the “C” section of the index, merely because “computer” starts with “C”). Rather, the classification scheme is ordered by technical content. A search to a claim for a new computer would begin in an index devoted to electronics, because computers are electronic apparatuses. That suggests that “subject matter” really means “technical content,” as distinguished from literary content, or ornamental content.

                  In other words, when put totally into context in view of Title 35 as a whole, the words of §103 tell us that we must consider the technical content as a whole that is defined by the claim. That is to say, the literal words of §103 do not actually prohibit—even in their literal reading, when considered as an organic part of the whole Title 35—discounting the literary or ornamental when assessing obviousness.

                11. [T]he literal words of §103 do not actually prohibit—even in their literal reading, when considered as an organic part of the whole Title 35—discounting the literary or ornamental when assessing obviousness.

                  As I re-read this, I see that—when considered as an organic part of the whole Title 35—the literal words of §103 positively require that one discount the merely literary or merely ornamental elements of the claim when assessing obviousness.

                12. My favorite author, Flannery O’Connor, once wrote that “I write because I don’t know what I think until I read what I say.”

                  I realize in looking back over my posts of this morning that my 22 Aug, 1:50 pm remarks do not really jibe with my 24 Aug remarks. I leave it to intelligent and disinterested readers (to whatever extent that they care) to decide whether either the 22 Aug or the 24 Aug remarks make sense, and if so which is more convincing than the other. Maybe if someone has comments on either line of thinking, that will help me to “know what I think.”

              1. 6.1.2.2.3.2.2

                Greg, always circling the truth but never admitting it:

                Printed matter/mental steps, ODP, improper Markush rejections and the like are all necessary to the well-functioning of the patent system, and can all be supported as penumbrae of the statutory text. The “judicial exceptions” (when rightly understood and rightly applied) are simply straightforward applications of the text as written.

                This is nonsense, Greg. You literally aren’t saying a darn thing here except “Wah wah I don’t like the result.” If you believe, as you just admitted, that the “judicial exceptions” are legitimate and that patent claims should not be allowed which protect the “judicially excepted” subject matter, then please explain how that “judicially excepted” subject matter is to be screened out in your magical world where the Mayo/Alice reasoning does not exist.

                Start with the judicial exception for “abstraction”, which includes useful information. Give some examples of claims written by a skilled drafter that protect information in a prior art context. How does your “preferred” analysis eliminate those claims?

                Thank you in advance. You’re a very serious person and I’m sure you’ve thought very deeply about this already. Should be easy for you. It should also be easy for you to address the obvious follow-up questions that you will be asked should you choose to remain opaque in your reasoning. Good luck. After all, my friend, these fundamental questions are never going to go away. Ever.

              2. 6.1.2.2.3.2.3

                Remember, the Congress’ powers under Art. I, §8, cl. 8 are reviewed under rational basis scrutiny.

                I’m not a big believer in Golan (whose holding was that it is rational to improve dissemination in order to improve creation) over, say, Deere Section II. But your argument simply missapprehends law generally. The fact that a general class of law may be subject to rational basis review does not mean that there are not subsets of the class subject to strict scrutiny.

                That judicial exceptions content’s fundamental nature implicates other constitutional considerations. For example, it may only require rational basis to allow congress to control new business methods, but to give congress the power to control fundamental business practices in a new context has the effect of granting congress control over all commerce, not merely interstate commerce. Congress has no power to, e.g. prevent states from coining their own money and engaging in their own banking, but those who are anti-Alice allow for precisely that.

                No approach to substantive patentability that any actual Congress might actually enact is ever going to fail to pass constitutional muster under that standard of review.

                The facts already belie your logic – The court decided Morse. Then Congress passed the 52 Act and the AIA. Either the 52 Act and the AIA intended to concede to the logic of Morse – in which case Alice is statutory, as the statute text, properly constructed, agrees with Morse – or they did not concede to Morse and the Supremes went ahead and decided Mayo and Alice anyway.

                Printed matter/mental steps, ODP, improper Markush rejections and the like are all necessary to the well-functioning of the patent system, and can all be supported as penumbrae of the statutory text.

