Dismissal on the Pleadings — for Indefiniteness

DataCloud Techs v. SquareSpace (D.Del. 2021)

Eligibility and indefiniteness are both judged primarily as questions of law, although both can occasionally depend upon some underlying factual finding.  And, even when questions of fact are at issue, it is a judge (rather than a jury) that hears the evidence and determines the facts.

In recent years, eligibility determinations have moved forward in the litigation context and become a true “threshold test.”  See Bilski v. Kappos, 561 U.S. 593 (2010).   Often, eligibility is the first substantive determination in patent litigation and it is typically decided either on a motion to dismiss (12(b)(6)) or motion on the pleadings (12(c)).

With all the parallels, it is not surprising that some litigants are also suggesting that indefiniteness be decided at the pleadings stage.

The recent motion for dismissal by SquareSpace is on point — arguing that DataCloud’s patent claims indefinite functional limitations parallel to those rejected by the Supreme Court in O’Reilly v. Morse. [Brief in Support of Motion to Dismiss].

The brief walks through Supreme Court history in indefiniteness associated with functional claim limitations.

  • O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854)
  • Corning v. Burden, 56 U.S. (15 How.) 252 (1854)
  • Burr v. Duryee, 68 U.S. (1 Wall.) 531 (1864)
  • Fuller v. Yentzer, 94 U.S. 288 (1877)
  • Risdon Iron & Locomotive Works v. Medart, 158 U.S. 68 (1895)
  • Westinghouse v. Boyden Power Brake Co., 170 U.S. 537 (1898)
  • Busch v. Jones, 184 U.S. 598 (1902)
  • Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245 (1928)
  • General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938)
  • United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942)
  • Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946)
  • Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336 U.S. 271 (1949) (“Graver I”)

SquareSpace filed its motion to dismiss in May and DataCloud has recently filed an amended complaint and has argued that the amended complaint renders the motion “a nullity.”  The new complaint adds three additional patents and also includes an allegation that attempts to skirt the indefiniteness question:

A person skilled in the art … would understand that each of the limitations and/or steps in the claims … are defined by what they do (not what they are). Even if any limitation and/or step of the claims is “functional”— and none are—the teachings of the … Patent provides to any skilled artisan sufficient structure, material, or acts necessary to perform the recited function or provides information sufficiently identifying a finite group of structures, materials, or acts necessary to perform the recited function that were well known to skilled artisans at the priority date.

Amended Complaint.

= = = =

Lawyers on the brief include James Dabney and Sue Robinson (as well as others).

 

146 thoughts on “Dismissal on the Pleadings — for Indefiniteness

  1. 12

    I said below that reality cannot be overturned by the courts. The Church-Turing Thesis–in short–says that any function that can be computed can be computed by a very simple general purpose Turning machine.

    The quote below is from the brief and is typical of the type of nonsensical arguments used to invalidate information processing claims. Yes, we are claiming a method to perform a computable function so it can be performed on any and all computers. The structure is in the way the machine is being configured by the instructions and is equivalent to a circuit designed to perform that function.

    This is easy to understand and Rader in his dissent in Bilski explained this. We know that the people that go against these statements are willfully ignorant.

    >>The above-quoted claim is worded in such a way as to encompass any and every computer system that
    performs the functions recited in the claim, irrespective of what might be a computer system’s physical structure or computer program code. (citations omitted).

    1. 12.1

      And as I said below. Just read Wandering’s posts below. He does a very good job of explaining this.

      Or read the en banc opinions in Bilski. Moore and Rader particularly explain much of this in the context of Diehr.

      And again for–Greg—the courts can yap out what they want but reality/physics will be the same in a hundred years as it is today and their opinions in a hundred years will be as wrong as they are today.

      1. 12.1.1

        NW, I agree with WT’s rebuttal of the §112(b) arguments in this brief. You & I are on the same side of that argument.

        I just do not understand why you think that the Church-Turing thesis has any relevance to this §112(b) argument. Section 112(b) asks whether a method is properly claimed. Just because software = hardware = firmware does not mean that any old functional language is always sufficiently definite to claim a new invention in the computer arts. Your conclusion is simply unconnected to your premise.

        1. 12.1.1.1

          >>relevance to this §112(b) argument.

          For one it refutes the arguments made in the brief. For two I also included the ladders of abstraction and said at the bottom is a real machine that takes time, energy, and space to transform information.

          Their arguments that it is indefinite are disconnected to the reality of a person skilled in the art and how they would view the claim.

    2. 12.2

      And look to–Greg—I’ve gone through these arguments 1000 times.

      The game is to try and say that the claim recites no structure. But we know a person skilled in the art can build the machine (at the bottom of the ladders of abstraction) and we know the machine performs functions. So how can a function be performed without structure? It cannot. And how can a new or improved function be performed without new structure? It cannot.

      You see how reality defeats their ridiculous arguments. But they know this.

      1. 12.2.1

        Fair enough. As you note below, this exchange seems largely a waste of time. You have typed a bunch of characters, but they still do not appear to me to spell out anything but nonsense. I have typed a bunch of characters, but I gather that they do not appear any more convincing to you than yours appear to me. I hope that you have a fine weekend.

        1. 12.2.1.1

          Feels like willful ignorance on your part Greg.

          But have a good weekend too.

          1. 12.2.1.1.1

            I definitely will. My wife & I are going to the Getty for the first time since it reopened since it’s year-long pandemic closure. We have been looking forward to this day for months now.

    3. 12.3

      This is the factual essence of Alappat:

      The structure is in the way the machine is being configured by the instructions and is equivalent to a circuit designed to perform that function.

      Much like Galileo, one can pretend that the facts are different, but such pretending just does not make it so.

      1. 12.3.1

        Yup anon.

        Alappat says it well.

        The arguments we get from the Scotus and CAFC defy science.

  2. 11

    Oh, I’m late to the party.

    /golfclap

    Well done.

  3. 10

    What I found surprising about this district court motion to dismiss on the pleadings is that the brief does not even cite RICHARD WILLIAMSON V. CITRIX ONLINE, LLC (Fed. Cir. 2015) (en banc in part), or assert the attacked claim elements as nonce words equivalent to “means for,” and thus falling under 112(f), even though asserting that there is no specification support at all for those claim elements, and that therefor the claim is indefinite under that decision?
    [Query if the alleged absence of any specification enablement or claim term definition for claim elements could arguably be determined intrinsically from the specification itself by the judge at this preliminary stage in some cases without extrinsic evidence if not factually refuted by the patent owners response to such a motion?]

    1. 10.1

      Intrinsic or extrinsic are both factual determinations.

      Must these then be read in the light most favorable to the non-movant?

      1. 10.1.1

        Yes, but if there is no “it” in the spec to so read for any enablement or more specific definition of such terms, then reading “it” in the light most favorable to the non-movant doesn’t help much?
        BTW, what I was querying was just a possible alternative to the more bare bones 112 second paragraph claim indefiniteness argument of the subject brief itself.

