What is Your Preferred Method for Attacking Functional Claims?

by Dennis Crouch

VoIP-Pal.com, Inc. v. Apple, Inc., No. 20-1809 (Supreme Court 2021)

VoIP-Pal sued Apple for infringing its U.S. Patent Nos. 9,537,762; 9,813,330; 9,826,002; and 9,948,549.  Apple filed four petitions for for inter partes review, but all four were denied by the PTAB. Judge Koh then dismissed the infringement case in Apple’s favor–finding that all asserted claims were directed to ineligible subject matter.  On appeal, the Federal Circuit affirmed without opinion (R.36). Now, VoIP-Pal has petitioned for writ of certiorari.  The case is now part of a trio of eligibility cases pending before the Court. See American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891; iLife Technologies, Inc. v. Nintendo of America, Inc., No. 20-1760.

The patents here are all directed routing calls using Voice Over Internet Protocol (VoIP) communications.  The basic idea is to rout calls based upon a user identification, rather than using key parts of a telephone number (such as country codes; area codes; and other signals).  Once the recipient ID is entered, the system would look-up their location and route the communications accordingly.   Judge Koh found the claims were directed to the abstract idea of “Routing a communication based on characteristics of the participants.”  Judge Koh did not attempt to define “abstract idea,” but noted some hallmarks found in VoIP’s claims:

Claim 1 is directed to an abstract idea: (a) the claimed method discloses only generalized steps drafted in purely functional terms; (b) it is analogous to well-known, longstanding practices; and (c) it does not recite an improvement in computer functionality.

In its petition for writ of certiorari, VoIP-Pal asks three questions:

1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. §101?

2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

3. Is it improper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?

[Petition] The 112 discussion is basically an argument that any problems with functional claim limitations should be dealt with under §112 rather than §101.

= = =

The chart above shows the number of U.S. patents issued each year that include the phrase “VoIP” somewhere in the document.  Folks were already doing some packet-switched voice communications before the 2000’s, but typically used a different name.

92 thoughts on “What is Your Preferred Method for Attacking Functional Claims?

  1. 8

    Voip-pal wins 12 IPR challenges and court of appeals with the uspto providing support only to have most of its claims invalidated by judge Koh. How can ptab/uspto issue and validate patents when federal circuit can just invalidate at the will of the big tech companies?

    Awful judge Koh.

    1. 8.1

      …and yet, Judge Albright continues to have scorn heaped upon him.

      Go figure.

  2. 7

    Still, all this is so easy to understand when you deal in reality.

    Scope of enablement is the scope of a claim.

    Functional terms are interpreted as one skilled in the art would interpret them.

  3. 6

    “Judge Koh then dismissed the infringement case in Apple’s favor”

    Put down your slings all you little people.

    A David will never beat a Goliath in my courtroom.

    Never.

    — Lucy K.

  4. 5

    Dennis, re your title question “What is Your Preferred Method for Attacking Functional Claims?” it would be interesting to see a count comparison in recent years of the number of patent suits lost on Allice type 101 unpatentable subject matter grounds versus the number of IPR decisions removing all claims in suit, versus the [presumably smaller?] number of patent suits adversely decided on any 112 grounds. [There should be little overlap since neither 101 or 112 can be raised in an IPR.]

    1. 5.1

      [Of course 101 patent suit decision counts would need to be compared to the undoubtedly greater number of patent suits decided on other grounds such as non-infringement and prior art, especially on appeal, and the vast majority of patent suits that are settled before any decision on any grounds.]

  5. 4

    What is Your Preferred Method for Attacking Functional Claims?
    What is constitutes “Functional Claims”? Are they method claims? Are they claims with functional elements? Are they claims that recite a mathematical function?

    Claim 1 is directed to an abstract idea: (a) the claimed method discloses only generalized steps drafted in purely functional terms; (b) it is analogous to well-known, longstanding practices; and (c) it does not recite an improvement in computer functionality.
    Under 35 USC 112, 2nd, the claims are only required to distinctly claim the invention (i.e., the distinguish the claims over the prior art). How to make and use the claimed invention is covered under 35 USC 112, 1st — and that job goes to the specification. Whether the claimed steps are “generalized” are immaterial to patentability. Claims are not intended to be construction blueprints with operation sheets — however, certain courts appear to be reading that requirement into the statute.

    Also, being “analogous to well-known, longstanding practices” should also be immaterial under 35 USC 101. That is an issue of whether there is prior art — not whether it is directed to an abstract idea. A claim directed to an improvement to a method is invariably analogous to a well-known, longstanding practice (i.e., the longstanding practice being what is being improved).