                Ah, so like anon the distinction is not a legal one but a “I would like to substitute my judgement for that of the Supreme Court’s.” Obviously the Supremes feel the judicial exceptions are “necessary to the well-functioning of the patent system” and “can all be supported [by] statutory text.” You disagree. That’s fine.

                The Alice two-step approach to the application of the “judicial exceptions” is just nonsensical hooey that mostly serve to frustrate rather than apply the statutory text.

                The reason this claim was allowed was because, once someone else invented the transmission of information, this inventor claimed transmitting information with particular content. The “frustration” that occurs to the system is with the attorney generating a claim that does not reasonably describe what the advancement to the art is – the particular content of information – by including limitations that are unrelated to the alleged advancement. This person did not invent a garage door controller, so the question of whether a garage door controller is concrete or abstract (it is obviously concrete) is irrelevant. That is not what THIS applicant seeks to have invented. THIS applicant sent particular information, and for that the office concluded he had a non-obvious invention. IT WILL ALWAYS BE THE CASE that obviousness will fail to protect the public from this type of “new fact information” claim, so the problem is systemic in nature, and thus requires a systemic fix. You may disagree with the court about whether this information should be protectable, but it is hardly due to the two-part Alice process or whether information is an abstract intangible.

                It makes very little sense to nominate ineligible judicial exceptions but then turn around and say “If you just write 100 claims that put the judicial exceptions into already-known situations we’ll let you have all 100 of those claims.” It makes even less sense when you have a system like “Look information is an intangible, so the information by itself is not eligible. But if you use known methods to transmit that information, it is eligible and non-obvious. But if you use other known methods to write that information down, it is eligible, but obvious.” There is zero logical basis for why novel 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.

                And yet if the Court’s holding was instead “the content of information travelling through a transmission medium is per se obvious” we would reach the same result of unpatentability for the same reason – the addition of particular information doesn’t make an otherwise conventional system patentable – it would fly just as much in the face of the statute (just 103, not 101), and you would defend it as necessary to the functioning of the system.

                1. [Y]our argument simply missapprehends law generally. The fact that a general class of law may be subject to rational basis review does not mean that there are not subsets of the class subject to strict scrutiny.

                  O.k., that is fine. 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.

                  The court decided Morse. Then Congress passed the 52 Act and the AIA. Either the 52 Act and the AIA intended to concede to the logic of Morse – in which case Alice is statutory, as the statute text, properly constructed, agrees with Morse – or they did not concede to Morse and the Supremes went ahead and decided Mayo and Alice anyway.

                  Congress codified Morse—in §112. Alice was wrongly decided not because it reached the wrong conclusion (claims invalid), but because it decided the matter under the wrong statutory provision.

      3. 6.1.3

        “Process” is the problem Greg. You know that. Anything people do can be characterized as a process. There have to be limits.

        The Chancery of Me disposes of this case easily.

        Is it a method? Yes

        Does completing the method produce only information?

        Yes

        Is the infringing utility gained by human consumption of the information?

        Yes.

        It’s ineligible.

        1. 6.1.3.1

          The Chancery of Me disposes of this case easily.

          Is it a method? Yes

          Er, no. The claim was not to a method.

          Claim 1:

          A movable barrier operator comprising:

          1. 6.1.3.1.1

            This “barrier operator” claim does recite a method step, however.

            the wireless status condition data transmitter transmits a status condition signal

            In fact, that method step is the only “limitation” that distinguishes the claim from the prior art.

            Really top notch drafting work, the high quality we’re all used to by now from the super professional “do it on a computer/controller” crowd. They’re very serious people!

        2. 6.1.3.2

          The Chancery of Me

          That may be as bad — or worse — than the Holy Order of the Almighty Supreme Court.

      4. 6.1.4

        Greg, as long as you are sticking to the text, “claimed invention” is not found anywhere in USC 101.

        USC 101 requires that a person “invents or discovers” something. If I assign abstract meaning to a ‘signal,’ did I invent or discover anything?

        So we have to ask ourselves: did a person “invent or discover” something in this case? They didnt invent or discover the garage door, we know that. They did assign meaning to a ‘signal’ emanating from the garage door– e.g., “if a sock is on the door knob, that means the dorm room is occupied by people fornicating.” Is that an invention or discovery?

