Patent Eligibility: Advantages over the Prior Art are Not Sufficient without Meaningful Technological Improvements

Tenstreet v. DriverReach (Fed. Cir. 2020) (nonprecedential)

In a terse opinion, Judge Hughes has affirmed the demurrer (12(b)(6) decision by Judge Sweeney (S.D. Ind) holding Tenstreet’s U.S. Patent No. 8,145,575 invalid as directed toward an abstract idea.

The holding: even if the invention provides “advantages over the previous method,” it is not patent eligible without a “technological improvement beyond the use of a generic computer.”  In essence, “do it on a computer” is not enough for patent eligibility.  Judge Hughes writes:

[The patent claims arguably] provide three advantages over conventional processes for employment verification: (1) a single channel for routing transmissions; (2) the ability for job applicants to monitor the verification process; and (3) database storage of employment history.

The test for patent-eligible subject matter is not
whether the claims are advantageous over the previous method. Even if the ’575 patent provides advantages over manual collection of data, the patent claims no technological improvement beyond the use of a generic computer network. Accordingly, the district court correctly determined that the ’575 patent claims are directed to the abstract idea of collecting, organizing, and storing data on a conventional computer network, and that the ’575 patent claims recite no elements that transform them to patent-eligible applications.

Slip Op.

Claim 1. A method for peer-to-peer sharing of job applicant verification data over a network, the network comprising; a computerized exchange being in communication with one or more requesters, providers, and job applicants; the exchange managing one or more interactions of each requester, provider, and job applicant with the exchange; each requester being an entity seeking verification data about one or more job applicants, each provider being an entity in possession of the verification data of one or more job applicants and providing the verification data in response to a request for the verification data, the verification data disclosing a status of the job applicant during a period of time; said method comprising the steps of:

allowing one or more communication channels to interface with the exchange;

assigning an attribute to each requester, provider, and job applicant, the attribute defining the communication channel accessible to each requester, provider, and job applicant in transmitting data to the exchange and receiving data from the exchange;

receiving a verification request from a requester through the communication channel of the requester;

comparing, by the computerized exchange, the verification request with requirements;

routing the verification request to a provider through the communication channel of the provider;

receiving verification data provided by the provider in response to the verification request through the communication channel of the provider; and

routing the received verification data through the communication channel of the requester;

wherein at least one requester is also a provider for a second requester and at least one provider is also a requester for a second provider, the at least one requester providing verification data to the exchange for a period of time in which a respective job applicant was employed by the at least one requester and the second provider providing verification data to the exchange for a period a time in which the same or a different respective job applicant was employed by the second provider.

80 thoughts on “Patent Eligibility: Advantages over the Prior Art are Not Sufficient without Meaningful Technological Improvements

  1. 12

    Since when is an improved or novel computer method (on a conventional computer) not a technological advance? For example, when the bubble sort was developed, that was a technological advancement, even though it was practiced on conventional computers of the day.

    1. 12.1

      I suspect many here would by definition declare any novel computer method to be a technical advance. But I’d say that the bubble sort is a technical advance, while the novel application of a known bubble sort to a known list of auction bids by a known computer is not a technical advance. That the line is not easy to define does not mean there should be no line.

      1. 12.1.1

        I am not sure that you have set out what ‘line’ needs to be drawn here.

        By definition, you have the statutory classes, and then you have the utility to be within the useful arts.

        These are separate sides to the 101 coin.

        Are you falling prey to yet another thrust of ‘conflate and confuse’…?

        Or to put it another way, playing a violin fails to have utility within the Useful Arts, while a manner of making a violin most definitely has utility that falls within the Useful Arts. Each may be said to be methods, and thus — as methods — that part of the equation may be met.

      2. 12.1.2

        Ben will you offer us a thought on whether the ambit of “technical” is i) the same ii) wider or iii) narrower than the ambit of the “useful arts”?

        Or, putting it another way, is a “line” needed, to delineate the extent of the “useful arts” when trying to adjudicate eligibility for patenting in the USA?

        And, if so, has the SCOTUS got round yet to defining the ambit of the “useful arts”?

        1. 12.1.2.1

          Oh please, MaxDrei.

          It is beyond clear that ‘technical arts’ is but a subset of our Useful Arts.

          Forever and a day you have been fighting this, but this is purely a factual matter and you just don’t get to make up facts to support your preferences.

