Ladders of Abstractions: How Many Rungs Till the Threshold?

by Dennis Crouch

Maxell, Ltd., v. Fandango Media, LLC (Supreme Court 2020)

Maxell was originally a battery company (MAXimum capacity dry cELL).  The $80b company has expanded into all sorts of digital media. 

Its patents at issue in this case all relate to managing access to content sent over networks, such as videos provided through online rental and streaming services.  U.S. Patents 8,311,389; 9,088,942, and 9,733,522 (all with 2000 priority date). [Update – These are the three patents listed in the petition, but that appears to be an error.  I believe that Maxell intended to list 9,083,942 and 9,773,522 but switched a couple of digits.]

Maxell sued Fandango for infringement — alleging that the “FandangoNow” service infringed.  The lawsuit was cut-short by the district court’s dismissal on the pleadings – finding the asserted claims ineligible as directed to the abstract idea of “restricting access to data” using “rules based upon time.”  On appeal, the Federal Circuit affirmed without opinion following its internal R.36 procedure.  Now, Maxell has petitioned the Supreme Court with a simple question:

Whether the claims at issue in Maxell’s patents are patent-eligible under 35 U.S.C. 101, as interpreted in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).

[Petition].  This petition is part of the pile of eligibility petitions, including AthenaHikma, Berkheimer, and Trading Technologies.

The argument in Maxell focuses primarily on Alice Step 1 — whether the claim is directed to a patent ineligible concept.  Maxell explains its position that the lower court went too-far in generalizing the concepts of the invention:

The court fundamentally erred at step one by describing the claims at too high a level of generality and failing to consider the digital context.

Id. The Supreme Court particularly warned against undue generalization in Alice — writing that at some level of generalization, all inventions involve an abstract concept. Alice.

Although Maxell’s innovations could be generally classified as a way of “restricting access to data” using “rules based upon time,” the company argues that this abstraction is not what was actually claimed:

[T]he patents do not claim the general concept of restricting access to data using rules; they claim particular solutions for restricting access
to digital audio/visual content using control information and rules sent to the user with the audio/visual file. Those solutions use two time controls to restrict access to copyright-protected content – a retention period and a playback permission period – according to specific rules set out in the claims. They protect copyright owners’ rights by restricting access to the audio/visual file to a limited period. And they optimize the user experience by allowing the user to choose when to use the audio/visual file, including when the user is offline.

Regarding Alice Step 2, Maxell suggests that the innovative concept is easier to identify once you recognize that the patent applications were filed back in the year 2000.  However, the district court refused to consider evidence of inventiveness in its eligibility analysis.

In some ways, this case is simply asking the Supreme Court to recognize the USPTO’s eligibility examination guidelines as the law — a claim is only directed at an abstract idea if it recites an abstract idea.

= = = = =

The district court used the following claim as representative in its analysis:

13. A method, comprising:

transmitting audio/video information;

receiving the audio/video information;

storing the audio/video information on a storage medium; and

reproducing the audio/video information from the storage medium according to control information related to the audio/video information,

wherein the control information includes:

  • a first period for retaining the audio/video information on the storage medium, and
  • a second period, that begins at the start of an initial reproduction of the audio/video information, for enabling a start of a reproduction of the audio/video information stored on the storage medium, and

wherein,

  • in a case where an elapsed time from a retaining of the audio/video information is within the first period and an elapsed time from an initial reproduction of the audio/video information is within the second period, enabling a reproduction of the audio/video information, and,
  • in a case where a reproduction is started before the end of the first period and the reproduction is continuing at the end of the first period, enabling the reproduction to an end of the audio/video information beyond the end of the first period, and thereafter disabling a start of another reproduction of the audio/video information even if an elapsed time from the initial reproduction of the audio/video information is within the second period.

Note that the claim has interesting parallels to the claims invalidated in Mayo v. Prometheus.

127 thoughts on “Ladders of Abstractions: How Many Rungs Till the Threshold?

  1. 23

    “Ladders of Abstraction?”

    More like Nooses of Innovation.

  2. 22

    ” [Update – These are the three patents listed in the petition, but that appears to be an error. I believe that Maxell intended to list 9,083,942 and 9,773,522 but switched a couple of digits.]”

    Typos in a Petition for Writ of Certiorari, misidentifying the patents at issue, signed by registered attorneys, filed at the Supreme Court of the United States? Sure, why not. It’s only the Supreme Court of the United States.

    1. 22.1

      “On Petition for a Writ of Certiorari to the United States Court of Appeals
      for the Federal Circuit”

      I’m sorry. Is this a joke?

      1. 22.1.1

        I don’t believe it is a joke. They are petitioning the Supreme Court to issue a Writ of Certiorari. A Writ of Certiorari orders a lower court to deliver its record in a case so that the higher court may review it.

        Probably a common misunderstanding.

        1. 22.1.1.1

          They don’t bother to mention the Court they are petitioning to issue the Writ because, . . . SCOTUS knows who SCOTUS is and know what SCOTUS do (?).

        2. 22.1.1.2

          But, I’d probably cut them more slack if they at least knew what patents they were defending.

          1. 22.1.1.2.1

            Given today’s new post with well-pled (and vigorous amici support) cases declined by the Royal Court, I wouldn’t get too worked up about the typos (even ones that are not on blog posts).

        3. 22.1.1.3

          Also see the example in Supreme Court Rule 34(d):

          “(d) the nature of the proceeding and the name of the court
          from which the action is brought (e. g., “On Petition for Writ of Certiorari to the United States Court of Appeals for the Fifth Circuit”; or, for a merits brief, “On Writ of Certiorari to the United States Court of Appeals for the Fifth Circuit”);”

          1. 22.1.1.3.1

            Thanks, NotPaid. I will delete the “joke” post. [presently, several minutes later] Just consider it a typo.

  3. 21

    Even though this thread is about ‘abstractions’ in the sense of ladders and the multiplicity of rungs thereon, this news article caught my eye since it states that we are going to need NEW physics to resolve (apparently what the human map of the OLD physics cannot):

    link to livescience.com

    I’m going down to the coffee shop by the local university for a nice mug of phlogiston (topped with a double shot of aether) and to offer the boys (and to be politically correct, the girls and the non-binaries) some pizza to invent/discover/create a map of this physics. No problem right? The weekend has hardly begun, your honorable highness reverend Breyer…

    1. 21.1

      The Universe is expanding but not into what had been empty space. Space itself is expanding. And since space and time are intrinsically linked it is possible that it is spacetime that is expanding. In that case, not only is space expanding but time is expanding (thereby slowing down) as well. It would explain why the expansion of the Universe appears to be accelerating. It isn’t, it only appears to be accelerating because time is slowing down.

      Empty space is not empty. It is filled with the Higgs Field. It is the Higgs Field that gives particles such as electrons, protons, and neutrons their mass. It is the Higgs Field that gives rise to the four fundamental forces of Nature: the Strong Force, the Weak Force, Electromagnetism, and Gravity. Since the Higgs Field permeates all of space, and space is expanding, is the Higgs Field also expanding or is it staying the same?

      If the Higgs Field is expanding along with space then the Higgs Field is becoming weaker and the four fundamental forces of nature are becoming weaker. Planetary orbits will increase until the planets are no longer bound to their star and moons will no longer be bound to their planets. With less gravity stars will increase in size (such as when they become red giants because they are now burning helium which produces more energy than burning hydrogen and overwhelms gravity until it reaches a new equilibrium as a red giant) until they simply go out completely because the weak force no longer supports nuclear fusion. And atoms will ionize more easily until they also fly apart.

      But if the Higgs Field is not expanding then it is effectively becoming more dense (more lines of force per cubic meter) in which case the four fundamental forces of nature are becoming stronger. At some point planetary orbits will decay, stars will implode, and even atoms will collapse. And Stephen Hawking’s Higgs Field Doomsday Prediction will come true. With an increase in the strength of the Higgs Field it will inevitably seek a lower energy level. It will start in a bubble that will expand at the speed of light.

      Here’s how Hawking describes this Higgs doomsday scenario in the new book:

      “The Higgs potential has the worrisome feature that it might become metastable at energies above 100 [billion] gigaelectronvolts (GeV). … This could mean that the universe could undergo catastrophic vacuum decay, with a bubble of the true vacuum expanding at the speed of light. This could happen at any time and we wouldn’t see it coming.”

      Or, if it is spacetime that is expanding (and not just space) then there shouldn’t be anything to worry about since with the expansion of spacetime everything remains in scale.

      The reason scientists get different values for Hubble’s Constant (even though their methods appear to be sound) is because some of our fundamental assumptions about the Universe need to be revisited.

      1. 21.1.1

        Interesting set of “ifs;” be that as it may, ALL of those sets only the more emphasize that classic phrase:

        Leci n’est pas une pipe.

        1. 21.1.1.1

          Leci? Did you not intend “Ceci”? For the phrase which for you is an oft-quoted “classic” you’re not again relying on what you see in Wikipedia, typo’s and all, are you?

          1. 21.1.1.1.1

            You are correct here MaxDrei, for a blog post on the fly, I (OH NOES!) have a typo.

            Let me know if you have a substantive point to add to the conversation, eh?

            1. 21.1.1.1.1.1

              Not here. Such high-flown physics I’ll leave to others. But if you want, have a fresh look at the Watchdog site, on the thread about the AI Inventor at the UK Patent Office.

              1. 21.1.1.1.1.1.1

                ….when my new post to Watchdog gets as far as release into the thread, that is.

              2. 21.1.1.1.1.1.2

                While the “high-flown” physics is breathtaking to explore, no real exploration is necessary to discover the legal points being put on the table.

                The invitation for substantive reply points was to legal rather than technical points.

  4. 20

    Alice-wise, the more abstract the summary the more is left to be ‘something more’

    In this case

    Specific kind of data
    Specific time rules
    On a computer

    Was not enough more. Is this wrong?

    1. 20.1

      A specific kind of data is never something more because it itself is its own abstraction, see Electric Power Group: Information as such is an intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12, 127 S.Ct. 1746, 167 L.Ed.2d 737 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly, we have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.

      On a computer is the classic Alice insignificant thing. That leaves “specific timing rules” and I don’t know what is so specific about them when it leaves both thresholds entirely not limited. I certainly think that if the rules regarding the access were specific enough they would constitute something significantly more, but that isn’t really the case here.

      1. 20.1.1

        Still clinging to Electric Power Group, eh Random?

        This is precisely why Dir. Iancu published the newer** eligibility protocols: to keep yahoos like Random from employing Common Law law writing of (mis)expanding already BAD Common Law law writing of the courts (and in the immediate instance, NOT taking into account the more recent precedental cases that DO provide for eligibility based on (or including) ‘collecting information’ (and then doing something with that data, transforming it).

        ** hoorah, the binding eligibility protocol being now over one year old.

        1. 20.1.1.1

          Binding?

          Were that it were only true.

          Were that it were only true.

          1. 20.1.1.1.1

            I “get” the skepticism.

            Binding and enforced are (unfortunately here) two different things.

          2. 20.1.1.1.2

            Right. the PTO guidelines are fine if all one cares about is getting an application allowed and don’t care if the patent is ever enforceable.

            1. 20.1.1.1.2.1

              Absolutely on point, Paul (which, by the way is the predominant fault of the Supreme Court).

              Let’s talk with Cleveland Clinic, who lost a claim to the simian-in-a-cage-been-fire-hosed-by-the-Supremes CAFC directly modeled on a PRIOR USPTO eligibility guidance.

      2. 20.1.2

        On a computer is the classic Alice insignificant thing.

        Which, of course, is one reason why Alice is wrong…

        See link to xkcd.com

        (Always love posting that pertinent panel)…

      3. 20.1.3

        I deeply believe there are specific data that could be eligible & specific data that should never be. If the data has human meaning, it should not be subject to the patent laws. If it only has meaning to a machine, it’s a machine component and not an abstraction. No human mind: no abstraction.

        1. 20.1.3.1

          You are deeply in the weeds.

          You own it, which does have its odd sense of virtue, but you could be so much better aligned with an overall appreciation of innovation (no matter the Kondratiev wave) and innovation protection if you simply tried to understand that ALL innovation — at core — is, and must be, for human consumption.

        2. 20.1.3.2

          Martin, isn’t a shovel for a human? So why isn’t that abstract compared with say a gear for a machine?

          1. 20.1.3.2.1

            Because a shovel is not an item of information. I’m not sure why you have such difficulties understanding that this scheme is limited entirely to the disposition of information elements of inventions.

            1. 20.1.3.2.1.1

              A method is not an item of information.

              You don’t understand quite a few things Marty.

              1. 20.1.3.2.1.1.1

                A method requires a result. If the result of the method is an item of information, the patent system currently cannot reliably deal with it.

                1. You’ve moved the goal post from the statutory category of method.

                  It’s not up to you to disregard the words of Congress, now is it?

                  Also (still), a method is not information.

                  Are you redefining information as well?

                2. By the way, you are ahead of the game in an important aspect — that of realizing that the Scoreboard is broken — with your comment regarding ‘dealing with it reliably.’

                  Maybe you can take a step in root cause analysis and realize just who has mucked up that ‘reliability’ with attempts to legislate from the bench with an “Ends justify the Means” mentality…

      4. 20.1.4

        This is quite a gemstone that you have unearthed here Random.
        First, the sentence « information itself is an intangible. » Let’s try to understand what this could mean. « Information by itself » must be something disembodied from any medium used to materialized it. Maybe the Court wants to refer to a meaning or idea that humans recognize in the information. « An intangible » is easy, it is something that has no physical presence. So, the first sentence seems to be saying that information (in fact anything) that is disembodied from its physical realization has no physical presence.
        Then the sentence « we have treated the collection of information as within the realm of abstract ideas. » Maybe the federal circuit is saying that the mere recitation of « collecting information » only conveys the purpose or result of storing signals regardless of the way this storing is achieved. So this second sentence seems to be saying that the federal circuit treats the statement of a particular purpose or result, the collection of information, as being an abstraction.
        Finally, the conjunction « accordingly » suggests that this second sentence is a consequence of the first sentence. That conjunction could be here to convince readers that the federal circuit is engaged in reasoning. It does not prove any logical connection between the sentences.
        So here we are, we have two sentences that are mere tautologies, and that are coupled together by language that suggests that these sentences provide a fair explanation for decisions. And then, these sentences are cited as authoritative, and usually applied to claim limitations that are often neither about information by itself, nor about the purpose or result of storing information regardless of the ways the storing occurs.
        I don’t think we will ever get out of the eligibility conundrum as long as judges keep parroting meaningless passages of previous opinions and do not spend enough time trying to understand what they are writing. We need judges that are more Doctor and less Jurisprudence.

        1. 20.1.4.1

          PiKa,

          I would rather give you credit for the gem — as opposed to Random, whose confirmation-bias tendencies make it impossible for him to grasp the thrust of your point of:

          So here we are, we have two sentences that are mere tautologies, and that are coupled together by language that suggests that these sentences provide a fair explanation for decisions. And then, these sentences are cited as authoritative, and usually applied to claim limitations that are often neither about information by itself, nor about the purpose or result of storing information regardless of the ways the storing occurs.

          The Supreme Court has created a Gordian Knot with their “Ends justify the Means” intrusion into the statutory law of patent eligibility.

          The gem is that you have taken note of this by noting the fallacy of the handwaiving that is going on.

          This fallacy has been noted in other ways by other people (for example, I have laid out how the law re-written by the Court fails a Void for Vagueness critical evaluation), but you do credit for the gem of your discovery.

          Maybe we should write a law promoting discoveries…

          1. 20.1.4.1.1

            “you do credit” => “you do deserve credit”

    2. 20.2

      Slashdot Reader,

      First, I appreciate your venturing into the legal terrain.

      Now then, “Was not enough more. Is this wrong?” may be a good question but it is not. That question presupposes a condition that is not present in the ‘Alice-wise’ scheme of things: that Alice and her cohorts are sufficient and sufficiently stable to serve as a non post facto, ‘survive a critical evaluation of Void for Vagueness doctrine,’ properly respecting Separation of Powers, rewrite of the statutory law of 35 USC 101.

      In other words, the elephant in the room of whether the Gordian Knot mess of Supreme Court jurisprudence is proper in the first place.

      There are certainly other questions that need answers well before answers to your question can be seriously considered. This is because the Supreme Court mess provides not one but two moving targets in the same doctrine. First, “abstract” was not only ‘not defined,’ it was purposefully left undefined. Second, ‘something more’ is a relative term, but the Court gave NO parameters for any measure and any (properly tied to a legal foundation) sense of HOW to measure against an undefined measurant.

      Should any critical thinking person BE surprised that the Gordian Knot would only grow more knotted?

      1. 20.2.1

        “but it is not” => “but it is not the right question”

  5. 19

    Wrong again. You think repetition makes a thing true. It does not.

    1. 19.2

      Honest Abe, you don’t know much about how change happens. Repetition is a prime factor.

      1. 19.2.1

        Maybe our Shifty Honest Abe has a problem with the maxim (propaganda t001):

        Repeat a L I E often enough and it becomes the ‘truth’…

  6. 17

    I think a key problem with the claim is that it seems to merely describe human activity: two people conversing while being able to see each other and then deciding to repeat that same activity.

    1. 17.1

      Yes and it is carried out in the spirit world too.

    2. 17.2

      First of all, it doesn’t recite human activity.

      Second of all, what would be wrong with reciting human activity? Lots of method claims recite human activity. Methods of making things, such as chemicals and manufactures, all recite human activities, such as mixing, combining, heating, stirring, molding, attaching, providing…

  7. 16

    Placeholding desires may end or expand soon. Reuters reportedly has said that the Supreme Court will meet today to consider petitions for certiorari that will include six concerning Patent Act section 101’s requirement of subject matter eligibility.

    1. 16.1

      The Scotus will not end up helping 101 jurisprudence.

  8. 15

    Comment in buffer. You can conclude that my comment was the killer comment that was better than all the other comments, but it was held in the we don’t like pro patent people buffer.

    1. 15.1

      Did you have multiple links or any of the “George Carlin”-like words?

      You do not appear to be near the Count Filter.

  9. 14

    >>However, the district court refused to consider evidence of inventiveness in its eligibility analysis.

    This seems to be a reason to overturn it at the CAFC. Also, the whole thing of finding a way to summarize an invention in a sentence or two and then asserting that the invention is nothing but the summary is reduction ab absurdum.

    Almost all the comments are directed towards how the person feels about the invention. Whether they feel it deserves a patent. No laws. Just how does the king/queen feel about the subject brought before them.

    Also, “as directed to the abstract idea of ‘restricting access to data’ using ‘rules based upon time.'” The core problem with Alice is that any invention can be summarized like this.

    We are a laughing stock around the world because our judges and “justices” are out of control.

    1. 14.1

      +1 Night. Big +1.

  10. 13

    Dennis you provide three patent numbers, the third being 9,733,522. Would you like to check. That number strikes me as incorrect.

    1. 13.1

      Hooray for you MaxDrie, as you have caught yet another typo.

      From the Prof.’s update, this looks to be a typo with some possible impact too (if the court does not allow a correction).

  11. 12

    I have to wonder how many people grasp the meaning of the title of this post.

    1. 12.1

      As a follow-up, inherent to the title are both the notion OF a threshold and the notion that any law dealing with property must be able to be able to withstand a Void for Vagueness challenge.

      Perhaps next semester one of the questions Prof. Crouch could ask is whether the Common Law (rewrite – not interpretation) of 35 USC 101 with its extra statutory provisions written in undefined terms would survive scrutiny under a Void for Vagueness critical analysis…

      Bonus points for the tie to the historical setting leading up to the Act of 1952.

  12. 11

    I would have articulated this as a fundamental business act (rental), rather than the restricting access to data abstraction. Most commercial do-it-with-computers actions are in fact applying fundamental business practices, see, e.g. Hulu, and that’s a stronger argument than rules for restricting data access.

    The claim is a fundamental business act with an insignificant particular field of use (the objects being rented are digital a/v movies) and the additional feature of the particular manner of rental is either part of the fundamental act or easily shown to be conventional. As Les said – it’s last call: People providing timed goods/services conventionally extend the period beyond an otherwise threshold limit in order to allow people to finish what they paid to start.

    1. 11.1

      Let me see…

      Department of Commerce

      Nope. No irony there.

      1. 11.1.1

        Department of Commerce

        Haha you start monopolizing last call applied to [some other product] I guarantee you there won’t be much intrastate commerce to speak of, let alone interstate commerce.

        1. 11.1.1.1

          You don’t get how patents work, do you?

    2. 11.2

      … it’s not like you Gisted the bejesus out of that, now is it?

      Oh wait, this is the guy for whom ladders only come with two rungs.

  13. 10

    No Martin, it isn’t like a library refusing to lend you a book if you have overdue books.

    Its like “Last Call” wherein the bartender lets you finish your drink as long as you order your drink before a time limit.

    e.g., see George Thorogood:

    link to youtube.com

    1. 10.1

      Sure Les, your analysis is Bad to the Bone.

      Same point of course: no way, no how this deserves a United States Patent.

      The correct result was achieved, so that’s a good thing.

      1. 10.1.1

        The Ends do not justify the Means.

        Your view is extremely dangerous in law.

      2. 10.1.2

        I’m not so sure it was obvious.

        The obvious way to do it IMHO is to have a single time limit by which all playback must have commenced and any playback commencing before that time is allowed to continue until completion with no rewinding or restarting allowed after the single time limit.

        1. 10.1.2.1

          I’m not so sure it was obvious. The obvious way to do it IMHO is to have a single time limit by which all playback must have commenced and any playback commencing before that time is allowed to continue until completion with no rewinding or restarting allowed after the single time limit.

          As Han Solo said – That’s not how the force works. It’s not a question if something was more obvious. It’s a question if this was obvious.

          Its like “Last Call” wherein the bartender lets you finish your drink as long as you order your drink before a time limit.

          Hey look, you identified a known technique (specifically, a soft time rule that makes exceptions to let people finish what they paid to start). Now all you have to conclude is that watching audio/video on a computer predated 2000, and one was enabled to code this (almost certainly proven by the specification itself not providing an enabling teaching) and it’s obvious! Good Job, Les!