        Thats where “routine and conventional” and “inventive concept” come from, textually. Its the first four words of the statute.

  21. 5

    “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”

    This can’t possibly be true, can it? If it is, how could these claims survive an obviousness challenge? I’m pretty sure wireless information transmission was available to the garage door arts in 2003.

    1. 5.1

      This can’t possibly be true, can it? If it is, how could these claims survive an obviousness challenge?

      Because nobody ever used a device to send “status information” before, you silly goose. If you want more laughs, read further down the post:

      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.

      Maybe the “garage door opener arts” are just super unpredictable! Sure, that must be it. Probably a ton of teaching away from using back up batteries for garage door openers. They might explode! Or something. Rechargeable batteries are really like alien rocket science for a guy like me who merely has a biochemistry Ph.D. and a law degree and 20 years of experience dealing with the utility patents in the computer arts.

      As you ponder this, remember that the maximalists want to expand the system further to permit claims that protect information like medically relevant correlations. Because the system works so awesomely with garage door openers! LOL

      1. 5.1.1

        “A guy like me who merely has a biochemistry Ph.D. and a law degree and 20 years of experience dealing with the utility patents in the computer arts.”

        BAHAHAHAHAHAHAHAHHAHAHAHA!!!

        link to axios.com

      2. 5.1.2

        At least “medically relevant correlations” may be unpredictable and much more unexpected and certainly less known than status information regarding a garage door opener. A garage door has three possible states: open, closed, and somewhere in between. Medically relevant correlations might mean one thing in one disease, and something completely different in another disease, and yet something else in non-diseased. The combinations are almost infinite in medical conditions, hence, maybe they shouldn’t be lumped together with things like garage door statuses.

        1. 5.1.2.1

          A garage door has three possible states: open, closed, and somewhere in between.

          LOL

          Sure. Like “healthy”, “not healthy” and “somewhere in between.”

          Funny stuff. Can we get some serious people here that have spent more than five seconds thinking about the issues and why we don’t allow claims to abstractions and information? This is what I’m talking about, Dennis. Instead of muddying the waters, you could try to educate your readers about the basics. Of course, I’m assuming you have an understanding of the basics or a desire to understand the basics. Maybe that’s too big of an assumption.

        2. 5.1.2.2

          “A garage door has three possible states: open, closed, and somewhere in between. ”

          What about mechanically stuck, depowered opener, overheated motor, broken torsion spring, or safety interlock blocked?

          1. 5.1.2.2.1

            The garage door would still be in one of three states when those characteristics, problems, or errors are observed or noticed.

            Those are all sub-states or conditions related to the three states.

            1. 5.1.2.2.1.1

              Those are all sub-states

              Sometimes I don’t know whether to laugh or cry.

              The bottom line here is that correlations are abstractions, whether they are “expected” correlations or “unpredictable” correlations. They aren’t eligible for protection with patents for good reasons that has nothing to do with their “predictability” and everything to do with their nature as abstractions.

  22. 4

    The CAFC, making it sound easy because it is easy:

    In other words, beyond the idea of wirelessly communicating status information about a movable barrier operator [i.e., beyond the ineligible abstraction that could not be claimed on its own terms], what elements in the claim may be regarded as the “inventive concept”?

    Let’s just note for the record that if just two people in Missouri had ever used a “movable barrier operator with a controller” before this patent was filed, that would be enough to destroy any argument that a “movable barrier operator with a controller” was “an inventive concept.” The utter lack of “routine-ness” or “conventionality” is completely irrelevant and no court that has this fact put under their nose will ever hold otherwise.

    Defendants take note. The CAFC has taken dicta from the Supremes and turned it into a patentee-favoring “test” that is legally unsupportable.

    1. 4.1

      To help make this easier for people who might still be struggling with the basics, consider a guy in Missouri named Cranky Crouch who describes on the Internet, in enabling terms, a new device (mechanical, electrical, it doesn’t matter) for storing any kind of information, regardless of content. It’s called a kerkudvater.

