Jury Verdict on the Factual Underpinnings of Eligibility

by Dennis Crouch

Infernal Tech LLC v. Sony Interactive Entertainment LLC (E.D.Tex. 2021)

Today’s jury verdict in E.D. Tex. favored the accused infringer Sony.  The patentee alleged that Sony’s Spider-Man and God of War games infringed its U.S. Patent Nos. 6,362,822 (claim 1) and 7,061,488 (claims 1, 27, and 50.  The jury found, however, that neither game infringed.


The more interesting part of the jury verdict was Question 2 where Judge Gilstrap asked the jury to opine on the factual underpinnings of Alice Step 2. In particular, the jury was asked whether Sony had proven “by clear and convincing evidence that the Asserted Claims only involve technologies and activities that were well-understood, routine, and conventional, from the perspective of a person of ordinary skill in the art, as of [the Filing Date].”   The jury sided with the defendant and answered “yes.”  The case will next go through some post-verdict motion practice (JNOV/New-Trial) and then will likely be appealed. However, barring some claim construction problem it will be difficult to overcome this non-infringement decision on appeal.

Claim 1 of the ”822:  A shadow rendering method for use in a computer system, the method comprising the steps of:

providing observer data of a simulated multi-dimensional scene;

providing lighting data associated with a plurality of simulated light sources arranged to illuminate said scene, said lighting data including light image data;

for each of said plurality of light sources, comparing at least a portion of said observer data with at least a portion of said lighting data to determine if a modeled point within said scene is illuminated by said light source and storing at least a portion of said light image data associated with said point and said light source in a light accumulation buffer; and

then combining at least a portion of said light accumulation buffer with said observer data; and

displaying resulting image data to a computer screen.

The plaintiffs in the case are represented by Buether Joe LLP out of Dallas and the Defendants by Erise IP out of Kansas City. 

39 thoughts on “Jury Verdict on the Factual Underpinnings of Eligibility

  1. 8

    “There was NO implied acceptance of carnage from the Right.”

    And I maintain that your statement was a “what about-ism” that specifically set forth that there was allegedly more carnage from the left than the right (for which no context or evidence was presented), which implied that you were okay with right wing carnage or it was somehow less worse than violence from the left.

    “There was NO implied acceptance of carnage from the Right.”

    Yet condemnation from you of the carnage from the Right is nowhere to be found in your post. Can’t you simply agree that authoritarian regimes are violent, brutal regimes, be they “left” or “right”, and are never for anything but the continued power of those at the top? Is that too hard for you?

    “Instead, your response is typical of those on the left”

    And that is your typical, immature response to anyone who disagrees with you. You can call yourself a centrist but your comments here and elsewhere are evidence that you are well right of center, and you are not allowed to be your own lexicographer when it comes to defining what it means to be a “centrist.”

    “the mere fact that I am against the Liberal Left simply does not make me into a Right Wing person.”

    Yet you constantly say “your response is typical of those on the left” or “THAT view is a major problem of the Liberal Left.” You don’t get to judge who is on the left or the right and then not be subject to being defined yourself.

    “It is telling that while you do seem to at least want to admit that authoritarianism is bad”

    “seem”? “at least want to”? A failed attempt on your part to mischaracterize what I said. What is not absolutely unequivocal about “Let’s just agree that authoritarian regimes are violent, brutal regimes. They are never for anything but the continued power of those at the top”?

    ” you have absolutely zero desire to even look at the current administration”
    Oh, you’re a mind reader You know what my desires are? You know for a fact that I have absolutely no criticism of the Biden Administration? Your response is typical of those who engage in self-righteous, judgement of others.

    It is actually very telling that you want to sweep Trump under the rug as if he and his minions are no longer a spreading cancer on America’s body politic.

    1. 8.1

      So many misconceptions on your point here (substantially, thinking that drawing attention to the foibles of Biden can be met with a comparison to the foibles of Trump – with your quite evident assumption that I am Pro-Trump (I am not)).

      Granted, this thread has become long in the tooth, so we may pick this up again on a more current thread.

  2. 7

    The reaction to WT’s Comment #1 is for me (in Europe) very interesting. Why don’t those drafting in the USA set the inventive concept in the context of a problem addressed by the inventor and solved by the claimed invention? After all, everywhere else in the world, that’s what you do if you want your patent application to succeeed. If you don’t do it, you are setting yourself up to fail.

    Where does the idea come from, that in the USA, if you write about the problem addressed and solved,you make it more likely that your application will fail?

    Perhaps the reason is all tied up with strange thinking on eligibility: that if your claim involves well-understood technologies is is liable to be found ineligible?

    I hope to get responses as interesting as WT got for his Comment # 1.

    1. 7.1

      Two different drivers through similar mechanism of Court generated patent profanity.

      The ‘thinning out’ of specifications vis a vis NOT including more discussion of the state of the art is in relation to the courts hyper-empowering Persons Having Ordinary Skill In The Art (the trailing edge of the sword fashioned by the courts in trying to reduce the patent incentive).

      This was in play and quite separate from any eligibility muckery.

      1. 7.1.1

        First, anon, I say Thank You for offering an answer to my question.

        Second, however, is that I regret that I don’t understand your explanation, why drafters in the USA (otherwise than everywhere else in the world) choose NOT to set the claimed subject matter in the context of the relevant prior art.

        Your reason is that the courts in the USA excessively “empower” the PHOSITA. OK, but what with, exactly?

        Not just in the USA but also everywhere else in the world the PHOSITA is deemed to know all the prior art and to be possessed of a standard level of background general knowledge, education, qualifications and experience. So what empowerment beyond that do the courts of the USA bestow on their notional PHOSITA? Is it perhaps hindsight, the ability to perform ex post facto analysis?

        Can you perhaps be less cryptic, less opaque, more specific?


          It’s rather not a matter of being cryptic or opaque — The court induced patent profanity in the realms of obviousness have caused US drafters to leverage the positions taken by the courts and the concurrent lower need to ‘share’ that which PHOSITA is taken as already knowing.

          In specific answer to the post of BobM below, BobM wanted for his convenience that which need no longer be present in US applications.

          Courts have used such story telling against the interests of would be patent holders. It is only ‘common sense’ then to not include that which need not be included when the court is apt to punish you for it.

          The ‘punishment’ though is distinguishable from your notion of this being related to eligibility concerns. This thinning out of specifications simply traces back earlier in time to the different setting out of patent profanity.

          And yes, my comments are in view of US courts — and are not made in view of any Sovereign to Sovereign comparison (if that is the source of what you think to be “cryptic,” than your viewpoint is what is off, and there is nothing to help you).


            OK, anon, you remind me of the standard police “caution” used in England when arresting somebody “You are not obliged to say anything, but anything you do say will be taken down and may be used in evidence against you”. It’s mainly the seasoned criminals that steadfastly say nothing, isn’t it?

            So what is a poor patent drafter to do? Set the invention in the context of the background art and risk its being seized upon by those pursuing an action for invalidity? Or refrain from telling any story, from writing anything about the background from which the invention emerged, and risk the PTO and the courts simply not grasping that the invention addressed a real technical problem and that the inventor really did solve it inventively.

            Everybody knows the Kahneman “Thinking Fast, Thinking Slow” book but fewer know the book by Jonathan Haidt which builds on it, with the Elephant/Mahout analogy (in his book “The Righteous Mind”) which is strongly relevant to patent prosecution. In short, if the fast-thinking part of the mind of a PTO Examiner forms an initial view that what is claimed is obvious, it is formidably difficult to displace that initial judgement. No amount of work by the slow and logical thinking mind (the rider) can shift the direction of travel of the fast mind of the “rogue elephant”, once ithe instant judgement of its intuition has set it charging; in the wrong direction.

            There have been learned Papers written about the applicability of the Haidt research to the skill-set of an advocate. So, might it perhaps be more effective today, and much cheaper, for patent drafters to worry less about the temporary problem of “patent profanity” and more about the age-old wisdom of giving the Examiner a satisfying read, in the specification of the application as filed?


              I am not the one setting the pace for patent profanity – and its effect is quite different than the prosecution side (your analogy falls a bit short as I routinely overcome examiner positions, as Examiners have far less power than judges and their feelings simply count for diddly against well reasoned legal arguments).

              I certainly aim for telling a compelling story in my applications – but one can adapt and do so without reference to the work of others.


            That lack of “convenience” meant I spent 10+ hours more responding to that action than I would have, had the proper background been there.

            We write our applications to also address concerns in other countries, notably the EPO, so we include some background. The amount depends on the client.

            I’m personally FOR providing background, especially now considering Alice’s technical solution for technical problems. Assuming that maintains any relevance, that is, after the spate of incomprehensible recent Alice decisions, many of which seem to have jettisoned this line of reasoning.

  3. 6

    Ask the wrong question . . . and you’ll get the wrong answer.

    These claims easily passed the Alice analysis.


    1. 4.1

      at about 2:10 – the immediate effect (and prior to any decision on the merits) of a very important stick in the bundle or property rights that has been taken without recompense of any kind: the existence and level of the presumption of validity.