          1. 12.1.2.1.1

            Nevertheless, and despite your protestations, from the Decision:

            “….not patent eligible without a “technological improvement beyond the use of a generic computer.”…..”

            I suggest you devote no further energy to disparaging what I write. Instead, why don’t you deploy your energies instead in argument with Judge Hughes (and with that school of thought within the Federal Circuit that this Decision manifests).

            1. 12.1.2.1.1.1

              You reference a broken scoreboard situation in order to reference a particular score….

              Wrong from the start.

            2. 12.1.2.1.1.2

              I suggest you devote no further energy to disparaging what I write.

              I suggest that you write things that do not deserve to be disparaged.

              If YOU carry through with my suggestion, then your suggestion will be enacted, and we will both be happy, eh?

            3. 12.1.2.1.1.3

              why don’t you deploy your energies instead in argument with Judge Hughes (and with that school of thought within the Federal Circuit that this Decision manifests)

              Pay attention, please – I already do.

        2. 12.1.2.2

          [W]ill you offer us a thought on whether the ambit of “technical” is i) the same ii) wider or iii) narrower than the ambit of the “useful arts”?

          Regardless of what Ben or anyone else around here might have to say on this point, Judge Giles Rich—one of the sharpest patent law minds of the XX century—thought that “useful arts” and “technological arts” are interchangeable phrases. In re Waldbaum, 457 F.2d 997, 1003 (C.C.P.A. 1972) (Rich, J., concurring).

          1. 12.1.2.2.1

            Not really sure why this matters, however, neither phrase has any legal significance in U.S. patent law.

            1. 12.1.2.2.1.1

              ?
              And now Greg sleeps.

              But in all fairness, Greg is certainly no giant.

          2. 12.1.2.2.2

            What was that phrase, even giants sleep?

      3. 12.1.3

        Oh please Ben. Such nonsense.

        For those of us that are educated in the law and actually studied patent law for real, we know that the biggest trap in patent law is to get wan kies like Ben thinking they can judge inventions based on how they feel about it.

        Also what Ben is saying is the ultimate misunderstanding of innovation. What one would expect is the application of bubble sort that would be adapted for the auction bids. That is and always has been one of the great engines of innovation when one innovation area is used to enhance another area.

        1. 12.1.3.1

          “What one would expect is the application of bubble sort that would be adapted for the auction bids.”

          You are avoiding the issue by inserting some hypothetical variation in technique. Do you, or do you not, believe the standard application of a bubble sort to novel data is a technical advance? A processor configured to: execute a bubble sort of a list of Martian cranium circumferences, and output the sorted list.

          1. 12.1.3.1.1

            Ben: “… do you or do you not …”

            What strangeness. According to your logic once something is invented than the use of the invention in any other invention would automatically be non-technical or obvious. This was exactly what was attempted to be made law in the most infamous case in all of patent law—Benson. It is bad law and does not comport with science, technology, or patent law.

            The only way to look at claims and inventions is as a whole and compare them with previous inventions.

            Nice try Ben but I know Benson very well and the infamous R. Stern.

            1. 12.1.3.1.1.1

              Night I disagree. The only way to “look at claims” is as a whole and compare them with the state of the art. The state of the art is the totality of everything that was already made available to the public by written or oral description, by use or in any other way.

              1. 12.1.3.1.1.1.1

                This seems excessively pedantic. It’s clear that NWPA did not mean to restrict the comparison exclusively to published patent references.

                1. Not just excessively pedantic – MaxDrei attempted to insert his “Euro” view of prior art, with a “to the public” subtlety being a ‘real person’ public as opposed to a juristic legal person of the Person Having Ordinary Skill In The Art.

            2. 12.1.3.1.1.2

              I never said anything about whether such an application would be obvious. You’re shifting the goal posts to avoid having to defend the indefensible.

              Deep down you clearly know that the standard application of a known algorithm to new data is not a “technical advance”. It is a pity that you cannot acknowledge it.

              1. 12.1.3.1.1.2.1

                You’re shifting the goal posts to avoid having to defend the indefensible.

                You have this ‘indefensible’ entirely in your mind, Ben.

              2. 12.1.3.1.1.2.2

                Ben, “technical advance” is quite a term. You are trying to merge 101 and 103 together.

