Garmin: Applying Facts-to-the-Law vs Law-to-the-Facts

Garmin USA, Inc., et al. v. Cellspin Soft, Inc. (Supreme Court 2019)

Question Presented: Whether patent eligibility is a question of law for the court that can be resolved on a motion to dismiss, notwithstanding allegations in a complaint that the asserted claims are inventive.

[Petition for Writ of Certiorari][Appendix].

The patent challengers begin their petition with the following line: “This is the kind of case that gives patent litigation a bad reputation.” The problem, according to the petition is that Cellspin uses its “exceptionally weak patents” to obtain “licensing fees.”  The patents allow a user to connect “a digital camera to[] a mobile device so that a user can automatically publish content from the data capture device to a website. . . . an utterly routine and self-evident ‘invention.'”

The district court dismissed Cellspin’s infringement complaints for “failure to state a claim upon which relief can be granted.” Fed. R. Civ. Pro. 12(b)(6). In particular, the court found the claims so invalid that invalidity need not even be raised in a defensive pleading.  On appeal, the Federal Circuit vacated and remanded. In its decision, the appellate panel agreed that the claims were directed to an abstract idea (“method of acquiring, transferring, and publishing data and multimedia content on one or more websites”).  However, the court concluded that there were disputed issues of material fact on Alice Step 2 that precluded 12(b)(6) dismissal.  In particular, the court noted a factual dispute on whether purported inventive features in the invention were “well-understood, routine, and conventional” at the time of the invention. In particular, Cellspin argued its two-step, two-device structure was not well known. I will note that Cellspin’s use of a 19th century cameraman does not help its cause. Consider the patents in-suit – U.S. Patents 8,738,794; 8,892,752; 9,749,847; and 9,528,698.

In the petition, the challengers argue that patent eligibility should be seen as a pure question of law: Patent eligibility is a question of law for the court, and the Federal Circuit erred in holding otherwise.

The primary argument is pretty cute — but perhaps too clever. The petition argues that Supreme Court eligibility cases have always been about determining whether the statute (section 101) should be construed to encompass the particular inventive activity in question.  See, for example, Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980) (the question of what is eligible for patenting is one “of statutory construction”).  And, statutory construction is always a matter of law. Q.E.D. (?)

= = = =

Garmin is the lead petitioner, but the group includes Canon; Fitbit, Fossil (Misfit), GoPro, JK Imaging, Moov, NIKE, and Panasonic.

= = = =

Claim 1 of the ‘794 Patent is listed below (2007 priority date):

1. A method for acquiring and transferring data from a Bluetooth enabled data capture device to one or more web services via a Bluetooth enabled mobile device, the method comprising:

providing a software module on the Bluetooth enabled data capture device;

providing a software module on the Bluetooth enabled mobile device;

establishing a paired connection between the Bluetooth enabled data capture device and the Bluetooth enabled mobile device;

acquiring new data in the Bluetooth enabled data capture device, wherein new data is data acquired after the paired connection is established;

detecting and signaling the new data for transfer to the Bluetooth enabled mobile device, wherein detecting and signaling the new data for transfer comprises:

determining the existence of new data for transfer, by the software module on the Bluetooth enabled data capture device; and

sending a data signal to the Bluetooth enabled mobile device, corresponding to existence of new data, by the software module on the Bluetooth enabled data capture device automatically, over the established paired Bluetooth connection,

wherein the software module on the Bluetooth enabled mobile device listens for the data signal sent from the Bluetooth enabled data capture device,

wherein if permitted by the software module on the Bluetooth enabled data capture device, the data signal sent to the Bluetooth enabled mobile device comprises a data signal and one or more portions of the new data;

transferring the new data from the Bluetooth enabled data capture device to the Bluetooth enabled mobile device automatically over the paired Bluetooth connection by the software module on the Bluetooth enabled data capture device;

receiving, at the Bluetooth enabled mobile device, the new data from the Bluetooth enabled data capture device;

applying, using the software module on the Bluetooth enabled mobile device, a user identifier to the new data for each destination web service, wherein each user identifier uniquely identifies a particular user of the web service;

transferring the new data received by the Bluetooth enabled mobile device along with a user identifier to the one or more web services, using the software module on the Bluetooth enabled mobile device;

receiving, at the one or more web services, the new data and user identifier from the Bluetooth enabled mobile device, wherein the one or more web services receive the transferred new data corresponding to a user identifier; and

making available, at the one or more web services, the new data received from the Bluetooth enabled mobile device for public or private consumption over the internet, wherein one or more portions of the new data correspond to a particular user identifier.