        1. 10.1.1.1

          The “it” is not a spec item, but rather is the assertion being brought forward in the court.

          Please move the goalposts back, thank you.

    2. 10.2

      Citing Williamson here would have been no more (but also no less) inane than Halliburton or Union Carbide. The precedents are so distinguishable from the case at bar that the rules are simply inapposite.

      1. 10.2.1

        Neither Dennis or I was suggesting that this motion at this stage was likely to be successful. Just something unusual, different, and responsive to all the prior comments here that claims should be attacked by defendants on 112 grounds rather than as 101 exception unpatentable “abstractions.” But the latter is blessed by the Supremes as suitable for preliminary deciding and the former is not.

  4. 9

    Church-Turing Thesis states that anything that can be computed can be computed on a simple Turning machine. Equivalence of hardware/software/firmware.

    Information processing takes time, energy, and space.

    Reality. There is no meaning to the words yapped out below by the anti-patent judicial activists and this ridiculous petition.

    1. 9.1

      Notice that no one can counter these arguments.

      The Scouts/CAFC/DCs are telling us that the Sun revolves around the Earth and expecting us to believe it.

      The laws of physics govern information processing and it as much a physical process as making steel or building a molecule to pump into people.

      They can keep up with their ridiculous nonsense but they can never get past the laws of physics.

      1. 9.1.1

        I hear you – but your argument may well be at too high of an intellectual level for the anti’s to appreciate it.

        Much like in answer to your provision of the technical Ladders of Abstraction point (to Greg) that Greg does not seem to grasp (even after I augmented your position with the legal equivalent), your point is simply being ignored.

    2. 9.2

      What does this have to do with any consideration relevant to §112(b)?

      1. 9.2.1

        Greg, if you can’t figure that out, then you should return your science degree.

        Church-Turing Thesis read about it. And then think about Wandering’s post below that includes: “This is basically just a guised attempt to invalidate all software patents. In fact, I could use the same (il)logic to invalidate just about all process patents.”

        The fact is that at the bottom of the ladder of abstraction are machines that perform the recited functions. That the machines take time, space, and energy, and have structure. Reality. About 99 percent of the garbage from the Scotus, CAFC, and DC come down to “we can’t figure out what this means (willfully) so it must be abstract or indefinite.”

        1. 9.2.1.1

          Hey Night,

          Doing math takes time, space, and energy, and has structure, and is axiomatically useful.

          Why don’t we patent better math?

          This should be interesting….

          1. 9.2.1.1.1

            Martin,

            We’ve been through this a million times. You know what applied mathematics is.

            1. 9.2.1.1.1.1

              mmm hmmm.

              Wikipedia tells me that Applied Mathematics means all kinds of things to all kinds of people.

              This guy seems to disagree with you.

              link to ipwatchdog.com

              But really, I already know the answer.

              The answer is that the patent law is incoherent on the matter of information, and math is pure information.

              But as usual, if a machine executes a new, useful, and non-obvious algorithm and the utility arises for a machine purpose, not a human meaning, then the “math” should be eligible for patenting IF that policy compromise is made. The other choice is no patents for information, period. That probably does not comport with the intentions of the patent system, but what we have now is a disaster.

              1. 9.2.1.1.1.1.1

                Martin, it is information processing.

                Transforming information takes time, energy, and space.

                And, the argument about math is really ridiculous when you go up a level and try to understand that math is just a tool of the human information processor.

                1. Yes, math is information processing. Math is ineligible. You say “Applied Math”, I say that term has no particular meaning or impact on eligibility.

                  I’ll ask again: why is math no eligible for patenting?

                2. Not to intrude on your lovely conversation, but if you are insisting that ‘applied math’ has no meaning (it does, by the way), then you might want to define what YOU mean by math.

                  For example, do you include cryptography in ‘math?’

                3. Math is a language. What sense does “applied linguistics” make other than to suggest a utility for the language beyond the theory of language itself.

                  Of course cryptography is math. So is accounting, banking, and playing an MPEG. The utility of information is often quantitative.

                  But once again, you are all hung up on what the information means, which is a pointless distinction. What should matter to a rational patent system is who the information is meaningful to, because that the essence of the utility or non-utility of the information.

                4. Math is NOT “a language” – leastwise in the (your seeming favorite) colloquial sense.

                5. The “theory of” falls to the philosophical underpinnings, of which I (long ago) detailed out as MathS.

                6. Sorry Marty – but understanding the terrain actually does not matter.

                  Your, “But once again, you are all hung up on…” falls flat.

                7. Lastly, the “essence of utility” remains a key lack of understanding for you — and a primary reason you remain in the weeds.

                  You happen to LIKE being in the weeds, so there really isn’t much hope for you.

                8. Oh math is not a language because anon says so. OK.

                  Meanwhile, there are hundreds if not thousands of academic pieces proposing that math is…..a language.

                  For the purposes of patent policy, it would be entirely reasonable to consider it so.

                  Meanwhile bla bber on about terrain and utility.

                  By the way, does your precious Act of 1952 actually define utility? Does ANY case law? Or do you just know it when you see it?

                9. hundreds if not thousands of academic pieces proposing that math is…..a language.

                  You really need to understand these things in the patent context. How many of those hundreds or thousands are discussing math and how many are discussing MathS?

                  You yourself do not even believe in ‘applied math.’

                  EACH of these have their distinctions in the terrain of patent law.

                  That you think this is all “blabber on” only reflects p00rly on you.

        2. 9.2.1.2

          Fair enough, of course. If you do not wish to explain your reasoning, and prefer merely to luxuriate in the puerile pleasures of insult-banter, such is your right. It can hardly come as a surprise that your side is progressively losing this argument with each new precedent, if this is the quality of “argument” you bring to the discussion.

          1. 9.2.1.2.1

            So I gave you a concrete example that includes the ladders of abstraction and you ignore it. OK. And, I told you to read Wanderings post which is highly relevant as it goes to the Church-Turing Thesis.

            Your response? Insult me and ignore all the substance. Your goal seems to be to waste my time.

            1. 9.2.1.2.1.1

              Agreed. It is fairly well indisputable that the exchange that follows from 9.2 is a waste of time. No fair minded observer could conclude otherwise.

              1. 9.2.1.2.1.1.1

                Only if one refuses to learn from the folly of others.

                Myself, I like to learn at every opportunity.

    3. 9.3

      This cannot be stressed enough:

      Equivalence of hardware/software/firmware.

      This also undergirds the Grand Hall Experiment.

      1. 9.3.1

        Yup anon.

        Also, the physical nature of information processing is also important. One cannot transform information without a machine that requires space, time, and energy.

        1. 9.3.1.1

          While I certainly agree with the larger thrust, this comment here perhaps exemplifies why I think the anti’s disregard what you are trying to say.