    As for not reciting an improvement to computer functionality, what does that even mean? How is a method of routing messages over a communication system not an improvement to computer functionality? All that aside, where is the statutory requirement than any invention has to improve anything in order to be patentable?

    1. 4.1

      Well said Wandering through.

      Also, claims should be viewed in terms of how a person of ordinary skill in the art would view the claims and I have cited textbooks that explain why functional claims are used in EE/CS/mechanical claims to capture the set of solutions.

    2. 4.2

      Despite what I said in #2 below, I think that WT’s #4 is essentially correct in all particulars. In a better world, Justice Breyer and the rest of the Mayo court would have taken these points more properly into consideration.

    3. 4.3

      “Under 35 USC 112, 2nd, the claims are only required to distinctly claim the invention (i.e., the distinguish the claims over the prior art).”

      I suspect eventually the reins will be taken from the patent attorneys, and the law will recognize that “something which achieves this thing I want to achieve” as nether “sufficiently pointing out” nor “distinct.”

      1. 4.3.1

        I suspect eventually the reins will be taken from the patent attorneys, and the law will recognize that “something which achieves this thing I want to achieve” as nether “sufficiently pointing out” nor “distinct.”
        Another person who doesn’t understand the difference between 112, 2nd and 112, 1st.

        1. 4.3.1.1

          Another person who personally profits from absurd interpretations of “definite.”

          1. 4.3.1.1.1

            Ben,

            You provide merely your feelings in the face of a comment directed to how the law actually is.

            Are you aware of what that type of comment portends towards the credibility (or lack thereof) of anything that you may wish to add?

          2. 4.3.1.1.2

            Another person who personally profits from absurd interpretations of “definite.”
            I don’t think you appreciate that ambiguity in the law creates MORE work for me — not less.

            Bright lines are easy to administer. The more the law becomes unsettled, the greater the need for attorneys. In litigation, for example, parties go to trial because they both think they’ll win. They are less likely to do so if the law is clear.

            Regardless, you have little idea as to what it takes to write a valid and enforceable claim. There are so many complexities that you don’t appreciate in patent law in general and claim drafting in particular, that it is a waste of time trying to explain it to you.

            1. 4.3.1.1.2.1

              I agree Wandering. They have no idea how hard it is to write a claim that the client expects to license for 10’s of millions.

              1. 4.3.1.1.2.1.1

                Three thoughts in response:

                1) I agree that it is hard to write such a claim.

                2) It should be hard to write such a claim. It is suboptimal public policy to let sloppy drafting work suffice. If you want a claim to stand up in court, you should expect that the services of a competent drafting professional will be necessary.

                3) Many of the complaints that followed from Williamson v. Citrix arise from patent professionals who lack the talent and creativity to do the hard work necessary to draft an enforceable claim. There is no reason why a competent professional should object to Williamson, but every reason why am incompetent professional should object.

                1. Utter BS:

                  There is no reason why a competent professional should object to Williamson, but every reason why am incompetent professional should object.

                  Greg’s view on 112 are suspect – at best.

                  Let’s not forget that he was ‘all in’ for all of the Trojan Horse insertions when the issue of 35 USC 101 was before Congress.

                2. anon is correct.

                  An intellectually honest patent attorney who understands how a person skilled in the art works with algorithms knows that a specification should only have to include enough for the person to understand how to write the algorithm–not a complete algorithm that includes what is know in the art.

                  anon is also right that the Trajan Horse in the proposed 101 legislation was crippling that would limit embodiments to those disclosed in the specification and their equivalents. This is well known to be very limiting and it makes it impossible to protect a real world invention.

                3. anon, Greg really does push the anti-patent judicial activists nonsense when it doesn’t affect his AU.

                  What a dirty dog.

                4. This is well known to be very limiting and it makes it impossible to protect a real world invention.

                  It is only as limiting as the one drafting makes it to be. A lazy drafter will not do the work to draft with appropriate supporting details, and the resulting patent is correspondingly narrow in scope. A skilled drafter includes the necessary detail, and the resulting patent is robustly enforceable.

                  I understand why so many outside counsel drafting professionals do not like this legal regime. As a “client” (i.e., an in-house attorney who chooses which outside counsel will draft applications for my company, and who reviews and approves the work-product before it gets filed), Williamson has—as it were—drained the pool so that I can see who is skinny dipping. We clients can now see which drafters are skilled and which ones are lazy.