 

91 thoughts on “Garmin: Applying Facts-to-the-Law vs Law-to-the-Facts

  1. 7

    The “other blog” just notes that in Solutran, Inc. v. Elavon, Inc., 2019-1345, 2019-1460 (Fed. Cir., July 30, 2019) (electronically processing paper checks) the Federal Circuit dismissed Solutran’s argument that the claims were patent eligible, noting that: “We have previously explained that merely reciting an abstract idea by itself in a claim—even if the idea is novel and non-obvious—is not enough to save it from ineligibility.”

    1. 7.1

      i get so tired of this “inside baseball” stuff. What is the “other blog.”

      1. 7.1.1

        What you tire of and what you do not tire of speaks louder than your actual words, my shifting historical pseudonym friend.

      2. 7.1.2

        For example, on a now long forgotten thread (below two ‘folds’), and on two well buried comment strings (WELL beyond the numbering capabilities of the comment software, you are NOT tired of your gamery.

        Now why is that?

        1. 7.1.2.1

          Agnes called me and wants to know what the eff are you talking about?

        2. 7.1.2.2

          Why do you keep running away?

          1. 7.1.2.2.1

            LOL – are you looking for another “interrogation’ Shifty?

            So like you and your gamery to slide a comment into a non-active thread.

            So soon you forget: link to patentlyo.com

            The final tally of your gamery there was 161 posts directed solely at me (with zero attempts at actually holding a conversation) to my 176 posts (to several people, holding conversations AND doing the opposite of running away from you gamery).

            As they say:
            S
            U
            C
            K
            S
            to be you.

  2. 6

    Utility — as pertains not to machines as consumers — but as pertains to why bother with machines at all. At the end of the day, utility (and any ‘consumption’ related thereto) ONLY has meaning to consumers that are human.

    I tried to parse that, but no dice.

    To be sure, I don’t see any philosophical, legal, or linguistic reason to think “utility” is a unitary concept. There are all kinds of utility in the world- realized and unrealized, and realized utility in different contexts for different consumers.

    In computing, we create services and microservices and macroservices, and we consider the agent using the service- human or non-human- as a consumer of the service.

    Another example of potential utility and realized utility is that of a sharp knife. It’s more useful that it’s sharp, even if it’s not used, because it COULD be used.

    Every user of the sharper knife enjoys the identical benefit of the sharper blade, even if they may not be as skilled at cutting.

    But utility consumed within the human mind is of a totally different character. The value is unique to every consumer. To a poor bond trader, the information is useless- e.g. lacking in utility.

    The patent system has no business near utility realized within human minds. Thats the ultimate abstraction and the reason for the judicial exception. That’s a simple, practical maxim and it should be followed to its logical ends.

    1. 6.1

      Your “attempt” to parse (not exactly what you mean by that) is certainly hampered by both your predisposed notions AND your lack of understanding the terrain of patent law.

      You DON’T understand because you DO NOT WANT TO understand.

      Your diving into the weeds of not seeing any “unitary concept” is simply you not looking at the end of the day.

      This is REALLY a REALLY simple notion. That you struggle mightily is most definitely a YOU thing.

      You are REALLY in the weeds with your “potential” and “realized” utility notions. Diving into “examples” helps no one – and especially does not help you. Why then, do you so dive?

      You seem to want to draw this “ENTIRELY IN THE MIND” distinction. But that is disconnected from what we are talking about. Of course, hard goods are naturally NOT “entirely in the mind.” But neither are processes — EXCEPT a process — from start to finish — that is ONLY thinking.

      But that is YOUR strawman (well, and Malcolm’s when I bust him in his attempts to move goalposts when we are discussing claims that are NOT entirely in the mind).

      You ALSO again try to move the goalposts with this notion of “location of consumption.” But this is only doubling down on your already confused and conflated NON-patent law musings.

      There is NO “proximity” notion that you would insist on both creating and injecting.

      Such is just not there.

    2. 6.2

      “I tried to parse that, but no dice.”

      That’s all I needed to read to know who you’re talking about. Then I stopped reading.

      1. 6.2.1

        Says Shifty — in the Accuse Others meme (that works for no one).

    3. 6.3

      “You ALSO again try to move the goalposts with this notion of “location of consumption.” But this is only doubling down on your already confused and conflated NON-patent law musings.”

      But I did skip down and read that. Noam Chomsky could not parse that. Don’t waste your time.

      1. 6.3.1

        Sound advice.

    4. 6.4

      The patent system has no business near utility realized within human minds.

      Why?

      1. 6.4.1

        Greg because the confines of a person’s mind are a no-go zone for the government, or any government, period.

        Beyond that imperative for freedom, infringement which yields utility only in the human mind is beyond the ability of any justice system to fairly weigh.