      The next day Johnny Maximalist reads about the device and runs to the patent office and files a patent that claims “A kerkudvater, wherein said kerkudvater comprises stored information, wherein said stored information is [insert specific non-obvious correlation here].”

      That claim is ineligible. It’s ineligible because the prior art context is not inventive, and all that’s left is the ineligible subject matter. It does not matter at all that the kerkudvater is not “routinely used” or “conventional.” What matters is that the kerkudvater is not inventive and the claim protects information in a prior art context, period. How could it be otherwise? If it were otherwise, then Cranky Crouch could see his ability to use his own invention for its intended purpose completely wiped out by b 0 t t0 m-feeding l0wlifes like Johnny Maximalist.

      And rest assured people like Johnny Maximalist are playing this game and looking forward to playing it again like it was 1999.

      1. 4.1.1

        ” If it were otherwise, then Cranky Crouch could see his ability to use his own invention for its intended purpose completely wiped out by b 0 t t0 m-feeding l0wlifes like Johnny Maximalist.”

        Nonsense. Its intended purpose is “storing any kind of information.” Johnny’s patent covers only one kind of information. Cranky can store all other kinds of information and he can cross license with Johnny for the ability to store Johnny’s kind of information. Johnny will agree to this because without the ability to use, make, buy or sell Cranky’s kerkudvater, Johnny’s got nothing. He could perhaps buy Kerkudvaters from Cranky or his assigns, but that would probably cost more.

  23. 3

    Chamberlain’s Garage Door Opener invalid as an Abstract Idea

    Another day, another ludicrous §101 precedent. They arrive regular as rain anymore, and will continue to do so until Congress fixes this mess. The idea that a garage door opener could be “abstract” is facially absurd, but we live in a world in which one is often obliged to “believe[] as many as six impossible things before breakfast.”

    Meanwhile, in more interesting news, the court also held today in Arthrex v. Smith & Nephew that the fact

    That Arthrex filed its patent applications prior to passage of the AIA is immaterial… [because] ‘the legal regime governing a particular patent depends on the law as it stood at the emanation of the patent, together with such changes as have since been made.’ Eldred v. Ashcroft, 537 U.S. 186, 203 (2003) (quoting McClurg v. Kingsland, 42 U.S. 202, 206 (1843)). Accordingly, application of IPR to Arthrex’s patent cannot be characterized as retroactive.

    Interesting to ponder, that.

    1. 3.1

      The idea that a garage door opener could be “abstract” is facially absurd,

      Indeed it is. But nobody is saying otherwise except for Dennis Crouch, an allegedly tenured law professor.

      1. 3.1.2

        Hi Dennis. Any mentally stable patent attorney knows that your posts are knowledgeable, fair and a boon to the patent community. You paint the University of Missouri in a great light. Keep up the great work and congrats on 15 years of Patently-O!

        1. 3.1.2.1

          Slurp slurp slurp. Enjoy it, Dennis. The best and the brightest are fawning over your delicious droppings. Keep feeding these wonderful people.

    2. 3.3

      Greg, let me ask this, as you talk about text –

      Do you believe that this inventor believed that he invented the garage door opener in 2003? I would assume not.

      So if the text of 112(b) is that the claim shall claim subject matter the inventor regards as the invention, and the applicant knows he didn’t invent the garage door opener, why should the office not maintain a 112(b) rejection until the applicant removes the garage door opener from the claim?

      I think you see where this goes – The specification isn’t going to independently enable the garage door, or the use of the controller, or any other features. It’s only going to teach (and we’re lucky if it does) the allegedly novel feature – how to perform the novel act of transmitting the status data. In fact, the use of preexisting knowledge and skill in the art in order to enable not-taught-in-detail features concedes that this inventor did not invent that feature.

      So under the language of the 112b statute (not indefiniteness law, the actual words of the statute), why can’t an examiner force the applicant to configure the claim as such: “In the context of [all the conventional features], a method comprising: transmitting status data…”

      I don’t know whether you have an issue with whether conveying data (even particular data) is abstract, but it’s certainly a stronger abstract argument than “a garage door opener.”