                If you mean would it be eligible under 101, then it should be. Just as nailing three sticks together is eligible under 101.

                The issue of advance should be not be mixed with eligibility.

                Plus, applying “the algorithm” to a different problem may or may not be non-obvious. Passes 102. But there is plenty of case law that says this may be non-obvious.

                1. Plus I think when you say that it is just used with different data is something that is rarely seen. There are almost always adaptations in using it and fitting it together.

                2. “Ben, “technical advance” is quite a term. You are trying to merge 101 and 103 together.”

                  I really am not. While I suppose I could see you understanding “technical advance” to be tied to 101 through the “technical improvement” question, that was really not my intention.

                  I mean to use the term as a technologist or as an actual worker in the field might, not as a patent practitioner would.

                  And I do not deny that there are cases where applying an existing algorithm to a new problem can be a technical advance! My point is that on the other hand, there are trivial applications of existing algorithm to new data which no technologist would consider a technical advance.

                  For example, in a world where Fourier transforms are only known to be used for analyzing acoustic signals… the first progressive-rock musician applying a fft to his new music isn’t a technical advance. On the other hand, the first person who applied a Fourier ttansform to spatial data to do image processing would absolutely have made a technical advance.

                3. that was really not my intention.

                  Ben, as I noted, your intention and what you actually posted do not coincide.

                4. Ben, I will admit that there are cases where applying a known method is obvious. And, in term of one skilled in the art, yes, many sets of claims would be considered obvious.

                  But, again and again, obviousness should be determined based on applying the law. Hindsight is very powerful and difficult to overcome.

                  I work with many different technologies and many very smart people, and recently I have been floored by how innovative one SV company I work with is. They are taking things that were well-known and modifying them and getting new functionality that no one else thought of. Some of it has been a challenge to get allowed because it is so similar to what others have done. But then I say to the examiner, but look at the new functionality. This has been around for 40 years and no one else thought of tweaking it like this. Typically the examiners shake their heads and say, I guess you are right. This is pretty cool.

                5. Night Writer – don’t be misled yourself into thinking that Ben is saying that something obvious CANNOT be ‘technical.’

                  As you noted – there is a conflation over the ‘new’ and the ‘technical’ aspects, and what Ben is trying to do is assert that even an obvious technical thing cannot be technical, and on THAT basis falls out of the 101 inquiry.

                  Of course, he simply is not asking his questions well.

                6. I really wasn’t pushing the issue as a matter of obvious vs. Non-obvious, but since I suspect we could agree that anything “obvious” would also not be a “technical advance” to a technologist, the point is likely moot. Thank you for your efforts to communicate here.

                  For what it’s worth, I agree that an application of an old algorithm to a new problem can be non-obvious and “pretty cool”. We may disagree about where the line should be/is, but I really am not categorically against software patents.

                7. but I really am not categorically against software patents.

                  NOTHING that you have said supports that.

          2. 12.1.3.1.2

            ?

            why would the application of something accepted as a technical advance not be considered a technical advance because the application was done with different inputs?

            Ben – you are NOT asking the question that you think that you are asking.

            What you appear to want to be doing is attempting to ask a ‘workpiece’ question as if different workpieces — in and of themselves — ARE the technical advance.

  2. 11

    SCOTUS supplied the Mayo and Alice matches . . . that the CAFC is — incorrectly and improperly — using to burn down the American patent system.

    Congress shrugs.

  3. 10

    As has been repeatedly noted by others here, conservative judges appointed by Republican presidents have actively contributed to or even written the very Alice 101 and other patent-challenging decisions which some commentators below continue to strangely argue would disappear with additional conservative judges,

    1. 10.1

      Wishful thinking. Tearing up longstanding precedents in patent law is one of the few remaining substantive points of bipartisan agreement in our contemporary public policy landscape. Also the smaller community that tries to resist this destructive effort is also bipartisan, as illustrated by the close cooperation of Senators Tillis (R) & Coons (D).

    2. 10.2

      Nice strawman Paul.

      Carter was probably the most pro-patent president.

      But if you read what I wrote, what Obama did was appoint anti-patent judicial activist under the direction of SV. That is the problem. The generally poor character and ignorance of the judges appointed by Obama to the CAFC.

      Plus, yes there are conservative judges that are part of this on the Scotus. But Stevens and RBG were the core of the anti-patent movement.