                  I am sure that the lazy ones do not appreciate the way that Williamson has exposed their lack. For all that, however, I cannot let the lazy ones’ problems become my company’s problems. The skilled drafters, meanwhile, enjoy the Williamson regime, because I take my company’s business away from the lazy and give it to the skilled.

                5. Greg doubles down on “Williamson is good law and shows the lazy” as opposed to understanding WHY it is a bad decision.

                  Of course, he is unaware of his own biases on 112 – and simply does not understand anything outside of his narrow Big Pharma propaganda system.

                6. I’ve explained to you before Greg why it is very limiting.

                  I’ve explained about embodiments in the CS/EE/mechanical arts and how there are so many embodiments that it is impossible to include them all and unnecessary.

                  I’ve explained before how functional language is used.

                  I’ve explained before how limiting embodiments to disclosed embodiments plus equivalents is the same as means+function scope and is well-known to be very limiting.

                  I’ve explained that a person skilled in the art doesn’t need the entire algorithm or method but only the changes to existing methods.

                7. [T]here are so many embodiments that it is impossible to include them all…

                  Not impossible, just difficult. In fact, sometimes its not even difficult, really—just tedious.

                  In any event, I know that it is not impossible because I have seen it done by competent professionals working on software applications that my company has filed. When something is actually done, then it is clearly not impossible.

                  If you find it impossible, then perhaps it is time to think about retiring. There are plenty working professionals who know how to draft an enforceable asset in the post-Williamson world who can do the work.

                8. “An intellectually honest patent attorney who understands how a person skilled in the art works with algorithms knows that a specification should only have to include enough for the person to understand how to write the algorithm–not a complete algorithm that includes what is know in the art.”

                  What a happy coincidence it is that only those certain patent attorneys can appreciate what the law should be interpret the law in a way most convenient for them.

                9. Greg, you have no idea what you are talking about with software and you would be unable to judge a software application. And, I understand the implications of Williamson and work with it. But–impossible–is the right word and indeed reflects reality. Funny, I had this conversation with a Ph.D. inventor just the other day when we were trying to figure out what embodiments to include for an invention that could be done with circuits or software. In the inventors words, it would be “impossible” to describe all the embodiments individually. ANYONE that is trained in EE/CS knows this and I’ve quoted from textbooks used at MIT that state exactly this.

                  I really don’t get why you comprise your integrity by continuing to put out false information to further your company’s and your agenda to weaken software patents. I half think that you are just a very literal minded person and incapable of thinking about other art units. But the fact that you gloss over the fact that molecules that are attached to reactive part of other molecules are treated just like the infinite embodiments of solutions in circuits and software. That is you know that you can’t possibly describe them all so there are functional descriptions used.

                  Just disgusting really that a fake conversation like this goes on in a patent blog. That I have to argue about reality in CS/EE with a bio guy when you have ZERO support from anyone that is actually trained in CS/EE.

                  Greg >>>Not impossible, just difficult. In fact, sometimes its not even difficult, really—just tedious.

                  In any event, I know that it is not impossible because I have seen it done by competent professionals working on software applications that my company has filed. When something is actually done, then it is clearly not impossible.<<<<

                10. I really don’t get why you comprise your integrity by continuing to put out false information to further your company’s and your agenda to weaken software patents.

                  What agenda? My company owns software patents. My company asserts software patents. What reason could we possibly have to weaken software patents? Your narrative makes no sense.

                  You are inventing your accusations out of your own fevered imagination. Your narrative is nothing but a pastiche of calumny woven from a tissue of delusion. You would do better to pause and research before tossing around accusations that merely embarrass you when—inevitably—it is shown that you do not know anything about the subjects on which you insist on opining.

                11. Greg, if you aren’t making this stuff up to push an agenda, then I guess you have organic brain injuries.

                12. [I]f you aren’t making this stuff up to push an agenda, then I guess you have organic brain injuries.

                  Sure, fair enough. The question of whether or not I have suffered a brain injury is the sort of question that any reader here can fairly answer simply by reading my work, without knowing anything else about me.

                  The assertion that I am “bought,” however, requires information about me that you could not possibly know. Making that sort of accusation—obviously without adequate factual basis to predicate the assertion—is what torches your credibility around these parts. I am trying to save you from further making an @$$ of yourself.

                13. I am trying to save you from further making an @$$ of yourself.

                  Maybe spend that energy saving yourself first there, Greg.

            2. 4.3.1.1.2.2

              What…?