        1. 6.4.1.1

          What exactly provides a utility (as that term is to be understood in the patent sense) entirely outside of the human mind?

          At the end of the day, when all is said and done, the only meaningful measure of utility is utility as may be comprehended by a human mind.

          Even the hard good statutory items do not garner eligibility merely by being “a thing.”

          Any “thing” that has “utility” only unto itself and has no impact on a human does not possess utility — as the term “utility” is understood in the patent law context.

          1. 6.4.1.1.1

            A sledgehammer provides its utility outside of a human mind.

            A broken rock is not an abstraction.

            1. 6.4.1.1.1.1

              Please pardon potential repeat:

              A sledgehammer — and the resultant broken rock — in and of themselves (if you stop there and do not continue to that “end of the day”), would NOT have utility within the patent sense.

              The use of the tool to create an effect is NOT taken in a non-human vacuum.

              The tool (for its ensuing effect) has its measure of utility BE a function of utility FOR that ‘end of day’ human.

              If a human cannot grasp — in that human’s mind — that a utility FOR humans IS an ‘end of day’ result, then the tool and its effect do not possess utility in the patent sense of the word.

              Utility — in the patent sense — absolutely requires a human (and that importantly includes a mind of a human) to be included in its evaluation.

              You are merely trying to insert a “proximity restriction” that has no tether to patent law.

              Again, you do this because you are colored by your own preconceptions outside of the fundamentals of innovation protection and your personal experience of being bur ned by those preconceptions. You very much have an emotional animus that has driven, and continues to drive, your attempts at “reconceptualizing” the terrain.

            2. 6.4.1.1.1.2

              … or to put it in simpler terms, it is NOT enough that something DOES some thing (or its use creates some result).

              The “thing/result” must be viewed for its human effect, and to so view, the human mind is necessarily implicated.

              You cannot achieve the separation that you are aiming for. Utility in the patent sense requires that which you wish to completely separate.

              A spectrum of classification may be envisioned from the not eligible “no intersection with the human mind to a (different) Vast Middle Ground, and then onto a non-eligible “completely and only” in the human mind.

              You appear to dance at the beginning and ends of that spectrum.

        2. 6.4.1.2

          [T]he confines of a person’s mind are a no-go zone for the government, or any government, period.

          Sure, no doubt, but the conclusion (subject matter ineligibility) does not really follow from the asserted premise (mental no-go zone). While the utility occurs in the mind, the actual acts that give rise to the utility occur in the physical world, and are therefore eminently tractable to regulation that does not step into the no-go zone.

          I can understand a rule that says that claims whose process steps occur in the mind are ineligible. It is less clear to me—when all of the steps occur in the tangible universe—why the fact that the utility occurs in the mind should be regarded as a reason to exclude from patent eligibility.

          Beyond that imperative for freedom, infringement which yields utility only in the human mind is beyond the ability of any justice system to fairly weigh.

          How so?

          1. 6.4.1.2.1

            Greg we are firstly limiting the information doctrine to processes.

            In instances where there is a non-human consumer, the information can reasonably be seen as a machine component, and gain eligibility via the machine category.

            But the character of the utility in a human mind and anywhere else in the universe differs. Your skull is the demarcation.

            A sharper knife is equally useful to every owner. An improved sledgehammer offers the identical improvement to all users. We can make a reasonable legal assumption that the improvement to a machine, composition, or manufacture is equally intrinsically valuable to all users.

            But information used by people is uniquely valuable- or not- to each person, because their use is entirely abstract and essentially unknowable. All information is abstract, but no human mind, no abstraction. We cannot fairly make repeatable assumptions about the value of any given item of information to a person.

            1. 6.4.1.2.1.1

              A sharper knife is equally useful to every owner… [b]ut information used by people is uniquely valuable- or not- to each person, because their use is entirely abstract and essentially unknowable.

              This is not true. I grant you that information about whether I have a tumor growing in my colon is more meaningful to me than it is to you, but the same is true of literally anything, machines and articles of manufacture very much included. I live in SoCal. A snowmobile that can go 45 mph is no more useful to me than a snowmobile that can only go 30 mph. A sharper knife is no more useful than a dull knife to my daughter, who is not old enough to be allowed to use knives.

              All utility is a reflection of individual human preferences.

              1. 6.4.1.2.1.1.1

                Greg the snowmobile that goes 45 is a measured fact. The law can fairly assume that going faster is a useful improvement, although you still need something novel to attain that improvement.

                That the bond-trading software provides value to X trader CANNOT be fairly assumed. It may have negative-utility and make them a worse trader. The value of the information cannot be measured.

                1. That the bond-trading software provides value to X trader CANNOT be fairly assumed. It may have negative-utility and make them a worse trader.