    3. 10.3

      And–again and again–AI is now outperforming human in information processing tasks once thought to be only in the realm of humans.

      Driving cars, playing Go, analyzing images, and so forth.

      All of these are software + a generic computer, which the three clowns on this panel would hold as per se ineligible based on nothing more than their private opinions.

      1. 10.3.1

        As previously noted, the notion of software being merely one of a design choice for ‘wares’ in the computing arts is a necessary step towards inte11ectual honesty in discussing innovation of the Kondratiev Fifth Wave.

        We continue to have an immense lack of that inte11ectual honesty from the anti-patent forces.

      2. 10.3.2

        AI is now outperforming human in information processing tasks once thought to be only in the realm of humans.

        Exactly. The courts are busy constructing a jurisprudence that will be I’ll equipped to deal with the most important sorts of innovation that are likely to arrive in the near future. I expect that Congress is going to solve this problem eventually, but we will all be better off if Congress does so sooner rather than later.

        1. 10.3.2.1

          … will be I’ll equipped…

          As you may have surmised, autocorrect rather unhelpfully changed “ill equipped” in the above.

        2. 10.3.2.2

          We should all take a moment of silence to mark to loss of that perfectly tuned software innovation system that gave us tremendous advanvements like US 5,970,479.

          Fortunately, the PTO is doing its best to train examiners to ignore Alice. I suspect that in the next decade there will be so much “value” accumulated in granted-but-unenforcable patents that there will be sufficient lobbying dollars to buy enough of congress to change the law.

          1. 10.3.2.2.1

            Translation: But I like the Court’s Ends justify the Means (and lack of touch with reality for innovation in the Kondratiev Fifth Wave).

            by Ben “yes, I am an Examiner” Dullard.

            1. 10.3.2.2.1.1

              Ben like all the anti-patent judicial activists feels he is qualified to judge inventions based on his personal views and not 103 and feels he understands the innovation process and the contribution of any one patent.

              Ben likes to feed into the Hollywood version of invention where there is a flash of genius and giant steps are made and that only this type of invention is worthy of a patent.

              Problem is that anyone that actually is an engineer and has patents to their name like me and worked in innovation knows that this Hollywood version of innovation has nothing to do with the ground war that is real innovation.

              The problem is as long as the likes of the Bens and Lemleys can push their propaganda with no negative consequences and with lots of positive consequences to their bank accounts they will continue with their nonsense.

              Just remember that you have no integrity and that you have sold your intellect to misrepresent and destroy innovation in the USA.

              I know what you are. And you know what you are. Just look at Lemley’s face. It is a face of a person that has used his intellect for ill purposes to further his monetary interests. It is a face of a person that no one would trust with their grandparents or child.

          2. 10.3.2.2.2

            We should all take a moment of silence to mark to loss of that perfectly tuned software innovation system that gave us tremendous advanvements like US 5,970,479.

            Ha! I appreciate the humor, but I am sure that you do not really intend this as a counter to the position that I am actually advancing.

            There is no contradiction between the contention “the pre-Bilski legal regime was not doing a great job incentivizing software innovation” and the contention “the post-Alice legal regime is not doing a good job incentivizing software innovation.”

            Section 101 is the wrong tool for this job. The problems pre-Alice were and are problems sounding in §112. Deforming §101 to try to compensate for these problems does not actually solve the real failures, but rather leaves many of them in place, while introducing whole new waves of distortion.

            The right way to fix the problem is via a §112 channel (as the Tillis/Coons amendment attempted). The Alice approach’s weaknesses are already showing (e.g., the impossibility of implementing it at the examination level), and will only get worse as new and more valuable waves of do-it-on-a-computer inventions emerge.

            1. 10.3.2.2.2.1

              Of course it’s not a counter. Why would, or how could, anyone dispute the point that computers can do great stuff these days? The absurdity of such a position is why NWPA builds his Bailey on the value of modern day computer functionality.

            2. 10.3.2.2.2.2

              112 cannot solve the categorical subject matter problem of how to manage property rights in new and useful information.

              There is only one framework that I know of that can solve that problem.

              1. 10.3.2.2.2.2.1

                What “problem”? If someone invents a computer that can better diagnose a nascent tumor in a thin section micrograph than can a human pathologist, how is that a “problem”?