      Regardless, your reliance on the old garage door opener is kind of silly isn’t it? I could disclose an abstract story, write it down in a well-known book, and I suppose you would point to “this concrete book” as if writing something into a book could possibly be inventive. Obviously any patent allowance would be due to the abstract meaning of the words in the book, not the book itself, so it would be silly to hold up the book as a critical feature on patentability.

      One could easily come up with a dozen completely ridiculous hypotheticals if the law always gave full faith and credit to every single claim limitation.

      1. 3.3.1

        Thanks, Random, for another thoughtful and interesting response.

        I sense that we agree about the outcome here (the claim deserved to fail), so what we are really quibbling about is whether it deserved to fail under §101.

        [Y]ou [do not] believe that this inventor believed that he invented the garage door opener in 2003… So if… the inventor regards as the invention, and the applicant knows he didn’t invent the garage door opener, why should the office not maintain a 112(b) rejection until the applicant removes the garage door opener from the claim?

        It seems to me that the inventor believes that he has invented an improvement to the garage door opener, and §101 quite explicitly opens the patent office door to one who “invents or discovers any new and useful… machine… or any new and useful improvement thereof.” I really do not see a problem, then, under the terms of the §112(b) requirement that the “claims particularly point[] out and distinctly claim[] the subject matter which the… joint inventor regards as the invention.” If the inventors consider their invention to be an improved garage door opener, then there is nothing improper in (and therefore no reason to maintain a rejection against) a claim that includes “garage door opener” in the preamble.

        I could disclose an abstract story, write it down in a well-known book, and I suppose you would point to “this concrete book” as if writing something into a book could possibly be inventive.

        Yes, I would. A claim to that book deserves to fail, but under §102, not §101. Not every rejection has to implicate §101.

        [U]nder the language of the 112b statute (not indefiniteness law, the actual words of the statute), why can’t an examiner force the applicant to configure the claim as such: “In the context of [all the conventional features], a method comprising: transmitting status data…”[?]

        Am I understanding you to suggest that §112(b) should be read as a statutory mandate for Jepson claims? I guess that I have a hard time believing that something like §112(b) has been on the books for over a century know without anyone noticing the statutory mandate for Jepson form. Still and all, I think that the PTO should use its rules-promulgating authority to require Jepson form during prosecution. I would welcome any legal development that served to make Jepson form mandatory. The patent system would be much improved if patentees were obliged to be explicit about what in their invention constitutes the putative advance over the art.

        1. 3.3.1.1

          Greg: §101 quite explicitly opens the patent office door to one who “invents or discovers any new and useful… machine… or any new and useful improvement thereof.”

          But surely that doesn’t trump the judicial exceptions. A book with new useful information is an “improvement” and it’s an article of manufacture. So it passes 101? Even thought it protects ineligible subject matter?

          You’re not making sense, Greg. But we’ve explained this all to you before. You want a particular result (your favorite claims are immune from 101 challenge) but you are unable to explain how you get there without contradicting yourself.

        2. 3.3.1.2

          Greg: Not every rejection has to implicate §101.

          Nice strawman. Nobody was suggesting otherwise, Greg. The issue was whether an old article of manufacture with new useful writing on it would implicate 101.

          Of course it implicates 101. How does 102 deal with that sort of claim, Greg? It doesn’t. It can’t. 102 is concerned with getting rid of claims that read on old subject matter. The book we’re discussing isn’t old. It’s new. Assume the info in the book is non-obvious useful info when responding to this (predictable) reply which destroys your original silly response.

        3. 3.3.1.3

          I sense that we agree about the outcome here (the claim deserved to fail), so what we are really quibbling about is whether it deserved to fail under §101.

          Yes and no, I argue against the broader theme of your posts here. I posit that (1) if we follow the statutory texts we can distill the claim to its ineligible subject matter, and thus solve the issue under strict category-101 (the claim claims only abstract information rather than a machine) rather than Alice-101, or conversely that (2) the claim would be patentable if we did not depart from the statutory text SOMEWHERE (most likely 103).

          If the inventors consider their invention to be an improved garage door opener, then there is nothing improper in (and therefore no reason to maintain a rejection against) a claim that includes “garage door opener” in the preamble.