                  And? A sharper knife might slice off my finger, where a duller knife would merely have nicked me. It is implicit in power that it can be misused or backfire. I just do not see your argument getting you where you seem to want to go without also tanking the logic of the patent system tout court.

                2. And? A sharper knife might slice off my finger, where a duller knife would merely have nicked me. It is implicit in power that it can be misused or backfire.

                  I just do not see your argument getting you where you seem to want to go without also tanking the logic of the patent system tout court.

                  Greg of course there is a slippery slope argument, but that’s why a human skull makes the best cleat.

                  If someone is unskilled at using an improved tool, we recognize that the tool remains improved.

                  But if two people honestly find that some item of information has totally different meaning- because meaning is the only way information conveys utility- it absolutely cannot be litigated or even regulated in a free society. We cannot say that the information is either useful or an improvement to any particular person.

              2. 6.4.1.2.1.1.2

                All utility is a reflection of individual human preferences.

                Now where have I heard that before?

      2. 6.4.2

        So, yet again, Greg “I Use My Real Name” snipes from the sidelines with his whines AND takes my side…

        Greg, here’s a helpful hint: before you criticize what you purposefully clench tight your eyes too, maybe think about the fact that you may be agreeing with what you are choosing not to see.

        You have a better chance in not coming across as a whining doosh.

    5. 6.5

      I tried to parse that, but no dice.

      Not really worth anyone’s time to try…

  3. 5

    With zero apologies to the deceased r@ c i s t dinosaur Ned Heller:

    link to lawyersgunsmoneyblog.com

    “Derp drain the derp swamp derp!”

    Reason number 15348 that Re pu k k k es and glibs need to be shunned forever.

    1. 5.1

      Do you really need to express your feelings HERE about such non-patent law matters?

      Is there no comment section there?

      1. 5.1.1

        “Derp please Supremes immunize my cr @p patent claims from motions to derp dismiss because derp entitled rich bro derp Repu k k k e derp glibt@rds unite derp!”

        1. 5.1.1.1

          Malcolm’s Derp Dance with a splash of One-Bucketing…

  4. 4

    The irony of this and many other 101 cases is that you can use the Alice/Mayo test to invalidate any process claim. (Yes, I am open to challenges.)

    One settled rule of statutory interpretation is that “[a] statute should be construed so that effect is given to all its provisions, so that no part will be inoperative or superfluous[.]” The Alice/Mayo test violates this rule.

    1. 4.1

      Impress everyone with a couple of surprising hypothetical examples demonstrating how you do this.

      Judges make mistakes when applying those cases. But you don’t. Right?

      Prove it.

      1. 4.1.1

        What exactly are you wanting him to prove, Malcolm?

        Further, the point here is NOT that “Judges make mistakes when applying those cases” but is instead a BIGGER PICTURE view that the scoreboard is broken and that Justices (rather than judges) have made mistakes in writing those cases (rather than applying those cases).

        Please try to stay on point.

        1. 4.1.1.1

          I wrote exactly what I wanted him to prove.

          Here, let me hold his gross sticky hand for a moment after he puts down his lollipop. Take the following claim:

          A process consisting of [insert steps including a new non-obvious physical transformation of matter], wherein said process yields chemical X [a specific new chemical previously believed to be incapable of synthesis].

          Please explain, clearly, how all claims in this form are ineligible in view of the Mayo opinion. Go ahead. Make my day, Paul Johnson. You are a very serious person and totally not just another hack from Big Jeans sweat lodge sp ew ing l i e s.

          1. 4.1.1.1.1

            transformation…?

            You do know that the Supreme Court threw that out as a legal requirement (9-0), eh?

            Plus why chemical, and why a process for an item that itself may earn a patent in being in one of the other categories?

            Your “example” misses the point here — and badly so.

            Maybe you were just all excited in posting about your man-crush….

          2. 4.1.1.1.2

            … and as usual, I point out several fallacies that Malcolm is ploying and he disappears.

            Gee, I wonder what are the chances that he will ploy the exact same fallacies on a subsequent thread on this topic?

          3. 4.1.1.1.3

            Step 2A: the process of yielding a chemical recites a judicial exception, here a law of nature
            Step 2B: carrying out steps to physically transform matter simply appends well-understood, routine, conventional activities previously known to the industry
            Conclusion: ineligible

            1. 4.1.1.1.3.1

              Paul,

              Take your response and spin it a slightly different way:

              ALL pharma patents ONLY have utility as a result of naturals laws (the body acting on some substance in order to obtain whatever effect is deemed to BE the utility).

              NO pharma patent ever creates a NEW human (and that new human’s novel process of an otherwise obvious natural law mechanism of the human body metabolizing something.