                1. The problem Greg is that nobody has a reasonable idea of what is eligible subject matter and that nobody has a reasonable expectation of repeatable results on Alice motions, because patents granted on new and useful information can range from clearly appropriate to insane rent-seeking, because new and useful information permeates just about everything we do.

                  Please point out in the statues or common law the current disposition of information within inventions. Silence, except for the useless Printed Matter doctrine, which is just a subject matter doctrine dressed up.

                2. 112 cannot solve the categorical subject matter problem of how to manage property rights in new and useful information… The problem… is that nobody has a reasonable idea of what is eligible subject matter…

                  Well, I agree that §112—all by itself—cannot solve the problem of unpredictable application of Alice. I think that the whole Title 35 can, however. Alice arose in a context in which the Court had contrived a whole series of common law “epicycles” that it has layered on top of §101, some of which are intended to advance policy goals codified in §101 itself, some of which are codified in §103, and some of which are codified in §112. If the Court were simply to give up on its common law epicycle project as a bad job, and simply apply the statute as written both the prefictability of application and optimality of policy outcomes would be improved.

                3. The notion of a Keplerian revolution against epicycles will not be grasped by your audience here, Greg.

                4. Greg when the useful result of a process is a species of information, we have a problem.

                  You cant apply 101 “as written” because “process” means anything useful that human beings do, and that can’t be correct.

                  The problem came up occasionally before the information age, almost always in the context of printed matter. Because it looks superficially like the scope problem of Morse it seems like a 112 problem, but the subject matter of the information itself is a distraction from the real issues, which is who is making use of the information and how.

                  There is no apparent way to square the circle of the current language unless “process” is meaningfully defined, at least when the result of that process is entirely made of information. That’s why there is no reasonable replacement language for 101 and 20 totally different ideas on the CAFT and USSC about this problem.

                  The framework of the information consumer also solves the Copyright conundrum: machines simply cannot consume expression just as humans cannot be prevented from consuming useful information in a free society.

                  Sooner or later the law will see it my way. There is no other way to see it.

                5. Sooner or later the law will see it my way. There is no other way to see it.

                  Your hubris is noted – and this is exactly why you cannot learn properly – you think that you already know the answer, and what you know is simply disconnected from the subject.

                  You insist on a terrain that is not there.
                  This only guarantees that you will never win this battle.

                6. Compare and contrast “result of” and the actual statutory principle of the classes of process, machine, manufacture and composition of matter.

                  If (and that’s a might important IF) you want to jump down a rabbit hole of “result of,” then you must come to grips that utility in the legal PATENT sense means something that you have been unwilling to recognize: that the result of something in the utility sense is necessarily an item processed by a human mind to DETERMINE that utility has been achieved.

                  Marty, what you are postulating – what you have BEEN postulating – is simply not tethered to the legal principles of patent law.

                  It just is not. This is not an opinion. This is not optional. This is just a cold hard objective fact.

                  I have tried to make this simple for you, with past examples of something that you – or anyone – could grasp in the utility of a traffic light.

                  But you are so adamant — and so mired — in your own past history that you cannot accept the reality that is patent law.

              2. 10.3.2.2.2.2.2

                Marty, your ‘framework’ remains mired in your lack of appreciation of the legal grounds upon which you would wish to do battle.

                You remain mired in your own personal legal misfortunes.

                1. anon you remain mired, my case ended five years ago and many millions in revenue. My company survived, and I was educated. Worse things have happened than the US patent system, but none to our business.

                  Meanwhile every lawyer and professor who reviews my stuff says- better than what we have and makes sense to them. Hmmmm

                2. I am not mired at all.

                  “Better than what we have” is not a real compliment, considering what we have (and that would be the Supreme Court induced Gordian Knot).

                  A patent on ‘information’ is NOT a patent on something that happens to have “information within inventions

                  All we need to do to expose your fallacy is talk about traffic lights.

                  You clench tight your eyes even to the concept of utility and how any utility is something judged within the mind of a person.

                  Your musings remain untethered to actual law, and to actual innovation.

                  As to your personal misfortunes, they clearly STILL drive your animus, and you STILL have not been educated properly.

                3. If (and that’s a might important IF) you want to jump down a rabbit hole of “result of,” then you must come to grips that utility in the legal PATENT sense means something that you have been unwilling to recognize: that the result of something in the utility sense is necessarily an item processed by a human mind to DETERMINE that utility has been achieved.