          Your equating the very human machine to being the vessel through which the very real physical mechanism of certain information processing occurs just does not resonate, because the anti’s can accept that point (human as a machine), but will NOT provide an equivalent acceptance that patent protection should be allowed for NON-human machine equivalents.

          To them, the fact that a claim is entirely to a non-human machine is irrelevant — regardless of the direct words of Congress.

          1. 9.3.1.1.1

            ” but will NOT provide an equivalent acceptance that patent protection should be allowed for NON-human machine equivalents”

            WT F you talkin’ about Willis?

            1. 9.3.1.1.1.1

              LOL – that you are c1ue1ess says more about you than you realize.

  5. 8

    Since Citrix, application of 112(f) to apparatus claims has obviously increased greatly, but a lot of district courts have still avoided applying 112(f) construction to method claims… One district court expressly said Citrix’s holding (overturning the presumption that 112(f) was not invoked absent magic words) did not apply to method claims, only apparatus claims (which doesnt make sense)…. The result is you have a lot of claims where, eg., “an apparatus comprising: a processor for processing data to determine XYZ” are invalidated under 112(f) construction, but somehow “a method comprising: processing, using a processor, data to determine XYZ” are valid.

    its only a matter of time until that house of cards comes falling down.

    1. 8.1

      I’d be interested in the name of that processor invalidation case if you remember it.

  6. 7

    “35 U.S.C. § 112 ¶ 2 PROVIDES A STATUTORY ALTERNATIVE TO ANALYSIS OF WHETHER PATENT CLAIMS ARE DIRECTED TO “ABSTRACT IDEAS.””

    So where are all the kudos to the defendant for trying to get the courts to switch over to a 112 analysis?

    1. 7.1

      One and one half cheers for the defendant’s approach here. This is a rather weak argument here, so I am dubious that they will blaze a trail here that will convince future defendants of the wisdom of this approach.

  7. 6

    Take care in trying to rely too much on Halliburton. The last paragraph of 35 USC 112 [now 112(f)] was expressly added in the 1952 Patent Act to modify or render obsolete much of its reasoning (it still applies to functional language expressed in “single means” claims other than in a combination). See, for example, Federico’s commentary on the legislative history of the Act, where he notes:

    “The last paragraph of section 112 relating to so-called functional claims is new. It provides that an element of a claim for a combination (and a combination may be not only a combination of mechanical elements, but also a combination of substances in a composition claim, or steps in a process claim) may be expressed as a means or step for performing a specified function, without the recital of structure, material or acts in support thereof. It is unquestionable that some measure of greater liberality in the use of functional expressions in combination claims is authorized than had been permitted by some court decisions and that decisions such as that in Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 329 U.S. 1, 91 L. Ed. 3 (1946), are modified or rendered obsolete, but the exact limits of the enlargement remain to be determined. The language specifies “an” element, which means “any” element, and by this language, as well as by application of the general rule that the singular includes the plural, it follows that more than one of the elements of a combination claim may be expressed as different “means” plus statements of function. The language does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned. The paragraph ends by stating that such a claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. This relates primarily to the construction of such claims for the purpose of determining when the claim is infringed (note the use of the word “cover”), and would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art, that is, the Patent Office is not authorized to allow a claim which “reads on” the prior art.”

    1. 6.1

      Congress provided language in 35 U.S.C. § 112 to create a safe harbor exception to Halliburton if “[a]n element in a claim for a combination [is] … expressed as a means or step for performing a specified function.” If an applicant chooses not to express an element in this manner, then the recitation would not fall within this safe harbor exception, and Halliburton could still apply.

      It is also worth noting that the last part of Federico’s commentary suggesting that 112, p. 6 “would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art” is contrary to current law. See In re Donaldson Co., 16 F.3d 1189, 1194, (Fed. Cir. 1994) (en banc) (“the ‘broadest reasonable interpretation’ that an examiner may give means-plus-function language is that statutorily mandated in paragraph six. Accordingly, the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.”)

      1. 6.1.1

        Congress provided language in 35 U.S.C. § 112 to create a safe harbor exception to Halliburton if …

        That is NOT correct.

        Halliburton was abrogated, regardless of whether or not the applicant chooses the optional technique as provided by 35 USC 112(f).

        Federico’s commentary on this point included the admission that some of these things were his feelings (feelings NOT shared by the other co-writer, Judge Rich).

        As to In re Donaldson, methinks you over read that quote, and are misapplying what that statement portends.

        1. 6.1.1.1

          With respect to your suggestion that “Halliburton was abrogated, regardless of whether or not the applicant chooses the optional technique as provided by 35 USC 112(f),” I am curious as to your reasoning/authority for this proposition. Is there something that I am not aware of? The plain text of 112 does not seem to get there. Happy to be convinced.

          1. 6.1.1.1.1

            Happy to be convinced.

            So would we all be, but don’t hold your breath waiting for the explanation. It will never come.

          2. 6.1.1.1.2

            I am curious as to your reasoning/authority for this proposition.

            If you like bald, unsupported assertions, you are in for a treat.

          3. 6.1.1.1.3

            The reasoning was fleshed out in extensive detail on these blog pages years ago.

            This is NOT a new topic.

            Dozens, sorry, but I do not fall to the Briar Patch games of “can you repeat that again.” These simply are NOT “bald, unsupported assertions” as you would yourself baldly assert.

          4. 6.1.1.1.4

            The “argument” (such as it is) for total abrogation is set forth at the link. If Anon’s thinking on this subject has changed since that exchange, he can comment as appropriate.

            link to patentlyo.com

            1. 6.1.1.1.4.1

              Dozens – you have to go back further.

      2. 6.1.2

        “and Halliburton could still apply.”

        The fact that this is a matter of dispute is further evidence that the 1952 act was poorly drafted (or well-drafted for the purpose of making up rules after-the-fact).

        1. 6.1.2.1

          The 1952 patent act was one of the worst written statutes in this country’s history and that’s saying something. Section 101 alone should have been enough to condemn everyone involved but the USA is known for helping lazy ingnorami and con artists “fail upwards.”

          Are there any statues of Giles Rich that we can tear down? Now would be a great time to do that.

          1. 6.1.2.1.1

            Please Pardon Potential [multiple] rePeat….

            Translation for Malc0lm’s wh1ne:

            “I do not like the actual law as written by Congress, so I will denigrate it at every opportunity while at the same time pretend that the law ‘really‘ is something else.”

            Malc0lm be1ng Malc0lm – it’s as the year ‘sabbatical’ never even happened.

        2. 6.1.2.2

          It is NOT a matter of dispute.

          Someone being in error does not change the fact that Halliburton was abrogated. It just means that that person is in error.

        3. 6.1.2.3

          I do not think that your conclusion follows from your premise here. Imagine that the day feels cool, and the thermometer reads 60°. A says that it is 60° outside, while B says that it is 90°.

          That does not imply that the thermometer is hard to read. It is more likely means that B is just thick-headed.

          1. 6.1.2.3.1

            In other words, the mere fact that one can find some @$$hat willing to take up a contrary position does not mean that there exists a “dispute” that the rest of us must take seriously. Don’t let those operating in palpably bad-faith think that if they kick up enough dust, the rest of us will all go blind.

            1. 6.1.2.3.1.1

              ^^^
              those operating in palpably bad-faith

              Oh, the irony….

      3. 6.1.3

        While Federico tried to say that 112(f) created a statutory abrogation-in-part of Halliburton, we should all be aware that the Supreme Court has repeatedly discounted the commentary from both Federico and Rich on the “intent” behind the 1952 Patent Act where it conflicts with precedent or the text (just as Matal’s own commentary has been discounted, such as in Helsinn). I don’t think the Supreme Court has ever addressed whether 112(f) really abrogated-in-part Halliburton.

        1. 6.1.3.1

          Halliburton (notwithstanding the feelings of Frederico) is not merely (let alone ‘in part’) abrogated by ONLY the last section of 35 USC 112.

          35 USC 112 – writ large – provided for claiming in terms sounding in function – even outside of the the “Pure Functional” claiming optional style afforded by 35 USC 112(f).

          This is evident in many cases (including the ‘baby car seat’ case of Orthokinetics, Inc. v. Safety Travel Chairs, Inc. 806 F.2d 1565 (CAFC 1986)) as well as the notions of “Vast Middle Ground and ANY non-single means type of claim.

          The Act of 1952 was written in direct response to the waywardness that the Supreme Court had visited upon patent law.

          1. 6.1.3.1.1

            Well, if you are going to deal with reality anon, you need to find another blog. This one is infested with the “woke” and anti-patent judicial activists both of whom are trying to merge with one another.

            1. 6.1.3.1.1.1

              I hear you — which is why the latest Biden attempt — and the rather stony silence from the regulars — is rather interesting.

              As I have long stated, there are several different philosophical groups against strong patent rights (my versions of the Left and of the Right, which are not exact analogues to the political Left and Right).

              Just as intersectionality of identity politics and a “victim” culture inevitably leads to the Far Left eating their own (and the always humorous notion that Joe Rogan is a Right Wing person), the different underlying monolithic power bases will eventually shatter the current “detente.”

              Pro-innovation forces need but stick it out until that eventual conflict.

  8. 5

    Hi,

    This is f/k/a hardreaders.

    It’s just interesting to note that the case-law discussion goes on for around 7 pages, but the arguments for the 4 patents only consume one brief paragraph each.

    -kd

  9. 4

    I would be interested in seeing what SquareSpace’s patents look like, if they have any. Do their claims recite code or new circuit structures (in structural terms, distinguishing them from the prior art)?

    Regardless, it’s great to see more attacks on data processing claims since such claims have no place in a sane, healthy patent system (never did, never will), at least not in a system that was set up to protect new materials and physically transformative methods.

    It’s amazing that the patent bar still lugs around the dense dud-like weight of the low-lifes and con artists who insist otherwise.

  10. 3

    This is from the Brief:
    In the context of the above-quoted claim, the italicized words denote functions performed by a computer system. … The specification of the ’063 Patent does not disclose any physical structure that performs the functions recited in the above-quoted claim. The specification of the ’063 Patent does not disclose any computer program code that causes a computer system to perform the functions recited in the above-quoted claim. The above-quoted claim is worded in such a way as to encompass any and every computer system that
    performs the functions recited in the claim, irrespective of what might be a computer system’s physical structure or computer program code.
    (citations omitted).

    This is basically just a guised attempt to invalidate all software patents. In fact, I could use the same (il)logic to invalidate just about all process patents.

    This is how the Brief ends:
    The inventors named in the asserted patents were free to seek patent protection for novel, useful, and non-obvious structures they might have developed to perform the functions or achieve the results recited in the asserted claims, as with claims 1-7 of the Morse patent upheld in Morse and claims 18, 20, 22, and 23 of the Jones et al. patent upheld in Graver I. But they could not rightly patent the functions or results themselves.
    Under 35 USC 101, a “process” is patent eligible subject matter. What is a process? Per 35 USC 100(b), “[t]he term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” A new use of a known machine. That is precisely what is being claimed in these patents. Computers are known, and claiming a new use for a computer is patentable eligible subject matter.

    Also, a process is a series of steps. What is a step? A step is an action being taken. What is a synonym for a function? An action. This is why I constantly question people who criticize the claiming of functions — that is precisely what is being claimed in a process claim.

    One of the claims discussed in the Brief is the following:
    8. A method in a computer system for disambiguating file descriptors, the method comprising:
    intercepting system calls that establish a file stored on media;
    storing at least one indicator that a file descriptor established by an intercepted system call is associated with a file stored on media,
    wherein storing an indicator that an established file descriptor is associated with a file stored on media further comprises storing the indicator in a table; and
    examining at least one stored indicator to determine with what file type the file descriptor is associated.

    The argument set forth in the Brief is the following: “The above-quoted claim is worded in such a way as to encompass any and every computer system that performs the functions recited in the claim, irrespective of what might be a computer system’s physical structure or computer program code.”
    Exactly — and there is nothing wrong with that.

    Suppose I recite:
    A method of turning on a light bulb comprising:
    screwing the lightbulb into a socket electrically connected to a switch and a battery; and
    completing a circuit between the lightbulb, socket, switch, and battery by turning the switch on.

    The claim is worded in such a way as to encompass every combination of lightbulb, socket, switch, and battery that performs the two actions (i.e., functions) being claimed. If I have to recite a particular “computer’s system’s physical structure or computer code” in the claim, the claim is essentially worthless because it would be trivial to design around. If I had to recite a particular switch in my hypothetical claim, that would also be worthless. Also, even if I recited a particular switch — perhaps a programmable timer switch — there are dozens and dozens of different types of programmable timer switches. Is that now indefinite because the claim now covers any and every programmable timer switch irrespective of the programmable timer switch’s physical structure? Maybe I narrow it down to a digital programmable timer switch — the same criticism could still be leveled. Following the logic set forth is the Brief, this is a path we would have to keep going down, and I would have to keep narrowing the claim limitations until it would be all but impossible to infringe this patent.

    The non-local counsel on this brief is Hughes Hubbard & Reed. As best I could tell, there patent prosecution practice essentially ended in 2015 (6 issued patents since then). Had their litigators consulted with a patent prosecution attorney, they likely would have been told how that their legal arguments were inane. If the USPTO followed the (il)logic presented in this Brief, they would be hard pressed to allow a single process/method claim.

    1. 3.1

      Shorter WT: “Unless I can describe everything functionally my client’s claim on applying logic to data is worthless!”

      Boo hoo hoo. What then? Does the world stop turning?