    2. 4.2

      That is a good observation Paul.

      What bothers me so much about all this is that Obama stacked the CAFC with people that had not practiced patent law and had no science background. The ones that had science and/or patent law backgrounds were known to be virulently against patents, Chen and Taranto. The only other one that had the proper qualification was Stoll and she was and is well-known for having severe personality disorders. She would be a prime candidate to agree to “get patents under control” in exchange for her appointment.

      1. 4.2.1

        “…Stoll and she was and is well-known for having severe personality disorders.”

        This is a remarkable assertion. I didn’t find anything supporting it during a brief google search. Do you have a citation?

        1. 4.2.1.1

          Of course not. The board would be improved if the above deranged and unprofessional rant were expunged, along with its dependent posts.

        2. 4.2.1.2

          “I didn’t find anything supporting it during a brief google search.”

          Did you search for “tin foil hat?”

    3. 4.3

      Where the rubber hits the road too is that none of the Obama judges care about hindsight. The wa nks look at things and think, gee, I could have done that. No wa nk you could not have done that. And if you had any real experience in science/technology, then little w an k boy/girl you would know that you could never do that.

      The other game they play is to remove how a person skilled in the art would view the invention. Rather they make up their own thoughts or hire clerks with no experience but educations to fabricate facts to justify invalidating claims (Reyna is big on this.)

      It is a f ing joke.

      It rises to the level of incompetence that is beyond comprehension in a modern industrial country. Obama took the cash and stacked the court.

      1. 4.3.1

        Still railing against Obama? In late 2019?

        ROTFLMAO

        But NW and his bffs arent r@ ci st idjits. Nope. Theyre very serious people and it’s soooooo unfair that nobody pays attention to them.

        LOL

        1. 4.3.1.1

          Still railing against Obama?

          And your railings against Kappos are what…?

          Come to think of it, who exactly appointed Kappos?

          arent r@ ci st idjits

          And — yet again — it is YOU that plays the R card….

          Stultifying.

          1. 4.3.1.1.1

            Kappos is still out there collecting money in exchange for his cl ue le ss ramblings about patent law, Bildo.

            1. 4.3.1.1.1.1

              .. AND you absolutely missed the point.

              Clearly, Night Writer’s rants against Obama are because of the actions of judges WHOM Obama placed.

          2. 4.3.1.1.2

            If you don’t think NW is a r@ c i s t pr ick, then you need medical help.

            1. 4.3.1.1.2.1

              YOU are by far a bigger ” a r@ c i s t pr ick” than Night Writer.

      1. 4.4.1

        LOL

        Of course, Paul Cole the dissembling
        n i t w i t has also proven that his understanding of the facts and holding of Mayo could fit into a thimble with room left over.

    4. 4.5

      Argh,

      Just had a detailed post eaten by the posting mechanism.

      Bottom line of that post is that the choice of “process” as a statutory category carries with it some substantial impacts from the Act of 1952 and the entirety of that Act being the voice of Congress reacting AGAINST a self-avowed anti-patent Supreme Court.

      I provided several contextual strands tying together various sections of the Act (and noting that even Paul Cole still errs when it comes to the meaning of THAT statutory category).

      Here’s hoping the post can be salvaged….

  5. 3

    First, the district court erred by not accepting as true Cellspin’s allegations that “it was unconventional to separate the steps of capturing and publishing data so that each step would be performed by a different device linked via a wireless, paired connection” (id. at 21a)—in other words, it was unconventional for the “data capture device” like a camera or fitness tracker to be separate from the smartphone. And the second allegation the Federal Circuit highlighted was that it was unconventional to “establish[] a paired connection between the mobile device and the data capture device before data is transmitted” (id. at 22a).

    This highlights a mistake that the federal circuit keeps making over, and over, and over. Because the federal circuit wants to point to a particular all-encompassing test rather than resorting to analyzing each case on its own, it creates a bright line rule that simply does not exist. They did it with indefiniteness, they did it with obviousness, and now they’re doing it with eligibility.

    Alice explicitly stated that Step Two is a search for an inventive concept. In performing that search, the Court considered its previous cases and concluded that *in the facts of Alice* the claims were “well-understood, routine and conventional” (URC) acts which were simply applied on a computer. In other words, URC is a subset of “lacking an inventive concept.” Because URC is a SUBSET, simply finding that the claim is non-URC is insufficient, by itself, to conclude an inventive concept exists.