                  Total nonsense. There is rarely a debate about new or improved processes that save materials, or use less time, or last longer, etc. A sharper knife blade is not a state of mind. Knowing which stock to buy IS a state of mind.

                  See the thing about battles is that they are often parts of wars, and I’m in this one for the loooong haul. I spend money, I lobby, I file, I repeat and apply.

                  Sooner or later, my view will prevail, or something very similar to it will, because when one sees how things have to be, they simply cannot be unseen.

                4. and I’m in this one for the loooong haul. I spend money, I lobby, I file, I repeat and apply

                  You do ALL of this — with YOUR slanted view and UNwillingness to actually learn.

                  You want to talk about once seen, not unseen – is that why you refuse to see the law as it is? how utility is, under patent law? why you simply want to label as ‘nonsense’ something which is simply factual?

                  Your perseverance is NOT being questioned. It’s your inanity IN that perseverance and your unwillingness to get out of your onw way that is at question.

                  You are making my point here, Marty.

          3. 10.3.2.2.3

            “Fortunately, the PTO is doing its best to train examiners to correctly apply Alice.”

            There. Fixed.

            You’re welcome.

    4. 10.4

      Paul, no need to NOT be particular in your musings, as it is clearly Night Writer that is holding out some type of “Trump will correct” view.

      While Trump indeed put Iancu in place, I have not seen indicators that would support the hope of radically revising the CAFC.

      Mind you, this IS different than my own desire to have Congress (not the President) rise up, employ jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court and create a new and improved Article III Court expressly to do what the current CAFC was originally chartered to do (and thus remove the ‘simian in a cage, firehosing’ training that the CAFC has been muddled with.

  4. 9

    These claims issued in 2012. Post-Bilski (2010), but two years prior to Alice (2014).

    I’m curious as to how many patents that issued in the post-Bilski, pre-Alice timeframe have been invalided on 101?

  5. 8

    Actually, this is Hughes, Stoll, and Lourie, three of the worst judges on the CAFC.

    Two Obama appointments and one that learned science pre-information revolution.

    The test put out by Hughes is actually more stringent than the test at the EPO as the EPO recognizes a technical solution for software that improves the technical features of the underlying hardware.

    There is no way to refute this type of order. They are just making things up and making naked assertions about technology that is not true.

    It all comes down to the fact that Obama appointed people to the CAFC with poor character who were the ones that felt patents were ev il and that judicial activism was proper to end patents. Just sad.

    I don’t know anyone that has been before the CAFC that respects the judges. Everyone basically says they are judicial activists that are either willfully ignorant of science or people that just feel that patents for information processing are not a good thing and they have the right not to apply the law to save the society.

    But no one respects them.

    1. 8.1

      OT, but Google is being sued for anti-trust violations by the DOJ.

      Be interesting if they brought in the process by which Obama appointed these judges to the CAFC.

    2. 8.2

      I still think it is possible that if Trump is re-elected that the Trump may wipe the CAFC and get some people in there who want to apply the law and not fabricate the law.

      1. 8.2.1

        I would love for you to be correct, but frankly, have trouble seeing just what indicator there is that this would actually happen.

    3. 8.3

      It is also amazing when you think that AI can now perform better than doctors at processing images for detection of cancer.

      This is software that is being used on a generic computer and yet the court that is supposed to be entrusted with the understanding and promoting innovation in the USA say that this is not eligible ’cause, ’cause.

      Gross misconduct. All three of these judges should be impeached.

      1. 8.3.1

        As previously noted, even the notion of “generic computer” is a fallacy.

        To co-opt the long missing Malcolm Mooney’s blessings, what exactly is the objective physical structure of this notional ‘generic computer?’

        The inte11ectual DIS-honesty here is an unstated inherency position that this (mythical) ‘generic computer’ already has it in there ANY new advance: “just” software just doesn’t count because “hardware.”

        This is a fundamental LACK of appreciation of the subject matter, and — if intentional — may be considered to rise to criminal activity (and for attorneys that may be espousing this deceit, certainly is to be considered an ethical violation).

  6. 7

    “even if the invention provides ‘advantages over the previous method,’ it is not patent eligible without a ‘technological improvement beyond the use of a generic computer'” is in direct conflict with Enfish

    1. 7.1

      …McRO as well.