          1. 10.1.2.1.1

            That’s not how the force works. It’s not a question if something was more obvious. It’s a question if this was obvious.

            How are you an Examiner?

            Legal obviousness — as opposed to colloquial obviousness — is a relative term (think of your Graham factors, you do know those, right?).

            You appear to want use the colloquial version — and to do so in an untowards dismissive conclusory manner.

            To borrow from an old Quayle quip:
            Han Solo?

            Random, I served with Han Solo.
            I knew Han Solo.
            Han Solo was a friend of mine.

            Random, you’re no Han Solo.

          2. 10.1.2.1.2

            “It’s not a question if something was more obvious. It’s a question if this was obvious.”

            I disagree. If there are two paths, a decision has to be made about which path to take. If one path is “more obviously” the right path, then it is not obvious to take the other path.

            Furthermore, the fact that there are two apparent paths to take and a decision has to be made means that it is not obvious to take either path.

            Que the scarecrow.
            Que the munchkins.

            1. 10.1.2.1.2.1

              I disagree. If there are two paths, a decision has to be made about which path to take. If one path is “more obviously” the right path, then it is not obvious to take the other path.

              Except there’s no legal tenant that supports this logic. This isn’t a teaching away situation, since that requires a…teaching away – a statement that the proposed combination has been tried and doesn’t work. Nor is this an obvious to try situation. Beyond that, there’s no case law anywhere which says that another option has any bearing on the obviousness analysis at all. So when you say you disagree, you mean that in your personal, non-authoritative opinion, right?

              Meanwhile, the statement “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” comes directly from KSR. A slightly better citation source than “None.”

              Furthermore, the fact that there are two apparent paths to take and a decision has to be made means that it is not obvious to take either path.

              Oh so we don’t need teaching away at all, since there mere *existence* of two options renders something non-obvious, haha. All those cases that consider teaching away and uphold obviousness anyway are just wrong?

              Here’s a thought I’ll throw out there – if I see two paths, its obvious to wander down either path. It’s even obvious to blaze your own path if you have a motivation that suggests it would be a good idea. I suspect this to be true, because every time I drive a car from point A in the city to point B, I sure don’t *feel* like an inventor because I chose a particular path of all the paths that any foool would tell you get you to your destination.

              1. 10.1.2.1.2.1.1

                Well clearly, “two paths” is hardly a great example, but Random, you also stray into the weeds with your false logic about “teaching away.” You appear to want to create a bit of a strawman since Les probably had no intention of introducing Teaching Away, and your “ Oh so we don’t need teaching away at all,” does not follow from your own set-up.

                1. Les probably had no intention of introducing Teaching Away

                  Les explicitly introduced an explicit teaching away argument that was actually, textually made in for-realsies caselaw, and was rejected. I can’t help it that neither he nor you understand that it was termed a teaching away argument, but his intention is what it is.

                  There is ZERO caselaw that an invention becomes non-obvious because of “number of options available” with the limited exception of in the case of obvious to try, which requires a limited, finite number of options to succeed as an obviousness rationale. Other than that, I invite you to cite a case which disagrees. The number of alternatives is simply irrelevant.

                  The closest logic that DOES exist is teaching away. But true teaching away is often misconstrued, just as it is done by Les right here. It is not as simple as saying “there’s two/three/four paths, and we urge you to go down path B to the exclusion of others.” Consequently, when Les talks about the “more obviously right path” he is explicitly arguing that a stronger motivation toward B renders A non-obvious. But there have been teaching away cases that dealt with precisely that fact pattern – where the reference lauds option B over option A – and those have been found to be NOT teaching away and NOT a reason for something to be non-obvious. See In re Fulton or Gurley or even Anderson’s Black Rock. In re Gurley is the EXACT OPPOSITE of what Les argues for – the claim used epoxy, the prior art said that polyesterimide resin or epoxy could be used, and it explicitly said that epoxy had qualities that rendered it inferior to using resin (i.e. it generated a “more obvious right path” of resin) and the federal circuit still upheld the obviousness of using epoxy.

                  That’s because teaching away requires disparaging/discouragement – a statement that going down a given path DOES NOT WORK. In other words, it is clear that it is not the *existence* of other options (as Les argues in his second paragraph) or even the *preference* of other options (as Les argues in his first paragraph) that renders something non-obvious, it’s that being told that the claimed option will not work may defeat the requirement of a reasonable expectation of success, which is (unsurprisingly) a requirement one can actually point to in known case law. Funny how my (I daresay correct) interpretation of the law has ample citations going for it (protip: those tend to help in convincing courts), while Les’ view of the law requires you to conclude that nobody ever made the winning argument “but there were two paths to go down!” in the entirety of the history of american invention.

                  So in short – Les’ first paragraph is explicitly wrong law, and Les’ second paragraph (besides rendering every claim non-obvious, I mean KSR would be non-obvious because there were multiple places to place the brake in the footwell, so while there’s no case either way its pretty easy to judge what the outcome would be) has no citation for it at all.

                  At the risk of repeating myself – Obviousness is not comparative because neither existence nor preference of alternatives defeats obviousness. If there are 1000 options expected to achieve a result within the skill of the art, all 1000 are obvious. We do not get to some threshold number beyond which all options become non-obvious – it’s not like at 499 we have 499 obvious acts but then when a 500th is discovered suddenly the 499 previous ones become non-obvious. Nor do we call the ones that are a threshold level of inferior non-obvious. Something is obvious based upon whether the art was capable and motivated by some expectation of advantage of performing an embodiment within the scope. The expectation of a greater advantage by going down some other path just means that there are other obvious inventions out there. Mundane-ness is not non-obviousness.