    The parallels between “lacking an inventive concept” and obviousness are clear – URC is insufficient to confer eligibility because, by law, it is non-inventive: Finally, in Sakraida v. AG Pro, Inc., 425 U. S. 273 (1976), the Court derived from the precedents the conclusion that when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. (KSR)

    Of course, there is an abundance of caselaw which also provides obviousness standards that are not URC. For example, caselaw makes clear that just as simple combination is an obvious act, so is simple separation of parts. As is rearrangement of parts for expected results (again, see Sakraida above)

    Once you apply the correct test (“Is there an inventive concept?”) rather than the wrong test (“Does the claim only contain well-understood, routine and conventional subject matter?”) it becomes clear that the case can be disposed of under summary judgement.

    Review the arguments above – Even assuming that it was unconventional to separate two previously known steps, the steps perform the same results separately in sequence that they do together (as is often the case in computer software, which is why rearranging computer software is rarely inventive). Similarly, “establishing a paired connection [] BEFORE data is transmitted” is a rearrangement that cannot provide inventiveness – the paired connection MUST exist before data is transmitted (since you cannot transmit without a channel) and how long it exists beforehand is functionally irrelevant. There may be non-URC distinctions, but the distinctions cannot form a basis for an inventive concept because, even if true, the claims would still be non-inventive.

    Consequently, the correct holding here is that there is a factual dispute, but the dispute is not material, because even assuming those two arguments to be true, they cannot cause a holding of eligibility. They can only cause a holding that the claim contains non-URC subject matter, but other legal precedent shows that even if the subject matter were not only unconventional but entirely novel it still couldn’t be inventive.

    This should be clear by, e.g., Martin Snyder’s point at 1 – Since one can look at the *entire claim* and know it is obvious, naturally a claim without the ineligible subject matter limitations would also be obvious. Since you can decide that it is obvious even assuming the novelty of the features in the arguments made, you can solve Alice Step 2 at summary judgement.

    tl;dr – The federal circuit misapplied Alice because it concluded that anytime the claim had non-URC it would pass Alice Step 2, when Alice Step 2 requires an inventive concept, and non-inventive is broader than URC. Had the correct test been applied, the factual dispute is immaterial and the ineligibility holding is proper on summary judgement.

    1. 3.1

      Thanks for addressing the footnoted question in comment 2 below. But even if “it was unconventional for the “data capture device” like a camera or fitness tracker to be separate from the smartphone” was argued on appeal, there are two other possibilities not requiring a full blown jury trial: the Court finding that assertion incredible as a matter of common product knowledge, or,not actually asserted in the complaint or specification.

      1. 3.1.1

        there are two other possibilities not requiring a full blown jury trial: the Court finding that assertion incredible as a matter of common product knowledge, or,not actually asserted in the complaint or specification.

        Well there was an assertion that it was eligible and the specific arguments as to why it is eligible were heard, so I assume it was asserted with sufficient particularity that it satisfied the court.

        As to common knowledge, I definitely agree it could have been in play here, but I also understand why a court is loathe to do that. Regardless, the trial court found no issue of fact, so he might not have felt the need to bolster the decision by taking notice of anything, and the federal circuit was simply reviewing the decision the trial court made, so it’s not their function to generate other reasons.

        I don’t have a problem with them pointing out the URC analysis may have been error and then reversing. But I do have a problem with the notion that URC controls the issue. It would have been perfectly fine to reverse because of bad URC logic but then write “We note that the district court premised it’s Alice Step Two analysis on URC, and because that analysis was flawed we reverse, but URC is not the only basis for Alice Step Two.” etc. But to not include the paragraph suggests the issue can’t be solved on summary judgement on these facts, and that clearly isn’t in keeping with the law.

    2. 3.2

      In other words, URC is a subset of “lacking an inventive concept.”

      So let’s take this on its face.

      In order to be applicable (and not Void for Vagueness) what is the full list of subsets that govern (the actual words of Congress) in 35 USC 101?

      What precisely IS the correct test, and in the best of Greg mode, what is the direct statutory support for that clear and explicit “correct test?”

      1. 3.2.1

        In order to be applicable (and not Void for Vagueness) what is the full list of subsets that govern (the actual words of Congress) in 35 USC 101?

        Your general law knowledge is just as bad as your patent law knowledge. What is the full list of subsets that govern “a harmful or offensive touching” for battery?

        Similarly, just like obviousness need not be proven by any particular standard other than a reasoned rationale supported by evidence as to why obviousness exists, neither abstraction nor inventiveness have any particular bright line rule.

        1. 3.2.1.1

          My question is geared to the fact that YOU stressed that there was more.

          What is that “more” and how is such related to a strictly statutory law — as opposed to a general law for which common law Law Writing is a permissive tool?

          Four fingers are pointing back at you in your hurry to point one at me.

        2. 3.2.1.2

          Your general law knowledge is just as bad as your patent law knowledge.