      When a panel of the CAFC ‘goes rogue’ and tries to hide the decision as ‘non-precedential,’ at what point will the “leader” of the CAFC finally act and not let her panel members act so out of accord with established parameters?

      The Gordian Knot continues to grow and grow.

  7. 6

    A non-precedential panel decision that merely adds yet another layer of mess to the Gordian Knot of 101 jurisprudence…

    So very sad.

  8. 5

    There is no ‘technological arts’ test in the words of Congress (and further, the Supreme Court in Bilski refused to rewrite the words of Congress to make it so).

    Did Alice abrogate Bilski on that count?

  9. 4

    The problem here of course is that 101 is the blob that is swallowing 103. And it is being done on the pleadings under 12b6, which I suppose is the feature of the 101 shunt and not a bug. But it is a due process issue that once again makes the patent the red headed step child of the law. Wouldn’t a ‘well pled complaint’ asserting the ‘technological improvement’ from the claim stop the cause of action from being shunted under 12b6?

    1. 4.1

      101 is the blob that is swallowing 103. And it is being done on the pleadings under 12b6, which I suppose is the feature of the 101 shunt and not a bug.

      Exactly. It is not a coincidence that the appellant in Mayo fought so hard to have that case decided on §101 rather than §112 or §103—as it rightly should have been. The defendants’ bar wanted a doctrine that could be invoked before discovery, and Justice Breyer was determined to give it to them.

  10. 3

    While it is nice that the court decided to write an opinion, albeit an extremely short one, I wonder why they decided not to use a Rule 36 affirmation instead. After reading both pages of the decision, it seems that a Rule 36 affirmation would better fit into what the court has been doing over the past few years. Has anyone looked to see if the percentage of Rule 36 affirmations has dropped lately, or is this just an anomaly?

    1. 3.1

      Yes, Prof Crouch had something on not to long ago about how the incidence of Rule 36s has declined since COVID processes came online. Basically, the CAFC prefers not to use Rule 36 for cases decided on the briefs (i.e., without oral arguments). The CAFC has, however, been encouraging paries to forego oral arguments in light of the recent logistics challenges associated with oral arguments in pandemic conditions. The upshot is that the court is issuing short, non-precedential opinions in many cases that might once have received a Rule 36.

  11. 2

    I haven’t read the opinion. And I haven’t read the patent specification.

    But I read the quote from the opinion here, and then I read the claim. And I am f*#$ed if I can see what one has to do with the other.

    To be clear, I’m not saying that this claim necessarily is, or should be, patent-eligible. Just that, based on what I can see right here, the basis of the decision is utterly obscure.

    I suspect, however, that if I did take the time to read all of the source material I would be no better off. Or is that too cynical?

  12. 1

    Being European, I note with interest Judge Chen’s:

    ….not patent eligible without a “technological improvement beyond the use of a generic computer.”

    and I look forward to increasing grasp of the point that a patentable invention is a combination of technological features (recited in the claim) that together deliver a technological effect (described in the specification).

    Judge Chen writes:

    “.. the patent claims no technological improvement ….)

    as if suggesting that if the claim had recited “a technological improvement” it might have been eligible. But that’s not quite right. Claiming the improved performance attribute is claiming the problem rather than the inventor’s solution to that problem. Anybody can claim the problem, but only the one who cracked it can claim the solution, the contribution to the art, the progress that the patent system is supposed to promote.

    1. 1.1

      Increasing grasp of a point NOT within US law – just because you like the match with your own Sovereign’s choice?

      Are you an attorney? If so, this should repel you, not thrill you.

      1. 1.1.1

        It is revolting that a judge at the CAFC would fabricate the law.

        This is not surprising as Chen was notorious for his anti-patent positions when he was at the USPTO.

        It is not a surprise that SV selected Chen for Obama to appoint.

        Crims all the way down.

    2. 1.2

      Judge Chen had nothing to do with this one. Judge Hughes wrote this opinion. Chen was not even on the panel.

      1. 1.2.1

        I corrected it above.

      2. 1.2.2

        But it is still true about Chen. He was virulently anti-patent and a judicial activists before his appointment.

        I don’t think that any high court in US history has ever been stacked with people of such low charter as has the CAFC by Obama.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture