Clash of Clans: $92 million and Eligibility Issues

GREE, Inc. v. SuperCell Oy (Fed. Cir. 2021) (nonprecedential)

SuperCell is a Finnish company that makes and distributes the mobile game “Clash of Clans.”  SuperCell is owned primarily by the Chinese multinational Tencent, the “world’s largest video game vender.”  The patentee GREE is a Japanese mobile game developer and holds a number of mobile-device game related patents.

On May 7, 2021 a jury sided with Gree in a patent infringment lawsuit, holding SuperCell liable and awarding $92 million in infringement damages.

GreeSuperCellVerdictForm.  The jury also found the infringement willful and that the patent claims were not invalid.  In the coming months, Judge Gilstrap will rule on the soon-to-be-filed JMOL motions and also rule on the question of enhanced damages associated with the adjudged willful infringement. GREE also asked for injunctive relief in its final pre-trial contention and so that will come up as well.

Today, the Federal Circuit decided a parallel case involving a separate GREE patent — not one subject to the recent jury verdict. U.S. Patent Number 9,897,799.  For this patent, SuperCell filed a petition for Post Grant Review. The PTO granted the petition and eventually found the claims invalid under Section 101. On appeal here, the Federal Circuit has affirmed that judgment. In particular, the appellate panel agreed that the claims are directed to “the abstract idea of associating game objects and moving one or more of the objects.”  Further, the claims did not include any inventive step going beyond the routine and conventional.

The most important part of this decision is where the court (effectively) says “Claim It.”  There is some suggestion in the caselaw that a patentee might describe specific improvements within the detailed description and then include broader claims that encompass those improvements, but at a more general level.  Here, GREE described particular syntax of touches and swipes within the specification. ON appeal, the Federal Circuit found that those elements didn’t count for the Alice analysis because they were not claimed.

The Board also correctly explained that none of the syntax of touches and swipes that GREE cites as its inventive step are captured in any of the elements of the claims.

Slip Op.

= = = = =

1. A computer-implemented method for operating a computer game, the method comprising:

storing, in a storage module, a plurality of virtual objects and the arrangements of those virtual objects on a game field;

accepting, via an input face configured to detect a touch operation, operation information regarding a touch operation performed by a user;

associating, using a processor, a plurality of virtual objects as a group; determining, using a processor, whether the operation information comprises a direction operation;

upon determining that the operation information comprises a direction operation, moving, using a moving processor, one or more of the plurality of associated objects as a group in the direction indicated by the direction operation;

storing, in a storage module, the new arrangements on the game field of the one or more of the plurality of associated objects moved with the moving processor;

displaying, on a computer screen, the game field and the plurality of virtual objects arranged on the game field; and

displaying, on a computer screen, the new arrangement on the game field of the one or more of the plurality of associated objects moved with the moving processor.

= = = = =

Going back to the $92 million case, The following patents are at issue.

  • Claim 3 of U.S. 10,328,346
  • Claim 8 of U.S. 10,335,689
  • Claim 1 of U.S. 10,076,708
  • Claims 2 and 3 of U.S. 10,413,832
  • Claims 1 and 6 of U.S. 9,079,107
  • Claims 1 and 5 of U.S. 9,561,439

On appeal, SuperCell will likely argue that these are all invalid as ineligible (along with other issues)

140 thoughts on “Clash of Clans: $92 million and Eligibility Issues

  1. 13

    Hi Dennis,

    I know the patent number you wrote is the same as the patent number that appears in the CAFC decision, but it seems to be the wrong patent number. 9,897,799 is not to Gree or anything relating to gaming, and I checked google patents and the USPTO image database to confirm.

  2. 12

    I suspect the biggest impediment on improving quality is the examiners’ federal union.

    1. 12.1

      An interesting supposition, Night Writer.

      But I would suggest (and our examiner regulars can confirm) that examiners view their Union as effectively nugatory.

    2. 12.2

      Management stomped on POPA (the union) last year when it wanted to automate case distribution. So I’d say the rate limiting step in PTO improvements is management. When they want to do something, they do it. Most of the time, they’re happy to watch production numbers and pat themselves on the back for such excellent “managing.”

      1. 12.2.1

        As I recall 6 trying to assert, the Union has NO ‘real’ power to say ‘No.’

    3. 12.3

      All of my lelz, what specifically do you think that popa is doing to “stand in the way of the awezomes qualitay”?

      “As I recall 6 trying to assert, the Union has NO ‘real’ power to say ‘No.’”

      That’s correct anon.

      1. 12.3.1

        If you have a right that if transgressed has no remedy, do you really have a right?

        1. 12.3.1.1

          Nope.

  3. 11

    It’s remarkable how little interest a plainly unjust result for a non-patentee/non-applicant warrants. It almost looks like patent attorneys don’t care about the system being broken when it benefits the people who fill their wallets.

    1. 11.1

      ? A bizarre post, given that comments HAVE been made in direct contradiction to your assertion.

      But then again, you being taken to task on specific legal points and your own “remarkable how little interest” YOU have in trying to defend your position screams even louder than this last post of yours.

      1. 11.1.1

        I think Ben is right.

        The D in this case has been put through a lot for no reason.

        The core of the problem is KSR. Go back to TSM and use modern methods to improve quality.

        1. 11.1.1.1

          It is harder to reject something under TSM than KSR, right? Based on that, wouldn’t you agree that replacing KSR with TSM would, ceteris paribus, increase the number of bad patents coming out of the PTO?

          It certainly could be done without an increase in bad patents, but it would be difficult and likely costly. I don’t think the stakeholders have the appetite for that.

          1. 11.1.1.1.1

            The bureaucrat mindset…

            “My job harder” must mean more bad patents out there.

            Of course, when you view your job as the one-sided “reject, reject, reject,” AND you couple it with a self-centered preoccupation, you end up with the likes of Ben.

            Replete with the attempt to blame someone else (it would be costly and someone else would not be happy with that).

            What the “stakeholders” would be ‘happy with,’ is if you did your Fn job. Applicants PAY for that job – don’t confuse your internal metrics and your self-absorbed, “this is the hard” with what “stakeholders” have already paid for.

          2. 11.1.1.1.2

            Ben, I think KSR is basically do whatever you want.

            TSM was far more objective and, yes, harder in the sense that you had to separate the elements and make reasonable arguments based on TSM from the art on how to construct the elements.

            But the key Ben is that TSM allowed some objective measure and could be farmed out and quantified. TSM is the type of test that lends itself to Six Sigma and other quality control measures. KSR is total junk that basically says the fact finder can do whatever they want.

            So what I think is that TSM could be used to vastly increase patent quality.

            1. 11.1.1.1.2.1

              That doesn’t address what happens if you go to a TSM regime without making other adjustments. Use your buddy at 11.1.1.1.1 as a gauge for how kindly the patent bar will take to any suggestion of increasing fees.

              I’d guess that a combination of TSM + stricter quality control + no adjustments to fees would actually be stopped by management. This combination will surely result in droves of examiners being fired/retiring/quitting and then difficulty finding long-term replacements. The office will continue, but pendancy and response times will spike. In other words, this is a recipe to diminish the number one guiding metric at the office: the scores which are used to determine management bonuses! Management will fight tooth and nail against such a program.

              1. 11.1.1.1.2.1.1

                gauge for how kindly the patent bar will take to any suggestion of increasing fees.

                Mindless fallacy.

                You confuse what IS paid for, for your own sense of internal metric.

                That’s a far cry from the Office deciding to charge different rates for different things.

              2. 11.1.1.1.2.1.2

                I don’t know Ben how long you have been doing this but TSM wasn’t so bad.

                The examiners in the TSM time I think enjoyed it more. It was more of a professional atmosphere. The interviews basically were factually oriented on whether an element was disclosed in the reference and whether a disclosure counted as a TSM.

                There was dignity for both sides. Now it is just ridiculous as the examiner can allow whatever they want as long as it passes the smell test, which I suspect is why some of the BS claims like in this case are so long. They are just headache making to read a bunch of these everyday. They seem to be intentionally long to cover up that they don’t actually claim much.

                1. Meh, I am going to disagree with you on that, Night Writer.

                  The “pencil test” has been around longer (or at least is distinct from) any of the TSM mindset.

                2. I don’t want to put words in your mouth, but the only way I can read your post as a response to “what happens if you go to a TSM regime without making other adjustments”, is if you mean to suggest that implementing TSM would cause examiners to find greater pleasure, professionalism, and dignity in their work, which in turn would cause them to produce just as much under KSR.

                  If this was your intent, you’ve basically just told me: “You can demand tighter dimensional product tolerances from workers with zero consequences” or “Good, fast, cheap. Demand all three!.” There’s really no point in responding to an assertion that disconnected from reality. So have a nice evening.

                3. And here we go again…

                  As oh so typical for the coward bureaucrat, Ben seeks to retreat from any ongoing discussion by misrepresenting the situation and conflating internal metrics (a focus on making HIS job easier) with any level of overall quid pro quo between the Patent Office and innovators.

                  The notion of The Golden Triangle of Project Management (the pick two of three axiom) is just NOT how Ben would have it.

                  He (again) ploys the fallacy that those (such as I) would be opposed to a different cost basis in a quest to have timely (fast) quality (good) examination under the law — AS IS currently paid for at rates the Office has set EXTERNAL between the Office and those that pay the entirety of the Office’s budget.

                  He conflates the notion of ‘consequences’ from an INTERNAL perspective with an objective EXTERNAL paradigm.

                  Ben, STOP trying to make your internal problems to be problems for external folks. Do your Fn job or leave the Office. You ALWAYS have that choice.

                  Your “production” should be the best you can do under either a TSM paradigm or a different “KSR” paradigm. YOU do NOT get to choose the law part of “under the law,” as I have already reminded you with link to patentlyo.com

                  You have shown the proclivity to confuse quality examination with a pure “Reject” mode and your claim of ‘harder to reject’ is a mindless fallacy reflecting the Reject = Quality mantra that CAUSED the backlogs of yesteryear (and the related – deemed illegal – attempts by the Office to constrain applicants from seeking proper redress through the Claims and Continuations Rule debacle).

                  It is YOUR assertions that are disconnected from reality. STOP trying to make this about you and your bureaucratic focus. Do your Fn job and exam under the law. Neither of the TSM or “KSR” paradigms should be stopping you from a quality examination job (and no, that does NOT mean ‘quality = reject’).

                4. Ben,

                  The examiners seemed to do quite well applying TSM before KSR.

                  So not sure what you are talking about. Maybe it would take some retraining to go back to TSM.

                5. Are you really struggling to understand this, or is it an act?

                  Make rejections requirements more stringent (even marginally) –> less rejections.

                  Yes or no?

                  I’m not suggesting that the office couldn’t go back to TSM, or that it couldn’t be done without detrimental effects. I am merely asking for recognition that if you go back to TSM, without changing anything else, there will be more bad grants.

                  TANSTAAFL!

                6. Night Writer,

                  Ben’s reply boils down to his bureaucratic “if you make my job harder, I won’t do my job.”

                  Can’t you see that? What’s wrong with you?

                  A little Office Space parallel:

                  link to youtu.be

                7. “Ben’s reply boils down to his bureaucratic “if you make my job harder, I won’t do my job.””

                  Anon bro he didn’t address what he will personally do. He’s talking about what will occur in the aggregate. Why do you always impart examiners noting what they think will happen in/to the overall examination ecosystem (the behavior of thousands of people in the aggregate) to what they expect their own personal behavior or output will be?

                  In any event I personally don’t know if I agree with what he thinks will happen that all that much, but I also barely ever need to use anything other than a TSM motive myself.

                8. There is NO difference to the point at hand 6 between the larger “aggregate” (or Royal YOU) and the singular personal ‘you’ as referring to Ben, because it is Ben’s proclivity towards the position that is at issue.

                  My phrase of, “Do your Fn job” applies equally.

              3. 11.1.1.1.2.1.3

                “There is NO difference to the point at hand 6 between the larger “aggregate” (or Royal YOU) and the singular personal ‘you’ as referring to Ben, because it is Ben’s proclivity towards the position that is at issue.”

                I do not follow what you are talking about. What “proclivity” towards which “position” is at issue? It’s fairly clear that he is talking about not going back to strict TSM and that he feels that doing so may impact the overall number of bad grants. You then jump to discussing him supposedly taking the position that he personally will not do his own personal job. This later discussion doesn’t even appear relevant to the topic he is discussing (save .00001% as that is how much of the corps he personally makes up), and is just you going off on a red herring at best, a slight ad hominem perhaps. Can’t you just say you either agree or disagree with his assertion of what would happen like a normal person rather than jumping to something irrelevant? Why even make such a statement? Still further, why repeat that samish line of rhetoric a thousand times in a thousand threads?

                1. “Why even make such a statement? Still further, why repeat that samish line of rhetoric a thousand times in a thousand threads?”

                  Good questions, but I think a better question you should ask yourself is: “Why am I bothering to respond to someone with this history?”

                2. Read his posts – especially the ones to which I am responding to.

                  Use some of that critical reasoning that you have (are you really looking for ipsis verbis?)

                3. “Read his posts – especially the ones to which I am responding to.

                  Use some of that critical reasoning that you have (are you really looking for ipsis verbis?)”

                  I already did. He didn’t whine any. And yes what I asked for in the above request is basically an “ipsis verbis” because I see no such thing above.

                4. You are incorrect precisely because you seek something that need not be there (and you make my point about you not using your critical thinking because you want only an ipsis verbis condition).

                  I purposefully chose that phrase because as a US examiner, you should have recognized it – and realized the error in your assertion.

                  Take a step back and read the exchanges again. The whining about “the hard” is unmistakable. The fallacy about quality = reject is a bit more nuanced.

                5. In other words it doesn’t exist and is solely a creation of anon’s mind. Ok, will keep this in mind going forward.

                6. And yet again, 6 – absolutely wrong.

                  Come on Man – surely you recognize the concept of ipsis verbis.

    2. 11.2

      Sorry, I am not clear on what result here was “unjust.” The patentee deserved to lose, and the patentee lost. It may have taken a while to get there, but the ultimate result is entirely fair.

      I suppose that the lesson to take away here is that it would have been better for all if the ED Tex had stayed the trial pending the PGR outcome. I have long thought that stays of trial should be mandatory once the PTAB takes a case. This is an object lesson in favor of that conclusion. When and if the Congress ever gets around to a further set of reforms to Title 35, that would be a good one to make.

      One way or another, however, I am not sure what “unjust result” you have in mind.

      1. 11.2.1

        It would also have been better if the justice system could have reached this correct result for the correct reasons. That, however, does not really speak to the correctness vel non of the result.

      2. 11.2.2

        Sorry, that was extremely unclear of me.

        I mean the $92 million dollar verdict for claims like asserted claim 8 of 10,335,689:

        5. A game control method implemented by a computer, the method comprising the steps of: deploying a plurality of units on a field displayed on a display, the plurality of units being movable in the field; varying an attack strength of a first unit among the plurality of units so that the attack strength of the first unit, in response to the first unit and a second unit among the plurality of units satisfying a first positional relationship by a movement of at least one of the first unit and the second unit, is decreased to be lower than the attack strength of the first unit when the first unit and the second unit do not satisfy the first positional relationship, wherein the attack strength is an attack strength for attacking a stronghold on the field and attacking a third unit, the first unit and the third unit not belonging to an identical group; and attacking the stronghold by the first unit and the second unit, wherein the first positional relationship is satisfied by the movement causing the second unit to be located within a first range of the first unit.

        8. The game control method according to claim 5, wherein the first unit and the second unit belong to the identical group.

        1. 11.2.2.1

          I mean the $92 million dollar verdict for claims like asserted claim 8 of 10,335,689:

          O.k., but the patentee is not going to collect any of those $92 million. In view of the CAFC’s opinion in the PGR, the ED Tex is going to have to vacate that judgment. Obviously, it would have been preferable if the ED Tex had reached that conclusion up front, but that is why we have a system of appeals courts—because the district courts do not always get things right. The system worked here.

          1. 11.2.2.1.1

            Uh, per Dennis’s post: “the Federal Circuit decided a parallel case involving a separate GREE patent — not one subject to the recent jury verdict. ”

            Though of course I’d agree there’s a reasonable chance that the asserted patents will be invalidated on appeal.

            1. 11.2.2.1.1.1

              Facts of that separate case may well be extremely different than the facts of the case that we all are reading here.

              As you mentioned, Ben, no one is defending these claims.

              It appears that you want to whine above all else.

          2. 11.2.2.1.2

            The defendents won’t get a 285 ruling. How many millions of dollars in legal fees for doing absolutely nothing wrong or realistically foreseeable is “unjust?”

            I’d say well under one percent of one million dollars.

  4. 10

    Wandering Words (WW) at 5 says it pretty well.

    Lots of noise in these comments.

    1. 10.1

      “Lots of noise in these comments.”

      This is like walking by a apartment fire and noting the crowd’s noise.

      These claims should not have been issued or found valid in the trial.

      1. 10.1.1

        I am curious as to how the heck these were found “not invalid” at trial (trials do not find claims valid — and the double negative is on purpose).

        It appears that someone other than the Office did not do their Fn jobs….

        1. 10.1.1.1

          anon, “how they were found ‘not invalid’ at trial”.

          You want to know my cynical answer? Because finding the claims invalid ends the litigation and the pay check. No idea if that happened here but from what I’ve seen a lot of the law firms are that bad.

          1. 10.1.1.1.1

            That clearly would be an ethical — and sanctionable — violation.

            1. 10.1.1.1.1.1

              Actually, anon, think a bit about KSR and what you just said.

              See the way KSR and these giant balancing tests pervert the law? How can you tell someone they did a bad job when everything is subjective?

              1. 10.1.1.1.1.1.1

                Eh – and this touches upon some of our prior discussions, albeit NOT on KSR, but instead on the Gordian Knot of patent eligibility jurisprudence and the Void for Vagueness issue that the Supreme Court has scrivened itself into.

                It is well established that Void for Vagueness doctrine applies beyond criminal law matters, and the basis of our system of government decreed the level of importance of Life, Liberty, and Property.

                A critical aspect of the Efficient Infringer dogma is to denigrate the property aspect of patents, and make it more into a mere ‘business contract,’ subject to the efficient breach theory.

                A major problem with this theory though is the necessary ramifications to ALL property law.

                And this is yet another reason why — especially in law – the Ends do not justify the Means.

              2. 10.1.1.1.1.1.2

                See the way KSR and these giant balancing tests pervert the law? How can you tell someone they did a bad job when everything is subjective?

                +1

  5. 9

    Maybe the real Elton John can sue MM for false light invasion of privacy, or whatever is the most appropriate cause of action.

  6. 8

    This should have been 103, not 101.

    The claim reads like playing Warcraft (1994 or 1996 PC version) combined with a touch screen.

    1. 8.1

      The problem is that a jury actually found the patents (or closely related ones) valid under 103. If we can all agree that these patents are very clearly invalid, but a jury found them valid (and awarded 92M in damages), then there is clearly some inefficiency that needs to be fixed.
      (Maybe IPR is the answer to that, and I wonder why these were not invalidated by IPR. However, you often see people decrying IPR proceedings as wel).

      1. 8.1.1

        “If we can all agree that these patents are very clearly invalid, but a jury found them valid (and awarded 92M in damages), then there is clearly some inefficiency that needs to be fixed.”

        Agreed. Note that precisely no one has stood up for these patents in this thread.

      2. 8.1.2

        Not sure if “inefficiency” is the right word.

  7. 7

    The 9,897,799 claim repeated above should’ve been rejected based on an iPhone and the board game Risk. Just a handful of lines about implementing games on computers, no mappings, end of rejection.

  8. 6

    “I have to say I actually worked on a whole bunch of patents in my career over the years. And I have to say that every single patent is nothing but crap.”

    Not as bad as the inventor who, after reviewing the allowed claims, states:
    “But this isn’t what I invented!”

    1. 6.1

      In all fairness (to the essence of a patent being a legal document, looking outward for a 20 year scope of protection, and if the inventor had only thought of one embodiment), if you as a practitioner are NOT getting that statement (to at least some degree), then you are doing it wrong.

      Granted there are plenty of savvy inventors that have been around the block and recognize — from the start — that the legal claims will have employed a Ladders of Abstraction approach to an initial embodiment in order to (justly) obtain the proper legal coverage.

  9. 5

    In particular, the appellate panel agreed that the claims are directed to “the abstract idea of associating game objects and moving one or more of the objects.”
    What happened to identifying the focus of the claimed advancement over the prior art? I’m sure associating game objects and moving or more of the objects have been done for three or four decades now.

    This opinion is just another example of the hopeless inconsistencies in the CAFC’s 101 jurisprudence. Factors that are important in one instance are completely ignored in another instance. There is little rhyme or reason behind what the Federal Circuit does — with the exception of that if you get a bad panel (which most are), your patent is invalidated.

    The invention is about moving objects on a graphical user interface. There is no “abstract idea” being claimed. This doesn’t involve some “fundamental truth; an original cause; a motive” or “basic tools of scientific and technological work” that would “stifle the very progress that Congress is authorized to promote.”

    The reason why this was deemed to be unpatentable (besides the panel) is that this is software used for a game. DEAD ON ARRIVAL. However, if the invention was some physical gadget to improve one’s golf swing, that would likely be patentable subject matter — someone please explain to be the policy justification for such differences.

    1. 5.1

      The PTO is just bad at examining software-based patents. Often these applications will present an obfuscated “invention” that is merely the result of PHOSITA using an ordinary amount of skill to solve a particular problem. The solutions presented are the same or similar to solutions that any PHOSITA would come up with if faced with the same problem. *stares in data processing*

      1. 5.1.1

        Sure, although your account of the situation really bespeaks a §103 issue rather than a §101 issue. It is not ideal that the SCotUS has warped §101 to resolve a problem that Congress addressed in §103.

        1. 5.1.1.1

          This narrative leaves out how the CAFC set the field for the problem by their inventive interpretation of the law.

          1. 5.1.1.1.1

            The CAFC was simply applying the CCPA’s precedents, which in turn were mostly crafted by the same man who drafted §103.

            I do not think that it was the CAFC whose §103 jurisprudence was especially “inventive.” The CAFC and CCPA were mostly just giving straightforward effect to the words that Congress wrote. It was the SCotUS who “invented” a truly wacky notion of the PHOSitA in order to bend obviousness jurisprudence out of the channel that Congress had carved for it, and back into the old Cuno Engineering channel that Congress had worked to replace.

            1. 5.1.1.1.1.1

              “The CAFC was simply applying the CCPA’s precedents, which in turn were mostly crafted by the same man who drafted §103”

              I do not understand how Rich’s influence lends weight to their interpretation. It has precisely the opposite effect on me.

              In scenario one, one person writes a law, and a second person interprets it slightly beyond the express language.

              In scenario two, one person writes a law, and later they interpret it slightly beyond than the express language.

              Ceteris paribus, I trust the interpretation of scenario two less than the interpretation of scenario one, because the person had the chance to write the law to define that interpretive boundary expressly and did not.

              “It was the SCotUS who “invented” a truly wacky notion of the PHOSitA in order to bend obviousness jurisprudence out of the channel that Congress had carved for it”

              I’ll admit to ignorance here, I don’t quite understand what you’re referencing here. Did Graham substantially change the “person having ordinary skill in the art” of the statute? How well defined does the 103 of the 1952 act read to you? Honestly, to me “obvious” looks like a placeholder rather than any sort of deliberate intent.

              1. 5.1.1.1.1.1.1

                Did Graham substantially change the “person having ordinary skill in the art” of the statute?

                Not Graham—KSR. Even Giles Rich thought that Graham gave proper effect to §103. It was KSR that warped the PHOSitA in order to bend obviousness law back toward a super-invention requirement.

                On both subject matter eligibility and obviousness law, the SCOTUS has a long standing itch that it just aches to scratch. The first U.S. patent act had a requirement that patents might only be granted for inventions that at least two of the three examiners considered “sufficiently useful and important” to merit a patent. This requirement was removed in the act of 1793, but SCOTUS ever since has ached desperately to restore a “sufficiently important” requirement. The Court used to use the old common-law “inventiveness” standard to smuggle this unstatutory importance requirement into the system. When Congress codified the patent statutes in 1952, the codified Title 35 explicitly reworked both the subject matter eligibility and obviousness requirements to curtail the Court’s tendencies in this direction.

                For the next 40 years, the CCPA and its successor in the CAFC basically just gave straightforward effect to the words of Congress. I am not saying that everything about the patent system worked swimmingly that whole time, but it worked according to the legislative direction that Congress gave. The problems were for Congress to fix.

                Instead, the Court fell off the wagon (as we all might have expected that it would) and returned to its old bad habit of fashioning a common law “importance” standard. I do not see how any of this can be laid at the feet of the CCPA/CAFC. They were just doing a rather admirable quotidian job of applying the statute as written.

                1. “the CCPA and its successor in the CAFC basically just gave straightforward effect to the words of Congress”

                  I sincerely do not see 35 USC 103 as pointing any more strongly at pre-KSR than post-KSR. “Obvious” is a blank slate. What Rich, the CCPA, and the CAFC wrote on that slate needed to be changed. What they wrote gave us a ton of junky patents. What they wrote created the kindling that ignited into Alice.

                  I’d understand your importance-of-invention objection to KSR much more if there were any further activity on the 103 front. But there isn’t, is there?

                2. Your “feelings” are again noted – and again, your feelings do not matter squat.

                3. What Rich… wrote created the kindling that ignited into Alice.

                  What is the through-line that you see between “junky patents” and Alice? I confess that I am not seeing it.

                  Near as I can tell, it was patent trolls, not “junky” patents that gave rise to Alice. To be clear, the impetus for Alice would have been just as strong in a world in which the NPEs were asserting incontestibly non-obvious claims as in a world in which some of the claims being asserted were also invalid for obviousness.

                  What really drove the impetus for Alice was stories of human individuals and small businesses being dragged into court for ordinary things like using the Minolta copier that they had bought at a reputable office supply store, or downloading podcasts onto their iPhone. It was not the obviousness of the claims being asserted in these suits that drove popular outrage (and journalistic opprobrium). It was simply that the suits were being brought by shady, anonymous LLCs against “honest,” “hardworking” “folks.”

                  I am skeptical that there was much of anything that the CCPA or the CAFC could have done differently (consistent with statute) that could have forestalled the clamor that gave rise to Alice. Now if the USPTO had raised the application and/or maintenance fees, that might have helped. If the Congress had added a working requirement to the statute, that might have helped. Heck, if the AIA had come online maybe 10 years earlier, so that the affected businesses/individuals would have had a cheaper alternative to litigation to contest the NPEs’ patents, that might have helped. I very much doubt, however, that a stricter obviousness requirement would have materially altered any observed outcomes vis-a-vis the 2000s NPE phenomena that lit the fire for Alice.

                4. “It was simply that the suits were being brought by shady, anonymous LLCs against “honest,” “hardworking” “folks.””

                  But Alice only addressed that problem in an extremely tangential manner. I mean, if SCOTUS was going to pull something out of their robes to stop patent trolls from suing small entities, surely they could have done something more directly?

                  Perhaps I am naive, but I really don’t get the impression that either SCOTUS or the Media would’ve stepped into the ring in the same way if the patent trolls were armed with patents that could stand up to real 103 scrutiny. Part of the outrage was that these people were being sued for what were so obviously not real inventions!

                  Take the lawsuits you mentioned against Minolta copier owners. That seems to have been MPHJ LLC, with patents like US7577410. No way that stands up to a real 103. And then there’s downloading podcasts. That seems to have been Personal Audio LLC with US8112504. Plausibly less bad, but I suspect also doomed under a rigorous 103 standard. And of course, there’s Alice Corporation with US6912510. Surely no one can believes that this patent should survive 103?

                  So Alice and the cases you mentioned involve patents with at-best questionable non-obvious credentials. Does that not at least suggest a connection between junky patents and Alice?

                5. What Rich, the CCPA, and the CAFC wrote on that slate needed to be changed. What they wrote gave us a ton of junky patents

                  As what obtained for Greg a ‘+1,’ your feelings Ben are immaterial.

                  You insert those feelings as if somehow the law (as written by Congress and merely reflected by the CCPA and CAFC) was ‘not correct,’ and ‘needed to be changed,’ and you eagerly accept re-writing by the Supreme Court because you happen to like the desired Ends.

                  You

                  f
                  a
                  i
                  l

                  to see the stunning lack of Rule of Law and “Ends justify the Means” that is especially dangerous in law.

                  A quick reminder:

                  35 U.S.C. 131 Examination of application.

                  The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

                  It simply is NOT UP TO YOU to insert your feelings.

                6. +1 for Greg.

                  I’d add that TSM was somewhat objective and lends itself to improving quality while KSR is not a law but gives freedom to the fact finder to find the claims obvious or not as they feel.

                7. Yep Night Writer, the Supreme Court does not like bright line rules as they “F E A R” that patent practitioners will use their “scrivining” power to obey the law as written, but still have ‘unworthy’ patents.

                  It’s exactly this type of Nanny fingers in the wax nose of 101 officiousness (in the first instance BY the Supreme Court) that has infected (and wrecked) the eligibility jurisprudence.

                  Bottom line: the score board is broken, and the Supreme Court purposefully broke it.

                8. Sorry for the late response. I hit the post cap and it took a few days to see which attempted responses would go through.

                  “the impetus for Alice would have been just as strong in a world in which the NPEs were asserting incontestibly non-obvious claims as in a world in which some of the claims being asserted were also invalid for obviousness.”

                  I don’t think this is correct. It doesn’t seem like either SCOTUS or the Media would have stepped into the patent troll matter had the asserted patents typically been for non-ridiculous “inventions.” Wasn’t part of the outrage that people were being sued for non-inventions like “scan-to-email”?

                  That was the case with those Minolta copier owners. They were being sued by MPHJ, with “scan-to-email” patents like 7,477,410. I don’t believe that patent, with it’s 1998 priority date, could stand up to a reasonable bar for 103 scrutiny. The podcast users were being sued by Personal Audio, with “disseminating content representing episodes in a serialized sequence” patents like 8,112,504. Again, a rigorous definition for what constitutes “obvious” should have prevented these claims from issuing. And of course there’s Alice Corporation with patents like 5,970,479. I think it’s pretty obvious that those claims shouldn’t pass 103.

                  From where I stand, none of the patents you mentioned should have passed 103 in their issued form. I suppose it’s fair to say that the CAFC didn’t single handedly create the problem; poor examination at the PTO surely contributed as well. But I don’t see how one can make a case that Rich’s/the CPPA/the CAFC’s interpretation of the statute didn’t play some part either. They went from “obvious … to a person having ordinary skill in the art” to basically ‘the prior art must spell out the invention to a dunce of an observer’. That is the lowest conceivable bar that could possibly have been developed for 103. That low bar surely contributed to the pool of bad patents that induced Alice.

                9. Wasn’t part of the outrage

                  ALL of the ‘outrage’ was “Oh Noes, Tr0lls” Big Corp anti-patent propaganda, whose interest was made with only one party in mind (and that one party was NOT the public).

                10. Again, a rigorous definition for what constitutes “obvious” should have prevented these claims from issuing.

                  So – yet again – YOU want to play the ‘switch the blame’ game, instead of the collectively correct “Do your Fn job” route, eh?

                11. Whoops. A post that didn’t seem to go through went through in the end, so there’s a psuedo repeat.

          2. 5.1.1.1.2

            the CAFC set the field for the problem by their inventive interpretation of the law.

            The CAFC…?

            Did you have something in particular in mind there Ben?

      2. 5.1.2

        The solutions presented are the same or similar to solutions that any PHOSITA would come up with if faced with the same problem.
        “As an initial matter, an invention can often be the recognition of a problem itself.” Leo Pharmaceuticals Products v. Rea, 726 F.3rd 1346, 1357 (Fed. Cir. 2013).

        1. 5.1.2.1

          >“As an initial matter, an invention can often be the recognition of a problem itself.”

          Or, if you don’t like the Fed. Cir, the old EIBEL PROCESS case…

      3. 5.1.3

        Goodness, Ordinary, goes right to 103 to justify a 101 invalidation.

        1. 5.1.3.1

          I totally agree that it is actually a 103 issue. It doesn’t change the fact that the PTO is really bad at examining these applications for 103.

          1. 5.1.3.1.1

            I totally agree that it is actually a 103 issue. It doesn’t change the fact that the PTO is really bad at examining these applications for 103.
            No — unless you are working in this art you would have little idea as to whether the PTO was bad at examining these applications under 103 or not.

            However, I’ll grant that this patent is an quite unusual — first action allowance on an application that didn’t have any US parent applications. I rarely see that.

            1. 5.1.3.1.1.1

              No — unless you are working in this art you would have little idea as to whether the PTO was bad at examining these applications under 103 or not.

              How can you tell whether or not OSitA does or does not work in this art? Why do you lead with “no,” and then follow “no” with a condition that—for all any of us know—OSitA satisfies? I agree that people like myself—who do not work in this art unit—really have no idea whether the PTO is good or bad on average at examining these sorts of claims, but this particular “no” seems rather overhasty when applied to OSitA.

              1. 5.1.3.1.1.1.1

                How can you tell whether or not OSitA does or does not work in this art?
                If he worked in the art, he would have given us something more than “the PTO is really bad at examining these applications for 103.” I’ve read his stuff in the past, and I don’t recall any particular insightful comments about the art (or art units associated therewith) that would lead me to believe he was intimately familiar with any of it. Evaluating someone isn’t always about considering what they said … it oftentimes involves identifying what they don’t say (but should have said).

                And while I’m thinking of it … he makes the statement of supposed fact that “[i]t doesn’t change the fact that the PTO is really bad at examining these applications for 103” and yet you don’t challenge him. Why is that?

                1. “If he worked in the art, he would have given us something more than “the PTO is really bad at examining these applications for 103.””

                  By this standard, there are many attorneys here who do not appear to work in their claimed field of art.

            2. 5.1.3.1.1.2

              “unless you are working in this art you would have little idea as to whether the PTO was bad at examining these applications under 103 or not.”

              The validity of this statement seems to hinge on what constitutes “this art.” Do you mean the video game arts? Or software? It may be fair to say a mechanical person cannot truly judge the quality of chemical examination, or a chemical person cannot truly judge the quality of software examination. But I see no reason why someone who hypothetically works in G06F couldn’t have an opinion on the work product in G06T.

              Anyways, I will say as someone who works in the software field that I think the office doesn’t seem to do an especially good job examining software. Software implemented concepts are especially amenable to contortion into difficult-to-pattern-match phrasing. But even setting that aside, look at the resolution of software CPCs. One would expect examiners to struggle more in technology fields with lower CPC subclass resolution, no? The resolution in chemical, mechanic, and electronics appears to be much higher than in software.

              1. 5.1.3.1.1.2.1

                Such an examiner….

                Software implemented concepts are especially amenable to contortion into difficult-to-pattern-match phrasing.

                Boo-Fn-Hoo. This mantra has been around since the 1970s — give it a rest already.

                The validity of this statement seems to hinge on what constitutes “this art.”

                Here you seem to confuse yourself and focus on the tools of your job — as opposed to the job itself. It just does not matter how fine grained or not any classification system is. The “ease” of your job is merely a bureaucrat perspective.

                But also compare and contrast two of your statements:

                1: “But even setting that aside, look at the resolution of software CPCs. One would expect examiners to struggle more in technology fields with lower CPC subclass resolution, no? The resolution in chemical, mechanic, and electronics appears to be much higher than in software.

                and

                2: “But I see no reason why someone who hypothetically works in G06F couldn’t have an opinion on the work product in G06T.

                You seem to want it both ways – “it’s the hard,” AND “it’s easy to span.”

              2. 5.1.3.1.1.2.2

                It may be fair to say a mechanical person cannot truly judge the quality of chemical examination, or a chemical person cannot truly judge the quality of software examination.
                I wouldn’t disagree with that statement.

                Anyways, I will say as someone who works in the software field that I think the office doesn’t seem to do an especially good job examining software. Software implemented concepts are especially amenable to contortion into difficult-to-pattern-match phrasing.
                This is an example of a legitimate criticism (i.e., the “difficult-to-pattern-match phrasing”). However, I expect examiners to be somewhat of an expert in their particular art. Moreover, even a new examiner has a primary to fall back on if they get stuck. As such, I would expect someone in the art to know alternative terms for the same thing.

                Inventions are most frequently new combinations of old elements. It is just a matter of finding those old elements combined in the same way as claimed — even if those “old elements” have different names. My anecdotal experience (from over a 1000 applications in the general field) has led me to believe that examiners have little problem finding art that doesn’t pattern match the terminology in the claims. In other words, lack of identical terminology has not stopped them.

                Good examination is about knowing the law — something that I find most examiners (across art units) have about the same level of competence in (except for the business method side of 3600 — but they are S P E C I A L). Good examination is about knowing the prior art. I don’t see the computer art units have extra deficiency in knowing the prior art.

                Does the USPTO miss out on NPL literature? Absolutely, but that happens across the board. Perhaps there is more emphasis on NPL on the biotech side, but that is merely speculation on my part so I don’t delve into those black arts.

                My decades of experience (in both computer and non-computer arts) has not shown average examiners in the computer arts to be any more or less competent.

                The resolution in chemical, mechanic, and electronics appears to be much higher than in software.
                They’ve been at it for longer, and when was the last time the USPTO engaged in any serious attempt at reclassification?

                1. “As such, I would expect someone in the art to know alternative terms for the same thing.”

                  I don’t think the additional difficult of pattern-matching is just at the level of terminology. It’s also about which elements are identified, how they relate, and how the overall boundaries are framed. I think software is much more amenable to abstruse claims that are very difficult to patern on those levels, while also successfully capturing the desired scope. I suspect that in mechanical/chemical it is much harder achieve your desired scope while being so obscure.

                  To be clear, I am not intending to suggest that even a majority of software applications are drafted in this manner.

                  “They’ve been at it for longer, and when was the last time the USPTO engaged in any serious attempt at reclassification?”

                  My point wasn’t to defend the PTO. The PTO can and should do better.

                  My point was merely on a mechanical (ha-ha) level, there is a substantial difference in the quality of a significant tool for chemical/mechanical examiners versus software examiners. Even if all else was the same, we should expect a lower quality on the software side for that reason.

                2. My responses in this thread have been all used up, but I wanted to throw one more thing out there.

                  I recently had a case in the art that I have been examining for years that I couldn’t for the life of me parse. I carefully read the specification, and didn’t understand the point, or how it worked with any other system. The peers I consulted with had no insight. It was looking like an allowance.

                  But then I researched the company, not for prior art, but for their current products/services. In those services I recognized the invention, albeit described entirely differently, and could finally see how it related to the prior art. I ended up finding some great prior art for a rejection once I knew what the invention was, rather than working off a carefully selected set of boundaries that encompassed but did not describe the invention.

                  The point isn’t to complain about my job*, but to highlight the difference between examining software and examining mechanical. I doubt any H02K examiner has ever so thoroughly had a flywheel invention obscured from them.

                  *I’m really not complaining. I love the tricky cases because rejecting claims of a tricky attorney with great prior art is incredibly satisfying. It gets the civil service endorphins going! If there was a “hard case” AU that got extra time, I’d sign up for it in a heartbeat.

                3. abstruse….?
                  manner…?

                  Neither of these have anything to do (other than perhaps making your job easier).

                  Here’s a big hint that most bureaucrats have real difficulty with: this is NOT ABOUT YOU, or making your job easier.

                4. I doubt any H02K examiner has ever so thoroughly had a flywheel invention obscured from them.
                  I think you overestimate the prevalence of attorneys trying to “obscure” an invention. Most companies are pretty cheap when it comes to getting their applications written. In those instances, as a patent drafter, you cannot do more than re-present what was presented to you by the inventor but in a format that ensures whatever is described (by the inventor) is sufficiently enabled and the specification provides support for claiming reasonable equivalents.

                  Obscuring takes lots of time and knowledge (of the prior art) and the client is very unlikely going to pay for that time. Additionally, oftentimes neither the inventor nor the attorney knows what the art-recognized meaning are for certain components because this application was the first time delving into this art by the attorney and the inventor(s) have never bothered to look outside their insular environment. The result is language being used in an application/claims that doesn’t look like the same language that an examiner has seen in 50-100 similar applications. If you’ve run across an invention that you think is obscured, chances are this is happenstance — not intentional.

                  As I’m thinking of it, an “obscured” invention is harder to litigate. The more you have to explain why the defendants product/method is covered by the claims, the less likely you’ll convince somebody of infringement (including the defendant — and you want a quick settlement because it is usually much cleaner than a drawn-out litigation). Clear, simple claims are far easier to litigate. A litigator can better manipulate obscure claims, but that is a dual-edged sword because the other side can as well.

                5. I don’t mean to suggest that degree of obfuscation is common. That case certainly stood out for a reason. While I appreciate that it would take some substantial effort, I’d stand by my interpretation of that particular case as intentionally obscure based on the literature used to promote their services.

                  That said, I do not think one could get away with the same thing in H02K. That same degree of flexibility that allows intentional obfuscation also allows for unintentionally more difficult claims. And we end up with a difficulty spectrum that is shifted towards “harder” by virtue of the nature of the subject rather than any technical detail itself.

                6. …don’t mean to suggest that…

                  Stop the insufferable whining about ‘how difficult’ your job is “because software.”

          2. 5.1.3.1.2

            How can you tell whether the PTO is good or bad at examining this sort of application? Imagine that 500k unpatentable applications in this art field were presented to the relevant art units in the PTO, and they stopped 499k of them. That would represent a >99% success rate, which in any system run by humans is about as good as one might hope to achieve.

            Even so, this would still mean that 1000 unpatentable invention issue, at which point they can show up in dozens and hundred of different reported lawsuits. In other words, we really only notice when the PTO fails to stop a bad application. We do not notice when the PTO succeeds. How can one assess whether the PTO is good or bad at something without knowing both the number of bad applications stopped and the number of bad applications granted?

            1. 5.1.3.1.2.1

              How can one assess whether the PTO is good or bad at something without knowing both the number of bad applications stopped and the number of bad applications granted?
              Good points.

      4. 5.1.4

        merely the result of PHOSITA using an ordinary amount of skill to solve a particular problem

        Merely? What, are you looking for a Flash of Genius?

        The Supreme Court tried once upon a time to scriven patent law to that effect.

        They were explicitly rebuked by Congress — the actual branch of the government provided authority to write patent law (you know, in the Act of 1952).

        I “get” what you want, Squirrel — that’s just not how the law is supposed to work.

    2. 5.2

      Good comments Wandering…

  10. 4

    Alternative headline: “Chinese Company sues Japanese Company in the Convenient International Patent Court of Marshall in East Texas.” [Or, “Why Weren’t IPRs Used?”]
    As for apparent 103 complaints below, do not the examiners examining patent applications on games have one of the highest quotas and least amount of examination time per application in the PTO?

    1. 4.1

      As for apparent 103 complaints below, do not the examiners examining patent applications on games have one of the highest quotas and least amount of examination time per application in the PTO?
      This is a GUI-related invention being examined in the software group (Art Unit 2172). It would take about 30 seconds to find that information out.

      The drafter of the claims made a mistake by putting “for operating a computer game” in the preamble — entirely unnecessary. Take that out and replace “gaming field” with some other phrase and these claims have a better chance (albeit with a different panel at the Federal Circuit).

      1. 4.1.1

        My, that sounds like you are using the Ladders of Abstraction there.

        1. 4.1.1.1

          I’m not sure what you mean precisely by “Ladders of Abstraction.” However, I do know there are certain words that I would omit from any claim and specification (if possible). These include:

          game, business, finance, economic, marketing, human, manual, advertising. I’m sure there are others, but these are just off the top of my head.

          1. 4.1.1.1.1

            I’m not sure what you mean precisely by “Ladders of Abstraction.”

            Neither does he. Neither does anyone. That is the point. “Ladders of abstraction” is just one of the limitless trunkful of words-about-words stock phrases (“anti-patent,” “little bit pregnant,” “double dip,” etc) that he pulls out to avoid the hard work of thinking.

            1. 4.1.1.1.1.1

              Greg is entirely in the weeds on this – he ‘conveniently’ ignores past discussions that have explored the term (for example, discussions of the term in Ronald D. Slusky’s book, “Invention Analysis and Claiming.”

              He likes to pretend that he does not pay attention to what I say (the above was well before his feelings were so bruised that he ‘exiled‘ himself from me) – but here was a recent ‘oops’ of his in which he responds directly to my post (in his ‘Dozens’ identity): link to patentlyo.com

            2. 4.1.1.1.1.2

              I’m pretty sure it’s a post-hypnotic trigger phrase intended to activate a sleeper agent.

          2. 4.1.1.1.2

            If one reads enough of Anon’s oeuvre, one begins to get the impression that he read Orwell’s Politics & the English Language not as a cautionary warning, but rather as a how-to guide.

            1. 4.1.1.1.2.1

              One serious “WAH” from Greg.

              kind of actually makes me smile.

            2. 4.1.1.1.2.2

              If one reads enough

              So… given the “tell” at the link, is Greg secretly reading my posts…?

  11. 3

    News flash for Ben: This nonsense has been going on for at least 25 years and the mouth-breathing fat white slobs who dominate the Internet cesspool will go to the mat pretending that without “inventions” like this and without “fair adjudication” in Texas the world will stop turning and we will return to the “Iron Age.”

    Just ask Dennis. He lives with these people. Surrounded by them! Must be super comforting. LOL

    1. 3.1

      Now THAT has Malcolm Mooney fingerprints all over it.

      1. 3.1.1

        Whatever happened to MM anyway? Does anybody know?

      2. 3.1.2

        +1

    2. 3.2

      And “Elton John” joins the growing list of recent MM aliases.

      1. 3.2.1

        MM has used Elton John before.

        Funny how MM’s style is so distinct that it jumps off the page.

        1. 3.2.1.1

          Really. Until I’m proved wrong I shall go on supposing that a parodist is at work, bored and doing it just for fun. Then again, perhaps the library of MM posts has been used to train an AI to post here, and the reactions to its postings will be used to reveal how successful the AI training has been?

          1. 3.2.1.1.1

            Now that is some sick and twisted use of AI that must surely invoke calls of ethical use of AI.

          2. 3.2.1.1.2

            That is possible Max.

            1. 3.2.1.1.2.1

              Serious question: would that be considered an unethical use of AI?

              (it is a deeper question than a first blush would portray)

          3. 3.2.1.1.3

            “Then again, perhaps the library of MM posts has been used to train an AI to post here, and the reactions to its postings will be used to reveal how successful the AI training has been?”

            What will they think of next?

    3. 3.3

      MM still has some fight in him yet lol. I was afraid he was going to go full Khal Drogo needing a pillow mercy killing on us after my blood magic use to bring him back.

  12. 2

    “1. A computer-implemented method for operating a computer game, the method comprising:

    storing, in a storage module, a plurality of virtual objects and the arrangements of those virtual objects on a game field;

    accepting, via an input face configured to detect a touch operation, operation information regarding a touch operation performed by a user;

    associating, using a processor, a plurality of virtual objects as a group; determining, using a processor, whether the operation information comprises a direction operation;

    upon determining that the operation information comprises a direction operation, moving, using a moving processor, one or more of the plurality of associated objects as a group in the direction indicated by the direction operation;

    storing, in a storage module, the new arrangements on the game field of the one or more of the plurality of associated objects moved with the moving processor;

    displaying, on a computer screen, the game field and the plurality of virtual objects arranged on the game field; and

    displaying, on a computer screen, the new arrangement on the game field of the one or more of the plurality of associated objects moved with the moving processor.”

    The difference between this and chess appears to be 1) done on a touch-screen computer, and 2) there are “groups” of objects rather than a single object.

    I would sincerely be ashamed to be recorded as claiming to have invented this.

    1. 2.1

      Chess has been played on a computer screen using a computer to track the location of pieces since the early 1970’s. Castling involves moving a “plurality of related objects”. The only difference with these claims is the touch interface.

      Why were these claims issued in the first place?
      Why does the CAFC continue to conflate 101 with 103?

      Because either avoided the “hard work” of actually comparing the prior art to the claims.

      1. 2.1.2

        “Castling involves moving a ‘plurality of related objects’.”

        Except the claim requires “moving, using a moving processor, one or more of the plurality of associated objects as a group in the direction indicated by the direction operation.” Castling doesn’t teach this because in Castling the pieces don’t move in the same direction.

        So now you either give the applicant their undeserved patent, or you work for free.

        That is in a nutshell why the patent issued.

        1. 2.1.2.1

          So now you either give the applicant their undeserved patent, or you work for free.

          Or you do your Fn job.

          You seem to want to excuse the examiner here and blame the applicant.

          1. 2.1.2.1.1

            They both deserve blame.

            1. 2.1.2.1.1.1

              I’d actually disagree, KS. ​In our silly hypothetical here, Examiner David at 2.1
              is the only one who has errored. Applicants are free to claim old hat.

              The problem is a system where Examiner David’s rejection at 2.1 is insufficient because castling is a tiny degree different from the claim language. That degree of difference shouldn’t be enough to undermine his rejection. But it is! And that, in conjunction with examination-time standards that were created when rejections were much more hand-wavy, is why these claims were issued.

              1. 2.1.2.1.1.1.1

                Your feelings about what should and should not matter are noted.

                Good thing is that YOU do not write the law, eh?

              2. 2.1.2.1.1.1.2

                I thought various duties of candor were supposed to stop applicants (and by that I include thelaw firm and individual practitioners that drafted the claims) from claiming things they know in good faith to be unpatentable. Do you think the law firm that drafted this application believed in good faith that these claims are patentable? Do you think the individual attorneys who drafted this application never thought “hrmm this sounds a lot like XYZ video game” and made sure to submit it to the office?

                (I realize these duties are readily ignored unless there is evidence to prove that a certain reference was known prior, but they do still technically exist).

                1. Candor does not reach where you think it reaches. The law firm surely has a duty of advising the client, but it remains the client’s call (on their view) as to whether they can sign the oath (formerly without deceptive intent).

                  And yes, if the attorneys (more so) and firm (only to the extent of the attorneys) DO know of something that requires an IDS submission, then that should be done. I have not dived in here to see if any such IDS submissions were made.

            2. 2.1.2.1.1.2

              ksksksks,

              “Blame” is much too strong a word for the applicant.

              Notwithstanding best practices, NO applicant has any affirmative duty to go out and search the prior art.

              As Ben (correctly – so kudos there) notes, “Applicants are free to claim old hat.

              Sure, it is certainly a best practice to be as diligent as possible in an applicant’s own prior art search**, but to use the word of “blame” places an undue and impropriate shadow on what is required of applicants.

              ** I will note that this is entirely an Applicant’s call, and that Applicants may well have business drivers that dictate a whole spectrum of choices from exhaustive prior art searches, to standard, to cursory, and even to NOT searching whatsoever.

              AS NO SEARCH is required, NO SEARCH is a baseline. You cannot play the blame game with that as a baseline.

              1. 2.1.2.1.1.2.1

                I agree a search is not required, however I dont think a search is required to immediately think of a host of readily available art that would make this patent obvious. I actually think the duty of candor (theoretically) prohibits applicants (including the law firm and individual lawyers prosecuting this) from claiming old hat that they know (or believe in good faith) to be old hat, although I also am aware having worked in a law firm that an associate saying “this is old hat and I ethically cant prosecute it” is a great way to be fired.

                1. The answer is less “I cannot do this,” and more “I am aware of this, and thus will be submitting this to the Office on an IDS, and it is up to the Office to formally make that ‘it is obvious’ call)

                2. A quick check on ONE of the items (Patent 10929168), which is NOT one of the listed items in the story, but IS a family member OF one of the listed items in the story had – in one submission – an IDS that included 41 items of NPL (totaling 2,522 pages). There were five total IDS submissions, but the NPL one was the big one.

                  Some of the IDS submissions are related case IPR documents, as well as corresponding Japan patent prosecution items.

                  Of course, we BOTH know that the Patent Office only requires an Examiner “to consider” these submissions.

  13. 1

    One of the asserted, “valid”, and infringed claims is Claim 3 of 10328346:

    1. A non-transitory computer readable recording medium storing game program code instructions for a game in which a first user and a second user do battle, and when the game program code instructions are executed by a computer, the game program code instructions cause the computer to perform: a data storage function of storing a first panel data that includes a plurality of panels associated with the first user to a storage unit; and a control function of receiving information regarding a selection by the first user, the selection being for one or more panels indicating one or more characters, wherein the data storage function further stores each panel associated with information of motion to the storage unit, and the control function further receives information related to selection of one or more divisions in which the one or more characters indicated in the selected one or more panels are to be displayed as one or more moving characters in a game display screen including one or more regions formed by the one or more divisions, and transmits information for displaying the one or more moving characters according to the information of motion associated with each panel stored in the storage unit.

    3. The recording medium according to claim 1, wherein the data storage function further stores each panel associated with information of text to be displayed to overlap each panel to the storage unit, and the control function transmits information for displaying the game display screen in which the one or more panels overlapped with the text are disposed in the one or more divisions on the basis of the one or more panels selected by the first user and the information of text to be displayed to overlap each panel.

    Gross.

    I’m surprised that the “efficient infringers” haven’t more actively incited shaming efforts against “engineers” who apply for this degree of “invention.” Naturally, such efforts would have no effect on people who end up winning the lottery, but I suspect many people who are actually technically inclined could be induced to feel bad for even allowing their name to be attached to such dreck.

    1. 1.1

      I suspect many people who are actually technically inclined could be induced to feel bad for even allowing their name to be attached to such dreck.

      Listen to this episode of Planet Money. They interview a programmer—Stephan Brunner—who is listed as an inventor on multiple patents. He offers the following thoughts about his patents:

      I have to say I actually worked on a whole bunch of patents in my career over the years. And I have to say that every single patent is nothing but crap.

      1. 1.1.1

        “every single patent is nothing but crap”

        Gee, an exhaustive search of the MPEP turns up not even of mention of “crap.”

        I’d say he was referring to the 101, 102, 103, or 112 requirements, but it’s clear from his comment that he doesn’t know . . . crap . . . about any of them.

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