          Correct. One wonders why you bother.

          1. 3.2.1.2.1

            And in pops the inte11ectual coward.

            Mighty impolite if you there pal to keep on sh00ting snide comments from the sidelines. I bet that you were the kid that hid underneath his momma’s skirt.

      2. 3.2.2

        “In order to be applicable (and not Void for Vagueness) what is the full list of subsets that govern (the actual words of Congress) in 35 USC 101?”

        1. Someone has to invent or discover something
        2. That something has to be new and useful.
        3. That something has to fall into one of the listed categories.

        We are evaluating question 1. It is straight from the first the first 4 words of the staute “Whoever invents or discovers…”

    3. 3.3

      RandomGuy: “Since one can look at the *entire claim* and know it is obvious, naturally a claim without the ineligible subject matter limitations would also be obvious. Since you can decide that it is obvious even assuming the novelty of the features in the arguments made, you can solve Alice Step 2 at summary judgement.”

      Of course, if you can look at an entire claim and know that it is obvious then you can just move for summary judgment as to obviousness under 35 U.S.C. § 103 without having to resort to an implicit judicial exception to 35 U.S.C. § 101.

      1. 3.3.1

        You are missing RG’s point, JD.

        First, there is no “resort” to 101. Subject matter ineligibility is a real thing under the law, just as real as obviousness.

        Second, the entire point of subject matter eligibility is to keep patent claims from protecting abstractions, “functionalities”, natural laws, logic, and information. Where the claim recites just non-inventive physical structures (as ordered) and some “inventive” abstraction, then the claim is ineligible. “Resorting” to 103 in that instance is simply illegal.

        1. 3.3.1.1

          … and Malcolm, you are missing J. Doerre’s point.

          He is NOT questioning whether subject matter ineligibility is a real thing under the law or not, nor is he questioning whether subject matter ineligibility is just as real as obviousness.

          He is also NOT questioning “what the entire point of subject matter eligibility” is about.

          Your reply is entirely OFF-POINT to the conversation.

      2. 3.3.2

        Of course, if you can look at an entire claim and know that it is obvious then you can just move for summary judgment as to obviousness under 35 U.S.C. § 103 without having to resort to an implicit judicial exception to 35 U.S.C. § 101.

        Sure, but (in some circumstances) why would you? Obviousness requires the entire scope to be obvious, while 101 only requires the non-judicial-exception part to be non-inventive. In certain fact patterns, 101 is an easier standard than 103.

        Most notably in the “Einstein could not have patented his e=mc^2” example, where the inclusion of the non-obvious e=mc^2 equation would have rendered every claim non-obvious, while claims that only combined the equation with conventional subject matter could easily be dismissed under 101.

        1. 3.3.2.1

          Instead of Einstein, how about Arrhenius?

        2. 3.3.2.2

          It’s encouraging to see more and more intelligent and articulate commenters (like RG) discussing subject matter reasonably instead of ten tr 0lls popping off about how “nothing is eligible DeRp!” or “why not just use 103 DERP?”

          1. 3.3.2.2.1

            … talk about being overcome with the fumes of nonsense and hallucinating what you want to see…

    4. 3.4

      “WURC” seems better for “well-understood, routine and conventional” since the Fed. Cir. has been making it more “work” to prove.

      1. 3.4.1

        since the Fed. Cir. has been making it more “work” to prove.

        Paul, it sounds like you are bemoaning (whining) about the fact that “well-understood, routine AND conventional” simply is a higher standard than either the anticipation of 35 USC 102 or the obviousness of 35 USC 103.

        You also seem to be “feeding” the misperception that any such imposition of a higher standard is merely the work of the Federal Circuit.

        BOTH of these items of your post are obfuscations and unhelpful.

        1. 3.4.1.1

          The so-called WURC test is the creation of the CAFC. They took Supreme Court dicta and illegally ran with it. After commenters like me and others pointed out how amazingly wrong the CAFC was, they have begun peddling back furiously. I’m not bragging because this was not a great insight of mine and the end point was inevitable (either the CAFC was going to dial back or get smacked down).

          S—ks to be you, Bildo.

          1. 3.4.1.1.1

            You’ve strained your shoulder patting yourself on the back for things that only exist in your own mind.

            It’s a lovely fall day — get out of your mom’s basement and get some fresh air.

            1. 3.4.1.1.2.1

              Yes, Malcolm certainly is the Trump of this blog.

              1. 3.4.1.1.2.1.1

                “Derp derp you Trump derpitty derp!”

                Man, what a bunch of cl00less projecting idjits.

        2. 3.4.1.2

          It was [rather obviously] a pun.

          1. 3.4.1.2.1

            Rather obviously…?