    2. 3.2

      WT : “ If the USPTO followed the (il)logic presented in this Brief, they would be hard pressed to allow a single process/method claim.”

      Total b.s.

      1. 3.2.1

        Total b.s.
        Give me a non-biotech process claim that YOU think passes 112, 2nd, and I’ll show you how. Preferably, please have it more than just 2 or 3 steps, but I can still work with just that.

        I’m not going to hold my breath waiting for you, but I wanted to give you that opportunity.

    3. 3.3

      I agree Wandering. Well written.

      That is the EE/CS/mechanical fields work.

      I’ve quote from textbooks used at MIT that say about what you are saying.

      Ladders of abstraction.
      Claims should be interpreted by how a person skilled in the art in view of the specification.
      Scope of enablement.
      Functional language to capture known solutions that are too numerous to list separately.

      All four of these are regularly contradicted by the anti-patent judicial activists. It is like telling us that the Sun orbits the Earth.

      1. 3.3.1

        Wiper: “ It is like telling us that the Sun orbits the Earth.”

        Funny because we all know that the patent maximalists would deny that the earth goes around the sun if it kept the worst claims ever on life support for another five hours.

        Software is instructions for applying logic to data using a device created for that purpose. And instructions are ineligible subject matter.

        Have fun with that one, since you are such a deep thinking and serious person.

        1. 3.3.1.1

          And instructions are ineligible subject matter.
          A machine configured by those instructions are patent eligible subject matter.

          A machine performing those functions are patent eligible subject matter.

          1. 3.3.1.1.1

            WT: “ A machine configured by those instructions are patent eligible subject matter.”

            LOL

            Yes, we all know the magical exception that was created out of thin air to shoehorn this data processing nonsense into the patent system.

            Keep dancing in circles and crying when nobody is impressed.

            1. 3.3.1.1.1.1

              More than certain that the direct words of Congress are not any “magical exception that was created out of thin air

              You seem to want to see “shoe-horning” where no such thing exists.

              Innovation of the Kondratiev Fifth Wave deserves every bit of patent protection as any other innovation.

              But you already know that Malcolm.

              Your just over a year ‘sabbatical’ has not improved your scripts.

            2. 3.3.1.1.1.2

              Yes, we all know the magical exception that was created out of thin air
              Congratulations, you pretty much nailed the description of the exceptions to 35 USC 101. Such insight on your part.

              1. 3.3.1.1.1.2.1

                Now you know why anon and I are so hardened Wandering.

                The Pooper and his like infest this blog.

          2. 3.3.1.1.2

            WT “ A machine performing those functions are patent eligible subject matter.”

            Are you suggesting that if I never used the word “computer” or any synonym but I merely described a “new machine” (in those exact terms) that was “configured” to apply a recited list of “new” logic steps to some species of data that somehow that kind of claim would be eligible?

            So eligibility, then, is just a formality requiring the use of certain magic words in a patent claim (e.g., “machine” or “article of manufacture”), even in the context of a claiming system that permits applicants to bury their “improvement” under ten zillion feet of prior art with no other formal requirements? And no requirement for disclosure of a single specific working embodiment of the alleged invention anywhere in the application?

            Seems … insane.

            1. 3.3.1.1.2.1

              lol – see the Grand Hall Experiment.
              See also the exceptions to the printed matter doctrine.

              Oh wait, these counters were put to your trite script years ago….

              (so much for your mere assertion of ‘formality’)

              1. 3.3.1.1.2.1.1

                “ these counters”

                The mere recital of arcane gobbledygook isn’t much of a “counter” to anything. Never was.

                But if that’s the game, the please see 103 and educated yourself about Frimbaglionic Pseudohistories. Game. Set. Match.

                Fun!

                1. Except the game set and match goes against you, as you have never addressed them – on point and in an inte11ectually honest manner.

                  Which is why the mere mention of them sends you running.

        2. 3.3.1.2

          I see “the Poop” hasn’t changed his tune. Same old nonsense.

          1. 3.3.1.2.1

            One wonders what he was doing during his year away.

            Clearly, he learned absolutely zero in regards to appreciating innovation and why we have a patent system.

            1. 3.3.1.2.1.1

              Yup. I “The Pooper” is at it again.

              1. 3.3.1.2.1.1.1

                It was a pretty nice year without him, wasn’t it?

    4. 3.4

      [A] process is a series of steps. What is a step? A step is an action being taken. What is a synonym for a function? An action. This is why I constantly question people who criticize the claiming of functions — that is precisely what is being claimed in a process claim.

      Agreed. If the defendant here thinks that a process claim must recite the structure to accomplish every step in the process, they are rather misunderstanding United Carbon, Graver Tank, & Halliburton /I>, all of which concerned product claims, not process claims. This does really require consultation with a patent prosecutor to spot the inanity. Anyone familiar with case law should see the distinction here.

      1. 3.4.1

        While I agree with WT that the United Carbon argument here is inane, I am not really convinced that the claim in question does actually comply with §112(b). Firstly, what does it mean to say that “storing an indicator that an established file descriptor is associated with a file stored on media further comprises storing the indicator in a table”? What does it mean to say that one step in a method “further comprises” another step? Does that mean that one must both “store” the file descriptor and then—in a separate event—store the file descriptor “in a table” in order to infringe? Or will it suffice for infringement that one merely stores the file descriptor in a table (just one event)? The claim is ambiguous as written on this point, and such ambiguity is fatal under §112(b).

        Also, so much of the claim language is not entitled to patentable weight. When one ignores the no-patentable-weight portions, it is not clear that this claim is novel over order in-your-brain memory.

        8. A method in a computer system for disambiguating file descriptors, the method comprising:
        intercepting system calls that establish a file stored on media;
        storing at least one indicator that a file descriptor established by an intercepted system call is associated with a file stored on media,
        wherein storing an indicator that an established file descriptor is associated with a file stored on media further comprises storing the indicator in a table; and
        examining at least one stored indicator to determine with what file type the file descriptor is associated.

        1. 3.4.1.1

          “established by an intercepted system call is associated with a file stored on media”

          Why do you see this as not having patentable weight? If I was examining these claims, I don’t think I could (or would seek to) justify such a conclusion.

          1. 3.4.1.1.1

            That is product by process. Product by process limitations get no patentable weight.

            1. 3.4.1.1.1.1

              huh Greg? You started this out by providing a method claim.

              You now want to assert that this is a “product by process?’

            2. 3.4.1.1.1.2

              I agree with your original statement, but I believe you’re incorrect here – it’s not a product by process limitation, and product by process claims do have patentable weight (see MPEP 2113); rather, it’s a non-functional descriptive matter, which gets no patentable weight (MPEP 2111.05).

              For example:
              8. A method… comprising:
              intercepting system calls that establish a file stored on media;
              storing [information]… in a table; and
              examining at least one stored [item of information] to determine [what the information says].

              Arguably, what the information is – in this case, information about an association between a file and a file type – does not have any functional relationship to the rest of the claim, and therefore shouldn’t be given patentable weight. For example, the claim doesn’t require taking an action (e.g. launching a specific application) if there’s one file type association and a different action if there’s a different one. Assuming for the sake of argument that there’s nothing novel about intercepting system calls to establish a file (e.g. write commands); storing data; and examining the data, it’s no different than a claim to those functions, wherein the data is a funny story or a picture of a cat.

              1. 3.4.1.1.1.2.1

                “For example:
                8. A method… comprising:
                intercepting system calls that establish a file stored on media;
                storing [information]… in a table; and
                examining at least one stored [item of information] to determine [what the information says].”

                Man I wish I could justify this interpretation to myself! It’d make my job way easier!

                To me, storing name information is storing name information, and is not just storing information. It doesn’t matter that the information is basically fungible the claim itself is to one of the options.

                And I’ve never gotten a satisfactory answer from other examiners why this sort of “interpretation” is valid.

                1. It doesn’t matter that the information is basically fungible

                  Perhaps it may be related to fungible color information of traffic lights…

                  (Marty won’t be happy)

                2. “To me, storing name information is storing name information, and is not just storing information. It doesn’t matter that the information is basically fungible the claim itself is to one of the options.”

                  What if the claim recited simply “A method, comprising: storing information relating to a new and nonobvious musical composition; and examining the information to determine how the composition will sound”? If that limitation is given patentable weight, did I just patent sheet music? The claim is to a very specific item of information, rather than claiming any information, after all (if it helps, assume that instead of ‘new and nonobvious musical composition’, the claim recites my ‘Non-functional Descriptive Matter Song’ and the specification defines that term and includes a figure full of sheet music).

                  Why this interpretation is valid is in MPEP 2111.05:
                  “The rationale behind the printed matter cases, in which, for example, written instructions are added to a known product, has been extended to method claims in which an instructional limitation is added to a method known in the art. Similar to the inquiry for products with printed matter thereon, in such method cases the relevant inquiry is whether a new and unobvious functional relationship with the known method exists.”

                  Basically, without the doctrine, you could *always* make a claim patentable by simply adding some token nonfunctional limitation. You invented a drug? Well, I’ll patent a method comprising providing the drug while telling you it will cure you. See King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this line of cases is preventing the indefinite patenting of known products by the simple inclusion of novel, yet functionally unrelated limitations.”).

                3. Of course such a claim is not patentable, but it also isn’t anticipated by the act of writing information in a book. The part of the claim that isn’t given weight is the content of the music, not identification of the information as music.

                  “without the doctrine, you could *always* make a claim patentable by simply adding some token nonfunctional limitation. You invented a drug? Well, I’ll patent a method comprising providing the drug while telling you it will cure you.”

                  I don’t examine drug applications, but I’d read 103 as excluding that addendum claim from patentability. And if applicant’s addendum is something like “advise the patient to take the drug and then go to North Dakota and practice the hokey pokey “, so what?

                4. Abstract iDan,

                  Past conversations — explicitly on the Exceptions to the Printed Matter Doctrine — are (still) highly instructive.

              2. 3.4.1.1.1.2.2

                I believe you’re incorrect here – it’s not a product by process limitation

                Sure enough, you are correct. As I parse it more carefully, I see that it is not product by process.

                As for whether the content of the information has a functional relationship to the rest of the claim, I confess that I do not know. If I were to re-draw my strike-throughs, I would not include the second one. If you think that I was correct to include that strike-through, obviously I was correct purely by accident.

            3. 3.4.1.1.1.3

              That is product by process. Product by process limitations get no patentable weight.
              Where did you find that?

              Do you know the difference between a widget made by sintering, casting, or forging? I guarantee that widgets made by these three different processes are structurally different even if they look identical.

              I am aware of product-by-process claims. However, I have never heard of case law regarding product-by-process limitations.

              1. 3.4.1.1.1.3.1

                Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 373 (1938) (“Although in some instances a claim may validly describe a new product with some reference to the method of production, a patentee who does not distinguish his product from what is old except by reference… to the process by which he produced it, cannot secure a monopoly on the product…”).

                Scripps Clinic v. Genentech, Inc., 927 F.2d 1565, 1583 (Fed. Cir. 1991) (citing In re Brown, 459 F.2d 531, 535 (C.C.P.A. 1972) for the proposition that “in product-by-process claims the patentability of the product must be established independent of the process”).

      2. 3.4.2

        The problem is that when “process” is construed a just a series of steps, you validate claims to “a step of acquiring [anything related to desired result]; and a step of achieving [desired result].”

        There has to be some middle ground between having to claim every substep at axiomatic levels and getting to claim generic inputs and desired outputs.

        1. 3.4.2.1

          Agreed. The defendant here did not actually explain here how to find that middle ground, however. Nor did they show that these claims lie on the wrong side of that middle ground.

          Rather, the defendant here argues that there is no middle ground, and that method steps need to recite the same level of structural detail as product claims. That dog will not hunt.

          1. 3.4.2.1.1

            Rather, the defendant here argues that there is no middle ground, and that method steps need to recite the same level of structural detail as product claims.
            Except the same logic can also be applied to structural claims. For example, what is a light switch? It encompasses anything and everything that performs the function of turning a light on and off. Is that indefinite?

            This is from MPEP 2173, and is something that I forget to mention in my earlier post:
            Breadth of a claim is not to be equated with indefiniteness. In re Miller, 441 F.2d 689, 169 USPQ 597 (CCPA 1971); In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970) (“Breadth is not indefiniteness.”). A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined.

            As I was reviewing the brief, the phrase “fall afoul of the rule that a patentee may not broaden his claims by describing the product in terms of function” is cited 12 separate times. I guess they really wanted to get that point across. This quote is from United Carbide Co. v. Binney & Smith … a 1942 Supreme Court decision, and the Brief also cited Haliburton in support. As we know, Halliburton preceded the Patent Act of 1952. As such, whether Halliburton remains good law is very questionable.

            Regardless, as I noted earlier, a process claim is patent eligible and recites an invention in terms of functions (i.e., acts) being performed. Although I didn’t read every word of the Brief, every claim I came across was a method (i.e., process) claim. There is nothing inherently wrong with claiming new uses for know products (see 35 USC 100, 101).

            The USPTO has issued hundreds of thousands (if not well over a million) patents with claims that would run afoul of the approach of examination under 35 USC 112 put forth in this brief, and these attorneys think they got the law right?

            1. 3.4.2.1.1.1

              The USPTO has issued hundreds of thousands (if not well over a million) patents with claims that would run afoul of the approach of examination under 35 USC 112 put forth in this brief, and these attorneys think they got the law right?

              The PTO issue literally thousands of invalid claims every month. I agree with you that the defendants here are making a weak argument, but the above is a very weak rebuttal to the defendants’ weak argument.

              1. 3.4.2.1.1.1.1

                Paul indicates that there is a case supporting your contention, but the fact of the matter is that such a contention simply runs afoul of the fact that Congress dictated both the existence and a level of that existence contrary to your asserted point (the presumption of validity exists until clear and convincing evidence is presented to an actual adjudicator to remove that presumption).

                Merely claiming that the Office grants improper claims does not make Wt’s counter to be a weak one. The law (as written by Congress) is on his side.

            2. 3.4.2.1.1.2

              “For example, what is a light switch? It encompasses anything and everything that performs the function of turning a light on and off.”

              I don’t think this is correct. “Circuitry configured to control a light” encompasses the entire function, but “lightswitch” refers to a class of structures which perform that function. It would not be reasonable to interpret a house’s circuit breakers as “lightswitchs.”

        2. 3.4.2.2

          There has to be

          Your “has to” is nothing more than your feelings.

          Do not confuse your feelings with the law.

    5. 3.5

      Computers are known, and claiming a new use for a computer is patentable eligible subject matter

      Perhaps using the computer as a counterweight on an elevator, or maybe using the thermal load of the computer to cook chicken strips?

      Because a user entering some instructions and some data to be processed, and then consuming the output of the processing, is exactly the old use of the computer.

      1. 3.5.1

        Because a user entering some instructions and some data to be processed, and then consuming the output of the processing, is exactly the old use of the computer.
        I know it is your pet theory to determine patent eligibility by whether the data being consumed is either by a computer or a person. However, that theory has no basis in statutory or case law and there is no policy justification for your pet theory.

        It is not the “old use of the computer.” It is only the old use when you ignore all the specific limitations being recited and reduce the claimed invention to mere data processing. The real law doesn’t all you to ignore claim limitations (unless you are the Federal Circuit and you are free to recast the invention in any way you see fit).

        1. 3.5.1.1

          My proposed solution to the eligibility problem (and pleased to see that you understand it, FWIW) is not pertinent to the assertion that a computer sitting quietly in a corner processing dataset A is a different machine than it is when processing dataset B. It is not.

          Its no more of a known machine performing a new function than my car is when I instruct it to drive to Disneyland rather than Long Beach. Yes, driving to Long Beach is a different function than driving to Disneyland, but the machine has not been changed or improved.

          We may say that the instructions given to the machine are different, which does come around to my proposal.

          Sometimes those instructions may be considered machine components- and sometimes not. Hmmmm. I wonder what policy use there would be for having a bright line to know when those instructions are machine components and when they are expressions of ideas fixed in writing….

          The caselaw basis of my proposal is found in the literal meaning of the word abstract, which is information consumed by human beings. No human being, no possible abstraction.

          1. 3.5.1.1.1

            The caselaw basis of my proposal is found in the…

            Sorry, but no – there is NO caselaw basis for your assertion.

            1. 3.5.1.1.1.1

              No patent cases turn on the meaning of abstract and no opinions contain the word and no observers anywhere say that the lack of a working legal definition of the word abstract means a thing.

              1. 3.5.1.1.1.1.1

                Except you are completely wrong – and quite miss the fact as to why so many are upset with the scrivining of the Supreme Court that has created a Gordian Knot (and such a Gordian Knot has been recognized by leading members of all three branches of the government.)

      2. 3.5.2

        “Because a user entering some instructions and some data to be processed, and then consuming the output of the processing, is exactly the old use of the computer.”

        Yes, but aren’t those steps 1 and 3, with step 2 – what the processing is – being ignored? In other words, if you had a claim of “1) entering data; 2) [a miracle occurs]; 3) consuming the processed data”, the first and third steps may look old, but whether the entire claim is old depends on how much detail added in step 2 there.

        1. 3.5.2.1

          the first and third steps may look old, but whether the entire claim is old depends on how much detail added in step 2 there

          What aspect of step 2 changes the machine? None. All that has changed are the instructions that the machine consumes.

          Are those new instructions machine components, and are the changes useful?

          Sometimes. And sometimes not. We don’t patent new and improved math, even though it may be useful. Math is made by man, why don’t we patent it?

    6. 3.6

      PS “function” and “action” are not precise synonyms.

      An “action” is a precise synonym for an “event”. A function means connotes an event with a useful purpose or intention. Actions may or may not have intent or utility.

      func·tion
      /ˈfəNG(k)SH(ə)n/
      noun 1. an activity or purpose natural to or intended for a person or thing.
      “bridges perform the function of providing access across water”
      Similar:
      purpose
      task
      use
      role
      reason
      basis
      justification
      responsibility
      duty
      concern
      province
      aim
      activity
      assignment
      obligation
      job
      errand
      mission
      capacity

      verb 2. work or operate in a proper or particular way.
      “her liver is functioning normally”

      In general, 101 and 100(b) are useless to narrow “process”, and the Bilski court punted the question. It is a question. Dicta at all levels point out that anything that moves in the world is a process & the drafters of the Act could not have intended that everything human beings do is subject to patenting, despite the wishes of some Z ealots.

      1. 3.6.1

        As you tend running down rabbit holes, let’s work with a real example.

        “intercepting systems calls that establish a file stored on media”

        and

        “storing at least one indicator that a file descriptor established by an intercepted system call is associated with a file stored on media.”

        What are these? Are these function? Steps of a process? Is this indefinite? What is it? You are on the Federal Circuit and somebody says this claim language is indefinite. How do you respond?

        1. 3.6.1.1

          As you tend running down rabbit holes,…

          This one too, Wt, is swine (just in case you were wondering about throwing down some pearls)

        2. 3.6.1.2

          Well…I may be a PHOSITA for this one. So lets unpack it:

          “intercepting systems calls that establish a file stored on media”

          “storing at least one indicator that a file descriptor established by an intercepted system call is associated with a file stored on media.”

          Are these functions? Intercepting a call is a function. I have no idea which calls are being intercepted, because calls that “establish a file” can occur at the I/O level, the operating system level, and at various points by storage or media subsystems. The usual method is to simply ask the operating system what kind of file the object is. Would that be “intercepting”? I don’t know.

          Storing metadata about a file is a function. I assume you would have to know what needs to occur to know which “system” “calls” have been “intercepted” to only store those indicators. I assume those terms would have to be construed unless the specification clarified them. I read the specification. I believe these terms are indefinite. I don’t know that my operating system treats “communications channels” as files nor that all of the lower-level operating system parameters are kept in tables. In fact, the trend has been away from tables. Even at the time of invention, I think these claims are indefinite, but even with a probable understanding of what the inventors were getting at, the workarounds were trivial then, and now.

          This patent is g arbage and the only interesting question is what is the best way to kill it?

          I would say though that the claims appear eligible to me. The result of the method is information, and the consumer of the file type information is some code routine that’s a component of some other machine purpose to distinguish between stored file objects and transient communications objects. There is no particular human meaning in the data which is providing the utility.