              Wt recognizing the swine and deciding against throwing his pearls…?

            3. 4.3.1.1.2.3

              “I don’t think you appreciate that ambiguity in the law creates MORE work for me — not less.”

              You should tell NW about how profitable Alice has been for your practice.

              1. 4.3.1.1.2.3.1

                Ben,

                let’s not see you employ the Malcom Mooney practice of throwing everyone into a single bucket.

              2. 4.3.1.1.2.3.2

                You should tell NW about how profitable Alice has been for your practice.
                I take it you don’t understand the law profession and the ethics associated therewith.

                I (and I’m sure NW as well) have applications at the USPTO that would have been allowed a long time ago but for Alice. These applications are making me money — but conversely, are costing my clients money. Ethically, I still want Alice “fixed” — even if it will reduce my workload — because that is what is best for my client (and for the patent system as a whole).

                1. More pearls, Wt – Ben is not the first examiner to accuse practitioners of abusing the system in order to “make money” – without a clue as to the existence of Rules of Ethics that we attorneys must abide by.

                2. Ben – wake the F up.

                  Try: These applications are making me money — but conversely, are costing my clients money.

                  Try also to understand that attorneys are NOT ‘freewheeling businessmen’ when it comes to the money we make.

                  You seem unwilling to recognize a critical context – on a topic that you deign to impugn those involved with.

                  That is beyond plain error, beyond egregious error, and is knowingly engaging in false statements to impugn an entire industry. What’s worse is that you seem oblivious to the detriment to YOUR credibility that you persistence along this line of attack causes.

                3. And yet no actual assertion that Alice was a net positive impact on your income?
                  Are you daft? Although it should have been painfully obvious from my comments, I can state unequivocally that Alice has had a net positive impact on my income.

                  Bad examination at the USPTO has also had a net positive impact on my income. A substantial portion of the allowances I get from the USPTO include claims that were never amended yet were initially rejected.

                4. “Although it should have been painfully obvious from my comments”

                  Do you really not see how your statement is entirely compatible with Alice being a net negative for your business? Just because some applications are generating more revenue does not mean the overall picture is improved. I know it’s a work requirement to use weasle language and then declare it to be perfectly clear, but you don’t have to engage in that here.

                5. Wow – Ben refusing to wake up and unclench his eyes, asking someone else to ignore everything and only see what Ben wants to see…

                  Do you really not see how your statement is entirely compatible with Alice being a net negative for your business?

                  Asked, answered, and your point has been refuted, Ben.

              3. 4.3.1.1.2.3.3

                In my practice Alice has had a net negative effect on income. Some of my clients have stopped filing patent applications when they think it will go to a 3600 AU.

                Others have abandoned en mass applications that are rejected under 101.

                And–frankly–it takes me more time to fight off 101 rejections and often I work under a fixed fee. The 101 rejections are time consuming and just strange. Typically they involve long conversations with examiners and ridiculous amendments and arguments.

                Alice is a plague on the system.

                1. Certainly, clients may be suffering.

                  And certainly, innovation may be suffering.

                  But like Wt, my personal business has not suffered at all.

              4. 4.3.1.1.2.3.4

                Further bad examination costs me money.

                I’ve always worked at the top shelf firms and we get a premium for prosecution. But when examiners allow junk then it just makes it so there is no differentiator.

                Frankly, the better you are at prosecution, the more advantages to you when the examination is good.

                1. I hear you here — and this reverberates against the screed of the anti’s like Malcolm Mooney and the various examiners in that many practitioners (and most all good ones) want good examination.

                  Not everything clients want are gems, and it is only tougher for us to help the client separate the wheat from the chaff when the examination is plainly bad.

                  With good examination, it is simply easier to have any of those conversations on abandonment.

                  It just does not fit the narrative that the anti’s want: that patents are just bad, and anyone wanting patents must be bad (or greedy, or both).

      2. 4.3.2

        Ben, I think you and “Wandering through” at 4 above are talking about two different things that should be distinguished: allowable functional claiming in general, vis a vis a claim to the subject desired end result with no inventive limitations or distinctions thus preemptively claiming any and every future invention for achieving that desired end result.

        1. 4.3.2.1

          vis a vis a claim to the subject desired end result with no inventive limitations or distinctions thus preemptively claiming any and every future invention for achieving that desired end result
          If that is what Ben is referring to, then he is discussing something I have never seen outside of the chemical/biotech arts (in which I do not practice) — and I have seen thousands of claim sets in my career.

        2. 4.3.2.2

          “a claim to the subject desired end result with no inventive limitations or distinctions”

          I hesitate to frame it as such because the patent extremists here earnestly believe that “silicon configured to [result]” is not a claim to a result.

      3. 4.3.3

        I suspect eventually the reins will be taken from the patent attorneys, and the law will recognize that “something which achieves this thing I want to achieve” as ne[i]ther “sufficiently pointing out” nor “distinct.”

        There are two points along the way at which the “reins” might be taken, and I think that it is worth distinguishing between the two.

        1) At the USPTO, I think that it is mostly fair to infer future from past. The USPTO will continue (mostly) to conduct prosecution on the same lines and grant allowances at the same rates as historically common, because this is what the USPTO’s masters (Congress, White House, courts, and ratepayers, not necessarily in that order at any given moment) will allow.

        2) In the courts, when patents are enforced, it is already the case that the reins get taken away from those who would use functional claim language to capture any “something which achieves this thing I want to achieve.” This is not a matter of “eventually.” This is happening already, as should be evident to anyone who has been keeping abreast of CAFC decisions over the last 10 years. Any defendant facing such clams who does not argue for: (1) judgment on the pleadings of §101 invalidity; and—if (1) fails—(2) a narrow §112(f) construction under Williamson v. Citrix, has no one to blame but themselves if they are held liable for infringement of such claims.

    4. 4.4

      Wandering through: “where is the statutory requirement that any invention has to improve anything to be patentable?”
      35 usc 101: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”
      If an inventor has not invented a new process, he/she is required to have invented a useful improvement of a process. That’s patent law 101. So it’s pretty well grounded in the wording of the statute.

      1. 4.4.1

        Do you notice the “or” that began your bolded statement. Hence, it is NOT a requirement. If the patent issues, it is presumed to be both novel and non-obviousness. Consequently, it is “new.” Since lack of utility is exceptionally rare, once an invention meets 102/103, it doesn’t have to be an improvement — i.e., an improvement is not a requirement for patentability under 35 USC 101.

        1. 4.4.1.1

          I had the same thought: the “or” is a permissive and opens even wider the front gates of 101.

    5. 4.5

      I believe the “improvement to computer functionality” originally came from a case (can’t remember which one) where the actual computer system’s operation was improved. This will rarely be the case for the vast majority of applications that use a “computer”.

      I agree with you, though, that this language is not helpful.

      As to the original “functional” claiming, aren’t all claims performed by a computer system functional? And I perceive this to be an issue that really needs to be resolved by Congress.

      Consider a memory controller. A modern memory controller can have hundreds or thousands of gates. There is no way to claim the actual controller, so you have to claim it functionally. Why is that wrong?

      FYI, here’s one claim from US patent #9,537,762:

      1. A method of routing communications in a system in which a first participant identifier is associated with a first participant registered with the system and wherein a second participant identifier is associated with a second participant, the first participant being associated with a first participant device operable to establish a communication using the system to a second participant device associated with the second participant, the system comprising at least one processor operably configured to execute program code stored in at least one memory, the method comprising: in response to the first participant device initiating the communication to the second participant device, receiving the first participant identifier and the second participant identifier from the first participant device; using the first participant identifier to locate, via the at least one processor, a first participant profile from among a plurality of participant profiles that are stored in a database, the first participant profile comprising one or more attributes associated with the first participant; processing the second participant identifier, via the at least one processor, based on at least one of the one or more attributes from the first participant profile, to produce a new second participant identifier; classifying the communication, via the at least one processor, using the new second participant identifier, as a first network communication if a first network classification criterion is met and as a second network communication if a second network classification criterion is met; when the first network classification criterion is met, producing, via the at least one processor, a first network routing message, the first network routing message identifying an address in the system, the address being associated with the second participant device; and when the second network classification criterion is met, producing, via the at least one processor, a second network routing message, the second network routing message identifying an address associated with a gateway to a network external to the system, wherein the second network classification criterion is met if the second participant is not registered with the system.

      1. 4.5.1

        As to the original “functional” claiming, aren’t all claims performed by a computer system functional?
        Essentially correct. Also, all process claims are essentially functional. In a process claim, the structure itself isn’t being claimed. Rather, what is being claimed is the combination of steps (i.e., the functions).

        1. 4.5.1.1

          “As to the original “functional” claiming, aren’t all claims performed by a computer system functional?
          Essentially correct. Also, all process claims are essentially functional. In a process claim, the structure itself isn’t being claimed. Rather, what is being claimed is the combination of steps (i.e., the functions).”

          Yes, but, confusingly, that’s not what the court is referring to when they describe something as being “functionally claimed”. Specifically, rather than a series of steps or functions as are in any method claim, they’re referring to a claim that recites the *result* of an operation – its *function* – rather than the steps to achieve it. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598F.3d 1336, 1349 (Fed. Cir. 2010) (en banc) (discussing the problem of functional claims defining a genus that “simply claim a desired result . . . without describing species that achieve that result”); Elec. Power Grp., LLC v. Alstom S.A.,
          830 F.3d 1350, 1351 (Fed. Cir. 2016) (observing that “the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1327 (Fed. Cir. 2016) (Mayer, J., concurring) (stating, “[s]oftware patents typically… describe, in intentionally vague and broad language, a particular goal or objective [of the software]”). See also the USPTO’s January 9, 2019 §112 guidance (stating “Problems with functional claiming, i.e., when a claim is purely functional in nature rather than reciting with any specificity how the claimed function is achieved, can be effectively addressed using long-standing, well-understood principles under 35 U.S.C § 112.”)

          So, yeah, it’s a confusing term, particularly for engineers who are used to mathematical functions. But they’re referring to claiming the functional result, rather than the implementation steps.

          1. 4.5.1.1.1

            Ariad was obviously a biotech/chem claim. Electric Power recited a computer system including a monitor computer, a database, and a display computer — not a method.

            Also, any citation to Mayer is suspect to begin with. He would invalidate ALL software patents.

            Regardless, when someone refers generically to claims that are “purely functional in nature,” I want them to point out real examples. The decisions by the Federal Circuit are rife with gross misrepresentations of the inventions being claimed. It really is a joke.

            1. 4.5.1.1.1.1

              + 1 (for certain)

            2. 4.5.1.1.1.2

              This is merely the “gift” of the Supreme Court with its “Gist/Abstract” sword:

              rife with gross misrepresentations of the inventions being claimed.

              Certainly blame the CFAC. But do NOT stop there as Supreme responsibility lies with the Supreme Court.

      2. 4.5.2

        To a large extent, your focus misses the point.

        Even though computing innovation does draw attention to the aspects, claims using terms of function well precede computing innovation.

        Your path risks getting lost in the dust storm kicked up by those who don’t want protection for the sort of innovation that is indicative of the Kondratiev Fifth Wave.

    6. 4.6

      “Whether the claimed steps are “generalized” are immaterial to patentability.”

      Counterpoint: Morse’s claim to any use of electromagnetism, whether described in the disclosure or not. It’s tough to get more generalized than that claim, but it’s also tough to get less patentable. 😉

      1. 4.6.1

        Counter-counterpoint:

        Let’s distinguish between patentable and patent-eligible.

        The Means really do matter as to any Ends achieved.

      2. 4.6.2

        Counterpoint: Morse’s claim to any use of electromagnetism, whether described in the disclosure or not. It’s tough to get more generalized than that claim, but it’s also tough to get less patentable.
        I took another look at that claim before I wrote my comment. Aside from that decision being more about enablement than one about patent eligibility, claims like that don’t exist in the wild anymore.

        Claim 1 of US patent #9,537,762 was reproduced in Comment 4.5 — it looks nothing like Morse’s claim that was invalidated.

  6. 3

    Remember when some hysterical chicken little types shrieked that first KSR and then Mayo were going to “destroy” the patent system and turn the US into an innovation backwater and/or return the country to the “Iron Age”?

    I do.

    I also remember pointing out how ludicrous a proposition that was in real time, for over a decade.

    Let’s talk about the “true” “tech” people here and their love for robotaxis (they’ll be everywhere by 2020!). Because they (and only they) totally understand innovation and “how it works” lol.

    1. 3.1

      You seem to want to do that “anyone not believing how I believe is in one bucket” thing again.

      It wasn’t a great position to stake out before your “sabbatical.”

      It still is not.

  7. 2

    I remember Eugene Volokh observing that the SCotUS—having once made an error—will frequently introduce a compensatory error into the law to ameliorate the harm of its first error, but will rarely just go back and correct the first mistake. He gave several examples, of which I only remember one: having essentially enervated the “privileges & immunities” clause in the Slaughterhouse cases, the Court spent the next half century inventing a “substantive due process” jurisprudence to do the same work that—textually—p&i was intended to do. The end result is that the law works as intended, but in a much more complicated and intuitively intelligible fashion than one might have hoped or expected.