            I think not, given that both sides of the patent divide took your words as rather intentional.

            More likely than not, you thought that “work” was a clever play on sound (even as the underlying view is what drove both Malcolm — cheering you; and I – jeering you.

            Instead of back-pedaling, maybe take the counter points I presented to heart.

  6. 2

    The Question Presented “..notwithstanding allegations in a complaint that the asserted claims are inventive”* is not just what this cert petition is really about. It is an unusual cert petition in SUPPORT of both Alice and “preliminary” 101 case dismissals on the pleadings. Attacking the Fed. Cir. for NOT following Sup. Ct. that case law. Arguing that even if Berkheimer is upheld it does not validly apply to this case. They also suggest that this [103 unappealing PAE] case should be taken up along with a Berkheimer case. [That might negatively impact the latter.]

    *Also, is that bare assertion really the only thing the complaint [or more relevantly, the claim] contained that raised any fact issue as to anything at all being other than well known, as they argue in detail?

    1. 2.1

      *Also, is that bare assertion really the only thing the complaint [or more relevantly, the claim] contained that raised any fact issue as to anything at all being other than well known, as they argue in detail?

      The arguments that created the fact issue are included in the petition and I copy them at post 3 above.

      Patentees admitted the only fact you need to solve this case. From the Federal Circuit Opinion:

      For example, Cellspin’s amended complaints noted that prior art devices included “a capture device with built in mobile wireless Internet.” J.A. 2290.3 But these devices were “inferior,” Cellspin alleged, “because, especially at the time of the patent priority date . . . the combined apparatus [was] bulky, expensive in terms of hardware, and expensive in terms of requiring a user to purchase an extra and/or separate cellular service for the data capture device.” Id. Against this backdrop, Cellspin alleged that it was unconventional to separate the steps of capturing and publishing data so that each step would be performed by a different device linked via a wireless, paired connection.

      In fact, the specification makes clear that a conventional way of performing this upload would be to take a picture, use a USB to transfer the file, and then upload the file. The alleged inventiveness is a substitution of one means of transmitting data with another known means of transmitting data.

      From the federal circuit: Appellees distinguish BASCOM by arguing that the asserted claims simply “replace a USB or similar cable with Bluetooth.” Appellees’ Br. at 33. But even assuming that Bluetooth was conventional at the time of these inventions, implementing a well-known technique with particular devices in a specific combination, like the two device structure here, can be inventive. Cf. Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (“Most, if not all, inventions are combinations and mostly of old elements.”); see also BASCOM, 827 F.3d at 1350.

      I just view this as simply misapplying the law. BASCOM was a case where rearrangement of parts allowed for new functionality. Here the issue is one of simple substitution with no argument of new functionality in the pieces – USB provided for one known means of data transfer, and bluetooth provides for another known means of data transfer, and the results of using one or the other is well-known and expected.

      In other words, despite “apply it using conventional hardware” being insufficient to confer eligibility in Alice, the federal circuit here tries to claim that a system that uses a different conventional hardware to perform the conventional function of the conventional hardware is somehow inventive.

      1. 2.1.1

        Rearrangement — or reconfiguring — of parts…

        Parts like Protons, Neutrons, and Electrons…?

        1. 2.1.1.1

          My gob but you are an ffin idjit, Bildo.

          1. 2.1.1.1.1

            Your aim is off Malcolm, as I am merely pointing out the attempted “logic” being used.

            You should be aiming at those attempting to use that “logic.”

      2. 2.1.2

        …and talk about mislabeling, what did Congress (through the words of architect Rich) have to say about the Court and its historic “search for inventive step?”

        Hint: look at the reason why Congress created 103 and chose “obviousness” instead of “invention.”

      3. 2.1.3

        There was nothing inventive about the arrangement of physical structures in the claims at issue in Bascom.

  7. 1

    On Planet Me, I think the method is eligible. The consumer of the information is a web server, and the utility of the information does not depend on the particular content or meaning of the information.

    Of course the method is utterly obvious under 103, and the claims do not sufficiently describe an invention that could be reproduced by PHOSITA under 112 because the inventor invented none of the elements, and no combination of the elements is described that could be inventive so long as the claims call for the elements to perform their expected functions.

    Markman procedures should be modified to include an Alicetype test to avoid the quantum increase in litigation expense post claim-construction when there is clearly no invention as a matter of law.

    1. 1.1

      Just as you want to say that the (immediate) ‘consumer’ is a web server, how is the overall sense of utility judged?

      Utility — as pertains not to machines as consumers — but as pertains to why bother with machines at all.

      At the end of the day, utility (and any ‘consumption’ related thereto) ONLY has meaning to consumers that are human.

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