                2. Wow, Random, again WAY too many words.

                  At the risk of repeating myself – Obviousness is not comparative because

                  Ok — full stop.

                  Since LEGAL obviousness IS comparative, whatever you finish your proposed view on the aspect of comparativeness for obviousness MUST be wrong.

                  neither existence nor preference of alternatives defeats obviousness.

                  You have a logical fallacy in your assertion.

                  Let’s jump down to (emphasis added):

                  Something is obvious based upon whether the art was capable and motivated by some expectation of advantage of [combining to] [perform] an embodiment within the scope.

                  Let me know why the emphasis (and correction) is necessarily tied to obviousness being comparative. Feel free to use your Graham factors in your analysis. Chat with your SPE if you must (goodness knows how many applicant’s attorneys have tried to teach you).

                3. Let me know why the emphasis (and correction) is necessarily tied to obviousness being comparative.

                  We’re not discussing comparing a combined modification to the base reference (which unquestionably occurs in an obviousness analysis), we’re discussing comparing a first modification to a second modification and you know it. Nice attempt at goal post moving.

                4. No goalpost moving here — YOU are the using labeled in a manner that is WAY too over-arching (and this manner of yours is NOT limited to discussions of Legal obviousness).

                5. … plus the fact that YOU are the one playing ‘beat the Strawman’ with a non-Teaching Away attempt being used as something that someone else is arguing, only to knock it down (and, again, with over-broad assertions on the relation of Teaching Away to obviousness).

                6. “… plus the fact that YOU are the one playing ‘beat the Strawman’ ”

                  Just to be perfectly clear, in case I wasn’t, the above mentioned “Strawman” was not the scarecrow to which I was referring…

                7. Random: “Something is obvious based upon whether the art was capable and motivated by some expectation of advantage of performing an embodiment within the scope.”

                  Les:” If one path is “more obviously” the right path, then it is not obvious to take the other path. ”

                  How’s this then?:

                  If one path is “more obviously” the right path due to some expectation of advantage in taking that path, then it is not obvious to take the other path.

          3. 10.1.2.1.3

            I’ve been raking my brain for a week or so now… but I have no recollection. At what point in the saga did Han Solo say this:– “That’s not how the force works.” and to whom did he say it?

  14. 9

    Here’s a legal writing contest challenge this claim inspires: Who can re-write this lengthy claim in the shortest-possible plain-English version retaining all actual limitations?
    [Not to be confused with effective claim writing for getting claims allowed by some examiners.]

    1. 9.1

      We Claim:

      Last Call.

    2. 9.2

      Lend an audio and/or video media in association with a lending period to a user;
      receive a request to present the media to the user;
      present the media to the user if the request is received within the lending period.

  15. 8

    Sure why not?

    Is it a method? Yes

    Is the result of the method an item of information? Yes (in this instance, has the first period expired)

    Does the useful result of the information arise by human consumption of the information? No. The method is independent of human meaning and consumed by the playback device to determine playback status. It should be eligible.

    Is it obvious? Yes, as the sunrise. It’s like a library saying no more books for you if you have one overdue. There is no particular technology involved and the principle is completely known.

    1. 8.1

      I think that you are applying the “colloquial obvious” instead of the “legal obvious” in your comment here.

      See link to xkcd.com

      1. 8.1.1

        I’m sure references could be found etc. to build the legal case for obviousness, but to reform the system, judges should be construing these inventions in an enhanced Markman like procedure, at the end of which they could heave them on a KSR style common sense summary judgement to save someone the million bucks. They could apply an Alice type framework at that point for simple, totally non-technical “do it on a computer” inventions like this one. This really does not need to be expensive or controversial, except you know, gr eed.

        1. 8.1.1.1

          I’m sure references could be found etc. to build the legal case…

          Then find them. Being “cute” with shortcuts is not permitted (that’s a critical danger with not understanding the terrain upon which you may want to do battle).

  16. 7

    Re: “In some ways, this case is simply asking the Supreme Court to recognize the USPTO’s eligibility examination guidelines as the law — a claim is only directed at an abstract idea if it recites an abstract idea.”
    As discussed in a slightly earlier blog post here, could that guideline in some cases lead to the absurd result of a narrow dependent claim being held unpatentable yet its even broader parent claim being held patentable?

    1. 7.1

      Paul, the result is not always absurd. For example:
      1. An apparatus comprising a boiler, a piston, a chamber, and a rod coupling the piston to a wheel.
      2. The apparatus of claim 1 further comprising a human operator for selectively adding coal to a burner.

  17. 6

    claim is only directed at an abstract idea if it recites an abstract idea.

    From January to March (Iancu public statements about the January protocol) to October (claw back on “recite” to be more of a fuzzy “well, kind of talking about ____”) and now back to “recite” being a “strict identity” type of thing….?

  18. 5

    The claim would have looked a lot more compelling and a lot less abstract if the limitations tacked on in the wherein clauses had instead been integrated into the elements reciting actions.

    1. 5.1

      Meh, wherein clauses are a perfectly acceptable form.

  19. 4

    What seems to me really strange here [if they are really trying to get cert] was merely asking the Sup. Ct. in the “question presented” to review the claims of one case: “Whether the claims at issue in Maxell’s patents are patent-eligible under 35 U.S.C. 101,..”? That is, not raising in that key language any issue of general interest or general applicability?

    1. 4.1

      [P.S. I charitably assume this cert petition is being filed as a finality holding action in case the Supremes do take up any of the other cert petitions trying the get the Supremes to reverse themselves re Alice on unpatentable subject matter aka “101” ?]

      1. 4.1.1

        Possibly. And does not need a complete reversal; a clarification of Alice requiring remand might be sufficient. Might be another one of those old applications where the claims were intentionally technology agnostic as permitted at the time, a PTAB appeal was taken before Alice was decided, the claim was then ruled ineligible when Alice was applied, and now the applicants hope for a remand back to USPTO in order to argue under the new analysis (and also apply Iancu’s more lenient 2018/2019 guidelines). They can’t directly argue those guidelines in the appeal to the CAFC.

        I’m frankly surprised there are not more such cases in a queue

      2. 4.1.2

        trying the get the Supremes to reverse themselves

        I have outlined the “Kavanaugh Scissors” that are available to cut through the Gordian Knot of Supreme Court 101 Conflictions…

      3. 4.1.3

        Had the same thought Paul. Must be a placeholder petition. No way SCOTUS would accept this case based (solely) on the question presented.

  20. 3

    Rule 36: Shortcut to (in)justice.

    Want more written CAFC decisions / opinions?

    Simple: Remove the heavy AIA burden from the backs of the overworked, overwhelmed Justices by ending the unconstitutional “trials” decided by unconstitutional “judges.”

  21. 2

    “However, the district court refused to consider evidence of inventiveness in its eligibility analysis.”

    Isn’t that the correct way to analyze it? Current case law seems to say that abstract ideas are not patentable unless they are really patentable in which case they are patentable, and conflates eligibility with obviousness and incorporates some form of “flash of genius” standard hidden in the “something more” and “search for an “ ‘inventive concept’’ language of Alice.

  22. 1

    Is it time to start looking at eligibility and validity in the context of infringement? Is the infringer is using the teachings of the invention or the teachings of the prior art? Inventors are always accused of claiming more than what they invented, regardless of their intent.

    1. 1.1

      “Is it time to start looking at eligibility and validity in the context of infringement? ”

      Not sure how you look at eligibility in the context of infringement. If the subject matter of the claims is not eligible for patenting (and I’m not saying these claims are not) then there’s nothing that can be infringed.

      1. 1.1.1

        I don’t think the question is about the subject matter. It is about claim construction. If the infringer is doing something abstract, there is no infringement anyway. If the infringer is doing something tangible, it provides context for comparing the accused device/method with the claims. If an apple falling from a tree infringes, then that is not the proper claim construction.

        1. 1.1.1.1

          There is no point in doing claim construction on a claim that is not patent eligible. Whether the accused infringer is doing something “tangible” is irrelevant. The issue is whether the infringer is infringing a valid claim (which of course has to recite eligible subject matter before its validity is even considered).

          1. 1.1.1.1.1

            My proposition is that there is always a dispute over what it is the claim recites. The infringer says it recites an abstract idea and/or prior art and the inventor says it recites a tangible thing that is different than the prior art.

            No inventor would claim an abstract idea, that is useless.

            If you claim to have invented determining current by measuring drop in voltage across a known resistor, then it would map directly to real world infringement. There is no need to do an eligibility analysis. Just evaluate the accused system to see if does what you claim.

            If you claim to have invented the idea that current is inversely proportional to voltage then 1) it is not novel and 2) you won’t be able to write a claim chart showing infringement.

            1. 1.1.1.1.1.1

              Josh,

              Good point. If someone copied something, then how can it be abstract?

              The problem is that you enter the world where logic does not matter in the 101 jurisprudence of the Scotus.

              Abstract was meant to mean something like “build a machine with fewer parts that operates as quickly.” That is an abstract claim, but 112 made the word abstract no longer necessary, so the Scotus attached a new meaning to it as judicial activism to take out patent law.

              This is a recurring theme at the Scotus. The rule of reason is another example.

          2. 1.1.1.1.2

            AAA JJ,

            You do know Josh is not an attorney, right?

            Let’s not dismiss his idea just because he is not expressing it in a “fine-tuned” legal manner.

            What I believe that he is proposing (and yes, he is proposing a change) is that an infringement analysis may provide an indicator FOR a finding of eligibility.

            This may work — for example — if infringement can be identified as a “practical application” which then would lift the accused action/product to be beyond “merely an abstract idea.”

            Think of it this way: if someone is making money on it, it would tend to be a practical application. Thinking (alone) — and is that’s the realm of “abstract ideas [well, all ideas actually] is not an item that “makes money.”

            1. 1.1.1.1.2.1

              “You do know Josh is not an attorney, right?”

              You do know AA does not do litigation, right?

              1. 1.1.1.1.2.1.1

                Thanks Shifty, no, I do not know whether or not AAA JJ does litigation, since I do not know the identity of that poster.

                However, I can tell that his line of work includes patent prosecution.

                What is your line of work? I really cannot tell much from your postings except for the sense that you have never been involved with either innovation itself, not with obtaining any type of protection for innovation.

                1. So many self-anointed experts! I’m confident AA’s imaginary motions and briefs are equally persuasive as your imaginary motions and briefs.

                2. Your reply is a non sequitur.

                  Your mode of gaming is showing through here. Maybe you should address the actual contents of the posts presented instead of trying so hard to be snarky. Empty snark (like yours) rather works against the person throwing off such snark.

                  How do you not know that? What is your line of work, that you think such does not apply to you?

                3. I am addressing “the actual contents of the posts presented,” Snowflake. So many self-anointed experts!

                4. Your reply is a non sequitur, so, no, you are not addressing the content of the posts.

                  ALL that we can get from your post is that YOU feel a certain way. But the content of your post, in its hurry to be snarky, jumps to labels about posters (hint: ad hominem) that you cannot possibly know about (hint: empty ad hominem).

                  Your game is transparent. And here, your empty snark only makes YOU look bad.

    2. 1.2

      Josh, defense counsel showing the jury that their accused infringer client is merely using the teachings of the prior art is a good jury trial tactic, especially if it was all in one prior product. But conflating claim infringement with claim invalidity is not legally proper. Among other good reasons is that the patent owner has the burden to prove infringement, while the defendant has the burden to prove invalidity.

      1. 1.2.1

        The problem is that eligibility and validity have been too far removed from the the invention. Patents are supposed to secure to inventors the exclusive rights to their discoveries. I don’t think any of these findings of ineligibility and invalidity that are so common have anything to do with what was invented. It is always about how it was claimed. And most times it is not the inventor or examiners fault, it is just because words are so readily disputed.

        It seems to me the peripheral claiming has failed. It was supposed to eliminate disputes over the scope of the invention. The 1952 patent act added further requirements in 112(b). Then Markman in 1996. Nautilus in 2014. But disputes are still rampant.

        Perhaps we should just read the patent and look at the accused product and if it uses the patent rather than the prior art it infringes.

        1. 1.2.1.1

          Re: “disputes are still rampant.”
          Patent litigation is decreasing, and it is peanuts in comparison to a claim-free patent system in which any inventor could claim that their patent is infringed, because the patent would not need to clearly say what the invention is, and no one could determine whether they infringe a patent or not unless and until after a million dollar + suit and appeal.
          Inventors need to do a better job of reading and understanding the claims they are signing an oath for when their applications are filed, insisting on plural claims of varying scope, and understanding what the prior art is.

          1. 1.2.1.1.1

            Yes, litigation is decreasing, because litigation does not work.

            By disputes, I am referring to disputes over the meaning of the claims. I believe it is very close 100% of cases.

            That leads to your “solution”. If every single assertions involves a dispute over the meaning of the claims, how can an inventor do better? Can you point to a exemplary patent that is indisputably infringed?

            1. 1.2.1.1.1.1

              Josh, you have (more than a little bit) of selection bias not being accounted for.

              1. 1.2.1.1.1.1.1

                I have never once seen a case where the accused infringer did not dispute the meaning of the words and phrases of the claims. Maybe I missed a few cases, but I doubt any experienced litigator would dispute my assertion.

                1. Josh, do you know what selection bias means?

                  You appear to double down here with an emphasis on cases that you have seen with accused infringers. Are you aware of the number of instances in which an accused infringer is informed of their (alleged or otherwise) infringement and follow a cease and desist request? That is a type of number that would be added to your comment at 1.2.1.1.1 in the sense that you simply are not seeing all “cases” because some (and perhaps MANY) “cases” do not need to advance to a litigation point at which time it would be natural to contest claim language.

                2. Gotcha. But if there is no dispute there is no dispute. I mean I have an exclusive licensee that does not dispute the meaning of my claims. You may not dispute the meaning of my claims at this point in time. My dentist does not dispute the meaning of my claims. Should those scenarios be included in the selection?

                  I think we can only select cases where there is an economic interest in manufacturing a dispute.

                  It is abundantly clear that writing claims has totally failed to prevent disputes over the scope of the invention.

                  If I were wrong, a substantial percentage of cases would not include disputes over claims construction or prior art limitations.

                3. Josh,

                  You’ve tripled down now with “But if there is no dispute there is no dispute.

                  The point here is that you have selectively winnowed down occasions in which the action of challenging claim construction will naturally be higher because for those instances in which claim construction is clear, the path showing in litigation is averted.

                  Your not accounting (in your selection) IS the selection bias.

                  In a sense (albeit in a different sense), you are making a similar mistake as those who attempted to fan the flames of the “0h no, Tr011s” scare. If one is going to make wholesale changes to the patent system, then the numbers used should be understood in context of the whole system numbers (for example, “bad claims” or “bad patents” may need to be normalized by total number of claims or patents to see any actual historical trends).

        2. 1.2.1.2

          So you believe that the problem with the current way we do patent litigation is “there is always a dispute over what it is the claim recites” and you think it would be better to replace our current way of doing patent litigation with “we should just read the patent and look at the accused product and if it uses the patent rather than the prior art it infringes”?

          Wow. That’s a phenomenally bad proposal.

      2. 1.2.2

        Paul,

        As to: “good reasons is that the patent owner has the burden to prove infringement, while the defendant has the burden to prove invalidity

        I would put to you that there is a plus here with the fact that it is the patentee having the burden to show infringement for Josh’s suggestion, for if that level is reached, then such would be a solid indicator against certain forms of alleged invalidity (chief among them being of course eligibility).

    3. 1.3

      Interesting approach Josh.

      Simply put: If the infringing apparatus, process, etc. isn’t abstract . . . then the claim it’s infringing can’t be abstract either.

      I wonder if this arg has ever (successfully) been utilized in litigation or (in a similar manner, e.g. pointing to any examiner-alleged 102 / 103 art) prosecution.

      1. 1.3.1

        Claims are not found ineligible because they are “abstract” only. They are found ineligible because they are “directed to” (whatever that means) an abstract idea and do not include “significantly more” that “transforms” them into eligible subject matter. (Not that I agree that should be the law, but it is the law currently.)

        1. 1.3.1.1

          What is the difference between “they are abstract” and your (admittedly undefined) “directed to but not significantly more” in any sense of pragmatic reasoning?

          Since you want to distinguish between two things with one of them undefined (and admittedly this is not your fault), HOW can you make any type of reasonable statement of the differences? The “not defined” may very well encompass the “abstract” that you want to distinguish from.

      2. 1.3.2

        “I wonder if this arg has ever (successfully) been utilized in litigation or (in a similar manner, e.g. pointing to any examiner-alleged 102 / 103 art) prosecution.”

        I would hope that no self respecting attorney would make such a dog sh!t argument.

        But I’m prepared to be disappointed.

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