    I think of Prof. Volokh’s observation when reading the petition’s argument that “any problems with functional claim limitations should be dealt with under §112 rather than §101.” No doubt this is true, and in a better world Justice Breyer would have grounded Mayo in §112 instead of §101. That is all so much water under the bridge by now, however.

    Little as I like it, Mayo/Alice have put down roots. It would no longer be either desirable or possible for the SCotUS to correct this mistake by this point. The only way that this mistake should be corrected by now is via a Congressional emendation to Title 35. Until that happens, we lawyers should simply adapt our arguments to meet the law as it now is, rather than how it was before the deformation worked by Mayo/Alice.

    1. 2.1

      Whoops, “… much more complicated and intuitively unintelligible fashion…” Sorry for the confusion there.

    2. 2.2

      They do reverse themselves or cabin an opinion once in a while.

      My hope with Alice/Mayo is that the Scotus will take a case, which I predict they will within the year, and cabin Alice/Mayo.

      1. 2.2.1

        They do reverse themselves or cabin an opinion once in a while.

        Sure. Diehr would be one such example. On the other hand, the fact that the Court essentially undid Diehr in Mayo rather lessens the value of that example. One way or another, it is more an exception than the rule for the SCOTUS to acknowledge that it made a mistake.

      2. 2.2.2

        For the good of American innovation, I hope you’re correct Night.

        Most of the damage from Alice / Mayo is due to the anti-patent subset cabal at the CAFC who blew off the cabin door SCOTUS had in place.

        1. 2.2.2.1

          For the good of American innovation…

          Alice grinds down patents owned by foreigners the same as patents owned by Americans. There is nothing about a change to subject matter eligibility law that will uniquely affect American innovators.

          1. 2.2.2.1.1

            That’s only a half truth Greg.

            While the truth part is that the US Sovereign provides applicants to be persons of any nation, the BOTTOM LINE aspect is that patent law is and remains Sovereign Law, and the protections are within the Sovereign – PLUS for those that are NOT Big Corp (read that as the small time inventors), the proximity in – and within – a particular Sovereign IS a huge deal, and thus there ARE Sovereign effects that you – in your Big Pharma Shill mode – attempt to denigrate.

          2. 2.2.2.1.2

            Each year since 2007 has seen more new U.S. patent grants to foreign entities than to U.S. entities. It follows, therefore, that any change in law that benefits patentees is actually doing more for the benefit of foreign innovators than for U.S. innovators.

            1. 2.2.2.1.2.1

              … more half truths.

    3. 2.3

      I also think it is a huge mistake to view Alice/Mayo as the solely the result of the Scotus. The CAFC could cabin these opinions and force cert. But they have not. The CAFC has maximized the effects of Alice/Mayo to the detriment of patent law.

      The fact is that the primary enemy of the patent system is the CAFC and the stacked court that Obama appointed.

      1. 2.3.1

        I also think it is a huge mistake to view Alice/Mayo as the solely the result of the Scotus. The CAFC could cabin these opinions and force cert.

        The cossacks work for the Czar. The CAFC does what it does because that is what the SCOTUS wants the CAFC to do. The CAFC is giving us the best eligibility law possible in view of this SCOTUS.

        1. 2.3.1.1

          With respect to the CAFC doing what “this SCOTUS” wants, perhaps the best way to attack these decisions would be frame them as attacks on the sincere religious beliefs of the oh-so-precious patent owners around whom the Constitution was so plainly conceived.

          Not a new strategy, by the way. Also, it can be spun the other way (that the divine right belongs to defendants in patent suits) far more easily. But that doesn’t mean it shouldn’t be tried! It would be among the better arguments for over-turning Mayo (which will never happen).

        2. 2.3.1.2

          A hit and a miss…

          Hit:

          The cossacks work for the Czar. The CAFC does what it does because that is what the SCOTUS wants the CAFC to do.

          Or, as I have more colorfully put it: the Simians in the cage have been trained with a firehose.

          Miss:

          The CAFC is giving us the best eligibility law possible in view of this SCOTUS.

          This is nowhere close to being true.

          1. 2.3.1.2.1

            “This is nowhere close to being true.”

            Not. Even. Close.

    4. 2.4

      Greg, maybe if you tried once to explain the facts in Mayo to everyone here, and then explain what is wrong with the decision as it applies to the facts, you’d have a point that went beyond a misplaced whine.

      Mayo is never going to be overturned because because it’s only a tiny number of the worst attorneys and most entitled boors on the planet who find anything wrong with the decision (which was predicted in real time).

      Put another way: why would any normal reasonable person believe that it’s a good idea to let other people monopolizes methods of thinking about the meaning of data obtained using prior art methods? Good luck, Greg. 😉

      1. 2.4.1

        ^^^ gee, let’s just pretend there is no Gordian Knot of contradictory Supreme Court jurisprudence on 101 (as has been noted by high ranking members of every branch of the US Government).

    5. 2.5

      If Alice were used properly, as a threshold inquiry for obviousness and / or written description problems, in a defined, adversarial procedure (such as an expanded Markman it could be salvaged, but not before clarity that 101 abstraction must be intrinsic to an invention while Alice abstraction is extrinsic to the state of the art.

      Abstract MUST be defined. It means the drawing of meaning from information. Only humans may host meanings.

      The present invention? Is it a method? Yes Does the method have a result other than information? No. Which entity gains immediate utility by use of the information? The router, a non-human actor. The method should be eligible.

      On the other hand, the insight that you can identify something by its name is so banal, so obvious, that to use a full-blown section 112 defense seems like a criminal taking of money. A compact procedure to blow this patent out of existence IS still required.

      1. 2.5.1

        A single version of “abstract” has not been bothered to have been defined by the Supreme Court, and you continue to want to use TWO (untethered) versions….

  8. 1

    Remember when it was pointed out that the ridiculous legal “maxim” that “eligibility failures should be rare” could only be non-ridiculous for as long as the assertion of claims with severe eligibility issues remained rare?

    I do.

    I also remember that some alleged attorneys (lol) commenting here seemed to have difficulty understanding the concept. How does logic work? Such a troubled profession and an even more troubled field within the profession. Maybe a brave tenured professor will research it someday.

    1. 1.1

      Hi Malcolm. What were you up to in your year off?

      (that was rhetorical)

      But any time that YOU lead in with a “remember when,” it begs the question if YOU are also going to do any remembering yourself.

      So far, since your (somewhat sparse) return, you have shown no proclivity for that at all.

    2. 1.2

      I remember SCOTUS itself famously acknowledging “The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to ‘include anything under the sun that is made by man.'”

      1. 1.2.1

        I guess that is why Alice focuses on “abstract” as in it wasn’t really made and Mayo focuses on an existing science that is already there so it wasn’t really made.

        But that is interesting what you said. It makes me think that is why they didn’t try to use 112 as it would then be an admission that it was “made by man.”

        1. 1.2.1.1

          When I see the phrase “wasn’t really,” what is called to mind is a claim that cannot be infringed.

          Because if a claim can be infringed, then something must be ‘really.’

      2. 1.2.2

        The Sup. Ct. decision you are referencing is Chakrabarty. But as repeatedly noted, Chakrabarty, immediately after its everything under the sun made by man sentence, notes the long-established judicial unpatentability exceptions to that statement [or literal 101 language]. They are repeated in Bilski as follows:
        “The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: laws of nature, physical phenomena, and abstract ideas. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.” Bilski v. Kappos, 561 U.S. 593, 601–02 (2010).

        1. 1.2.2.1

          And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.

          You DO realize the blatant error in that statement, right Paul?

          Congress had reacted to the over-reaching Supreme Court and its “the only valid patent is one that has not yet appeared before us” with its withdrawal from the Supremes of the ability to ‘define’ invention (since the Court was NOT doing so) in the Act of 1952.

          That Act nullified any judicial stare decisis at that point.

          Any “150 years” could only start anew at that point, and last I checked, it is not 2102 yet.

          1. 1.2.2.1.1

            Do you, or anyone else here, tell clients to ignore direct quotes from fairly recent Supreme Court decisions on the basis that in your personal opinion they are wrong?

            1. 1.2.2.1.1.1

              I tell no one to ignore direct quotes.

              I DO – as I did here – put context to direct quotes.

              Do you actually disagree with the facts of my reply? Which ones? Or is this one of those items that fall into your “snide comments from the sidelines” types of exchanges?

              You are aware (or should be) that the Supreme Court is NOT infallible. The first step (ever) in overturning incorrect decisions is challenging those decisions.

              What state are you barred in, Paul? I am curious as to whether your state oath places the Supreme Court above the Constitution. In mine, my duty does NOT place the Supreme Court above the Constitution, so I DO have an ethical duty (that you seem to want to denigrate here).

            2. 1.2.2.1.1.2

              … and that’s what I thought – run away Paul.

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