          In the preamble being the key words here, right? In other words, if instead the claim was to a mp3 player, and the “improvement” was a particular song that the inventor thought was particularly pleasing, the Mp3 player should be in the preamble and not given patentable weight, and the validity of the claim should stand or fall wholly upon (i.e. 101, 112 and 102/103 should be tested solely against) the claimed song. Similarly, in this case the claim should be tested not against the garage door opener, but solely against the improvement (the particular information), correct?

          Yes, I would. A claim to that book deserves to fail, but under §102, not §101. Not every rejection has to implicate §101.

          But aren’t you violating the 103 command that the claim as a whole be considered? You are ignoring limitations, and you have no statutory basis to do that.

          Am I understanding you to suggest that §112(b) should be read as a statutory mandate for Jepson claims? I guess that I have a hard time believing that something like §112(b) has been on the books for over a century know without anyone noticing the statutory mandate for Jepson form.

          This is not a correct statement of legal history. It used to be that including things one did not invent was a 112(b) violation, see Lincoln Engineering, 303 US 545, which is a 1938 case (“…having hit upon this improvement he did not patent it as such but attempted to claim it in combination with other old elements which performed no new function in his claimed combination. The patent is therefore void as claiming more than the applicant invented. The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention. And the improvement of one part of an old combination gives no right to claim that improvement in combination with other old parts which perform no new function in the combination.”)

          It was not until well after the 52 act, when Rader reduced 112(b) to insoluably ambiguous, that it became alright to include known old limitations again. The history of including old subject matter within a claim is actually far shorter than the history of not being allowed to include old subject matter. You can also see how the reduced 112(b) rule affectuates a lot of improper acts – it does not serve notice to invent a new doorknob, but claim a system comprising the doorknob, the door, the wall, and the building, and then mark the building as patented as opposed to the doorknob. Similarly, it is unjustifably enriching to invent a new car battery, claim the battery by itself (fair enrichment) but also create a system claim where the battery is used to power a car in a conventional manner (unfairly enriching by adding the value of the car to the infringement by relying upon anothers invention that a car could be powered by a battery).

          What I submit is that just as 112(a) can compel the addition of limitations in order to shrink and unduly broad scope, it used to be (and properly is) the purview of 112(b) to compel the removal of limitations in order to broaden an unduly limited scope (as well as to generally fix an uncertain scope). The underlying command has always been that the claim reflect the (in this case) improvement, not recite unrelated preexisting subject matter.

          The sole basis for going away from lincoln engineering was that more limitations further limit the invention and therefore don’t cause harm. While that may be true from a 103 standpoint, I think there’s ample evidence that simply is not true, most notably the attempt to generate a contributory infringement case where none truly exists.

          The patent system would be much improved if patentees were obliged to be explicit about what in their invention constitutes the putative advance over the art.

          If only there was some sort of statutory provision that required that.

            1. 3.3.1.3.1.1

              Some seriously wrong and self-induced bias “thoughts” — that is.

              Random only “feeds” his views with those things that reinforce his pre-ordained views. All else disappears.

  24. 1

    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.

    The problem is that the claim described only (1) an old garage door opener 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 protects ineligible subject matter in a prior art context. That’s 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”).

    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”.

    1. 1.1

      Or do you want to argue otherwise?

      Because “claim as a whole” means nothing to Malcolm (and merely gets in the way of his desired Ends)….

      1. 1.1.1

        “claim as a whole” means nothing

        Taken out of context as you just did, you are correct: it means nothing.

        In the context of an obviousness (or a 101 analysis) it means that you need to consider all of the limitations and what those limitations contribute to the claimed invention, i.e., you can’t just look at one element and say “Look! there is that element, it’s obvious!”

        It doesn’t mean anything more than that.

        1. 1.1.1.1

          Except I did not take anything out of context.

          Try again.

          (This time, leave behind your Accuse Others meme)

    2. 1.2

      and you just come off like an smarmy @-s-s who doesn’t really care one way or the other because “you got yours”.

      Wow – talk about your Accuse Others meme….

Comments are closed.