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 Athena, Hikma, 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.
“Ladders of Abstraction?”
More like Nooses of Innovation.
” [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.
“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?
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.
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 (?).
But, I’d probably cut them more slack if they at least knew what patents they were defending.
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).
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”);”
Thanks, NotPaid. I will delete the “joke” post. [presently, several minutes later] Just consider it a typo.
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…
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.
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.
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?
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?
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.
….when my new post to Watchdog gets as far as release into the thread, that is.
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.
… and certainly not to “grammar” points.
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?
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.
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.
Binding?
Were that it were only true.
Were that it were only true.
I “get” the skepticism.
Binding and enforced are (unfortunately here) two different things.
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.
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.
“ 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)…
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.
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.
Martin, isn’t a shovel for a human? So why isn’t that abstract compared with say a gear for a machine?
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.
A method is not an item of information.
You don’t understand quite a few things Marty.
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.
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?
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…
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.
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…
“you do credit” => “you do deserve credit”
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?
“but it is not” => “but it is not the right question”
Wrong again. You think repetition makes a thing true. It does not.
Honest Abe, you don’t know much about how change happens. Repetition is a prime factor.
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’…
IPRs survive yet another constitutional challenge.
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.
Yes and it is carried out in the spirit world too.
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…
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.
The Scotus will not end up helping 101 jurisprudence.
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.
Did you have multiple links or any of the “George Carlin”-like words?
You do not appear to be near the Count Filter.
>>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 Night. Big +1.
Dennis you provide three patent numbers, the third being 9,733,522. Would you like to check. That number strikes me as incorrect.
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).
I have to wonder how many people grasp the meaning of the title of this post.
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.
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.
Let me see…
Department of Commerce
Nope. No irony there.
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.
You don’t get how patents work, do you?
… 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.
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
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.
The Ends do not justify the Means.
Your view is extremely dangerous in law.
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.
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!
“ 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.