          1. 3.6.1.2.1

            I may be a PHOSITA for this one.

            You might be a PSitA, but you are definitely not a PHOSitA. No real, live person is a PHOSitA for any art. The PHOSitA is a legal fiction.

            1. 3.6.1.2.1.1

              Greg beat me to the response…

              (not that Marty cares one whit to understand the terrain upon which he would choose to do battle…)

            2. 3.6.1.2.1.2

              Yes I understand the legal fiction of PHOSITA. That’s why I’ve advocated for years that the construction of that person (and thereby the invention) should be appended to the Markman process. No debate that PHOSITA is a pure matter of law, being a legal fiction and all?

              But in the vernacular, when thinking about 112 and looking over a given patent document, we imagine a run-of-the-mill practitioner of the pertinent art reading it.

              1. 3.6.1.2.1.2.1

                But in the vernacular…

                No.

                That would be legal error.

                Hence, the admonition for you to appreciate the terrain upon which you would choose to do battle.

              2. 3.6.1.2.1.2.2

                [W]hen thinking about 112 and looking over a given patent document, we imagine a run-of-the-mill practitioner of the pertinent art reading it.

                Definitely. That is why I mentioned that you might be a PSitA. §112 is evaluated by a PSitA (PSitAs are real persons). Only §103 is evaluated by the PHOSitA (who is purely a legal fiction).

                1. Greg, obviousness sometimes cannot be rationally distinguished from written description.

                  That’s why Alice is a useful compact inquiry…ironically just not for eligibility.

                  But we think of the 103 PHOSITA in the same vernacular sense: would someone who does this stuff think of these claims as inventive?

                2. This “we” is plain legal error:

                  But we think of the 103 PHOSITA in the same vernacular sense

                  Same old non-patent law terrain….

                3. That Greg does not chide your for the asinine statement of “obviousness sometimes cannot be rationally distinguished from written description” is a disservice to you.

          2. 3.6.1.2.2

            “I would say though that the claims appear eligible to me. The result of the method is information, and the consumer of the file type information is some code routine that’s a component of some other machine purpose to distinguish between stored file objects and transient communications objects. There is no particular human meaning in the data which is providing the utility.”

            While the claim does distinguish between the two types of objects, it doesn’t do anything with this information. Given that you still consider that eligible (and ignoring 102/103 for the nonce), would you consider the following claim eligible, given that it recites a method that results in information that is consumed by a machine?
            “A method, comprising:
            retrieving a list of instructions; and
            determining whether the instructions can be executed by a computer.”
            Assume that the specification describes this as initial steps for executing the instructions, and the utility is so that the computer doesn’t try to execute non-executable data, but note that none of that appears in the claim.

            Under current 101 jurisprudence, I think that would be solidly a abstract mental process, but it seems like you would consider it eligible?

            1. 3.6.1.2.2.1

              Thanks for the questions iDan.

              I think we can conclude that current 101 jurisprudence is rudderless. It is so because the structure of the act presents two distinct conundrums; one around limiting processes, especially those involving the use of information, because everything people do can’t be subject to patenting, and because the idea of statutory categories strongly implies that items to be categorized are done so for reasons intrinsic to the item, rather than the circumstances of the item. So the question becomes:

              When a putative invention is described in a patent application, is that description subject matter with or without the actual existence of an invention? In other words, are we asking what the elements of the invention are relating to, and assuming that the patentability requirements of 102/103 /112 will be met?

              Or are we really saying the invention needs to fit a category AND be a patentable invention to be eligible?

              Thus:

              “A method, comprising:
              retrieving a list of instructions; and
              determining whether the instructions can be executed by a computer.”

              Is there an invention there? Does it matter?

              Can we identify putative subject matter? I think we can. Its about a computer making a determination and acting on the result. To me, that’s eligible subject matter, subject to patentability requirements, which it clearly won’t meet.

              If instead, that information is used by a person, it’s not eligible subject matter, and the act of consuming the information cannot be an infringing act.

              Whether or not a human can complete the process without a computer or within a human mind or if a human is part of the process is a red herring.

              What matters is that the information result of a method is useful, but for a patent, it can only be useful to a machine, because information utility within human minds is always 100% abstract and should be beyond any law.

              1. 3.6.1.2.2.1.1

                Traffic lights.

                And BOOM, Marty goes down for the count (again).

    7. 3.7

      “What is a synonym for a function? An action. This is why I constantly question people who criticize the claiming of functions — that is precisely what is being claimed in a process claim.”

      I addressed this in the thread on VoIP a few days ago… In this context, “function” does not mean “step”, but “result”.

  11. 2

    Is it any surprise that the list of cases actually predate the existence of 35 USC 112?

    Hint: there is a serious need to understand that Halliburton was abrogated in the Act of 1952.

  12. 1

    >although both can occasionally depend upon some underlying factual finding.

    I could see a summary judgement, but wouldn’t a judge ‘almost always’ need some evidence about what a “person skilled in the art to which it pertains” really is and what they could do with the Spec?

    1. 1.1

      To your point, is not the “legal argument” that THAT PHOSITA is itself a factual matter, and necessarily intertwined with the Graham Factors?

    2. 1.2

      Exactly.

      How does a federal judge, well-grounded in European history but not the technology of the patent, know what is indefinite to a person of ordinary skill in that art?

      1. 1.2.1

        A rejection for indefiniteness is proper “if its claims, read in light of the specification, delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).

        While the determination of indefiniteness may be a matter of law, it also requires findings of facts (e.g., claim construction, 101, and 103), which makes it inappropriate for a judgment on the pleadings. In this instance, indefiniteness requires factual findings as to those skilled in the art. However, seeing that the Federal Circuit have blessed District Court judges sua sponte making findings of fact regarding 101 (or at least dismissing the need to make findings of fact), defendants figure ‘hey, let’s try to knock stuff out under 112 as well.’

        This is the golden era of efficient infringers everywhere. Congress is asleep at the switch. The Supreme Court cannot be bothered to fix any of the messes they made, and the Federal Circuit is throwing gasoline onto the fire.

        1. 1.2.1.1

          +1

        2. 1.2.1.2

          I would be interested in seeing what SquareSpace’s patents look like, if they have any. Do their claims recite code or new circuit structures (in structural terms, distinguishing them from the prior art)?

          Regardless, it’s great to see more attacks on data processing claims since such claims have no place in a sane, healthy patent system (never did, never will), at least not in a system that was set up to protect new materials and physically transformative methods.

          It’s amazing that the patent bar still lugs around the dense dud-like weight of the low-lifes and con artists who insist otherwise.

        3. 1.2.1.3

          + 2

      2. 1.2.2

        “How does a federal judge, well-grounded in European history but not the technology of the patent, know what is indefinite to a person of ordinary skill in that art?”

        See Alice.

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