  4. 3

    OT but important, the patent litigation report on Gene’s blog says that in the last quarter “patent [suit] filings spiking to 121 (roughly double average, driven entirely by a huge 48-complaint dump by IP Edge subsidiaries).” In other words, 40% of all new U.S. patent suits were by the shell corporation subsidiaries of just one of the several active well funded PAEs [patent assertion entities who’s sole business is litigating acquired patents and which does not invent, make or sell any products]. At this rate it seems likely that PAEs may soon account for more half of all U.S. patent suits, if not already?

    1. 3.1

      Rah rah rah.

      If this were subject to “Fact Checkers,” Paul’s post would be stamped with a Missing Context and Likely To Mislead.

      Or do we want to simply forget the targeted legislation aimed at expanding the number of suits in such instances with the required “must be filed separately” gimmick?

      But we got to keep up on the “Oh N0es Tr011s” propaganda wagon, eh?

  5. 2

    Was the jury asked whether Defendant had proved by clear and convincing evidence that any claim was NOT directed to “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”? And was the jury instructed “The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material” under 35 USC 100(b)?

    If not, the “abstract idea” judicial exception has usurped the statute entirely. This is not what SCOTUS intended in Alice.

  6. 1

    only involve technologies and activities that were well-understood, routine, and conventional, from the perspective of a person of ordinary skill in the art
    That is merely a finding that the individual elements were known in the art — big surprise, nearly every invention involves technology well-known in the art (see FN5 of DDR Holdings). That isn’t enough for obviousness under 103 or patent-ineligible subject matter under 101. That is a poorly written question.

    1. 1.1

      …legal error (claim as a whole, claim as ordered combination)…
      See Berkheimer…

      Or is this just more of the Ends justify the Means?

    2. 1.2

      Good point wandering. This is sounding like a variation of the 103 hindsight analysis.

      Inventors don’t conjure. We synthesize and assemble stuff to solve problems.

      It seems that the courts want us to use magic. If don’t explain it we lose on 112. If we explain it we lose on 101 or 103.

      How do we escape this conundrum?

      1. 1.2.1

        We synthesize and assemble stuff to solve problems.
        I agree 100%. Inventors are problem solvers. As an aside, ever since KSR, there has been a certain set of patent attorneys who have been reluctant to discuss the problem being solved in a patent application. However, I think it is important to the story being told in a patent application to explain what problem was being addressed by the inventor and then explaining how the inventor ended up addressing that problem.

        With this in mind, I haven’t been to the stage in a patent litigation in which the questions to the jury are crafted. I suspect there was some negotiation/arguments over what questions were presented to the jury. With this in mind, I don’t whether plaintiffs agreed to the wording of that question or not. Again, it is a factual finding that does not necessarily lead to a legal conclusion of patent-ineligible subject matter or obviousness. Perhaps plaintiffs agreed to it as a kind of trap? I just don’t know.

        Gilstrap (obviously) is very experienced with running a patent trial. The important issue is how he uses that particular factual finding. As alluded by Anon, whether the combination and individual elements are well-understood, routine, and conventional is dispositive under step two of Alice/Mayo. If there are no findings on the combination, then you cannot invalidate (although that really never stopped anybody) — factual findings only matter when the judge decides that they matter.


          Discussing the problem being solved and how you solve it is also important in many other countries, such as the EPO.

          And I don’t know if you were around when the backlash against KSR came about, but I would get applications filed elsewhere with zero background. The specification just jumped into the invention.

          Had one with pages of 112 rejections, the vast majority of those because the Examiner had no idea what was going on. Neither did I, until I spent 6+ hours figuring out what the background was, finding suitable references to illustrate this, and then delving into the specifics of the actual claim language and invention. Easily a 15 hour response, all because no one discussed the background.

          I used to think that KSR wasn’t that bad of an opinion, but I get too many rejections where the Examiner finds a search term in a reference and combines it with another reference, without any regard whatsoever as to whether anyone would actually do this. And they seem very hard to overcome.


          “ Perhaps plaintiffs agreed to it as a kind of trap? ”


          Perhaps they answered direct questions honestly and the admissions were lethal to their worthless claims.


          Please Wandering stop trying to act like an attorney where there are laws and such. We live now in a world where the Marxists tell us what is “patent worthy” based on their feelings. /sarcasm off


            Put us in contact with such Marxists. They at least sound interesting.


                While I “get” your thrust, Night Writer, you are opening yourself up to some of the small-minded sniping because in part you are not using the most correct terminology.

                “Marxism” has been supplanted by the term Neo-Liberalism (due in no small part to the abject f a ilure of the philosophy to work in real world settings).

                I do note that you are not alone in preference for that term.

                1. anon, the movement is a neo-Marxist movement. We see that in many of the statements made on this blog and it is also being exploited by the anti-patent judicial activists to push for the open commons.

                  The far left is the enemy of the liberal D left.

                2. Like I said, I hear you.

                  Like I also said, you are not using the correct terminology. No one says “Neo-Marxist.” The term is “Neo-Liberal.”

                  The move away from the “Marx” label was deliberate.

                3. anon, do you think I don’t know that?

                  Neo-Liberal is not an accurate term and many people are starting to say neo-Marxist, which is accurate and accurately indicates the threat these people pose.


                Some rightist folks here are still upset that people are still referring to them as white supremacists instead of their preferred ‘white nationalist’ which is still just a na zi by any other name.

                1. Authoritarianism is NOT the sole providence of the Right Wing.

                  Quite in fact, there has been more carnage from Left Wing authoritarianism then the more pronounced “N A Z I” effect since the beginning of the 1900’s.

                2. How much carnage from Right Wing authoritarianism is acceptable to you?
                  According to The Center for Strategic and International Studies, between 1994 and 2020, there have been 335 deaths from right-wing extremists against 22 from left-wing ones. While 9/11 was the deadliest terrorist attack in American history (and committed by fundamentalist religious conservatives who are generally viewed as being far right), before that the record was held by the far right. Timothy McVeigh, the main perpetrator of the Oklahoma City bombing, was an anti-government extremist with ties to the militia movement who used to drive around to gun shows selling copies of The Turner Diaries (an explicitly genocidal white supremacist tract).
                  Throw in the political violence of Trumpism, the existential threat to the US in the here-and-now is coming from the Political Right.

                3. How much carnage from Right Wing authoritarianism is acceptable to you?

                  Wrong question.

                  Your question presumes a strawman – that carnage may be acceptable IF it comes from a particular side.

                  No one has advanced such a view.

                  against 22 from left-wing ones

                  Another error in your views – you appear to be talking about some type of “lone gu nm an” view when I am talking more about State actors. – think Khmer Rouge, for example.

                  As to political dangers – Trump was a hack and showman – I am — and you should be — FAR more concerned about the CAREER politicians and the FAR more authoritarian actions of the current president.

                4. “Your question presumes a strawman – that carnage may be acceptable IF it comes from a particular side.”

                  Not at all, but your statement was a “what about-ism” that specifically set forth that there was allegedly more carnage from the left than the right (for which no context or evidence was presented), which implied that you were okay with right wing carnage or it was somehow less worse than violence from the left. Let’s just agree that authoritarian regimes are violent, brutal regimes. They are never for anything but the continued power of those at the top.

                  Trumpism basically emboldened right wing politicians to go full blown fascism here in the USA to the point where radicalism has made Republicans like Mitt Romney and Cindy McCain pariahs, where Republican politicians in the US House, Senate, and State Legislatures have been undermining confidence in the validity of US elections despite assurances from Republicans serving as Secretary of State in their various states (e.g., Georgia) to the contrary. Never in the last 60 years have white supremacists and the far right been so emboldened to the point where so many on the right believe violence is the answer to what has been sold to them as an invalid election. All the “Lone Gunman” add up. The Jan. 6th Capitol Insurrectionists were not lone gunmen. They were the army that followed Trump’s bidding as there are countless others who will still follow Trump’s bidding. The Republican Party has become the Party of Trump for the forseeable future, and numerous CAREER Republican politicians have accepted that and thrown in their lot with Trump while those who have called out Trump’s abuse of power (Cheney, Romney, Kinzinger, etc. on the Federal level) have become pariahs. Trump is the very type of charismatic leader at the root of any authoritarian regime, be it Nazism, Stalin-ism, Franco-ism, Peron-ism, Putin-ism, Lukashenko-ism and the like. You should be far less concerned about the current President than the former President, Trump, whose authoritarian nature did violent damage to the political fabric of this country – a violence you downplay. Trump may be a hack and a showman but he has a demonstrated ability to rally a mob and run roughshod over the Constitution. If he had had his way, he’d still be sitting in the Oval Office, despite having lost the 2020 election by about 8 million votes, and he hasn’t given up on it, if only to pardon himself. Putin and others like him around the world couldn’t have done a better job of undermining and corrupting the soul of the USA than Trump has.

                  You’re worried about Joe Biden being an authoritarian? You seriously need to lay off whatever it is that you’ve been smoking.

                  If you ignore or blind yourself to Trump and Trumpism, then you’re part of the problem. As long as you’re looking at things as “Left” or “Right,” then you’re part of the problem.

                5. Your response immediately attempting to dismiss a direct and on point comment as being some type of “what-aboutism” tells me more about your views than you may realize.

                  There was NO implied acceptance of carnage from the Right.


                  Instead, your response is typical of those on the left that cannot take responsibility for their own mess, cannot find any rational limit to their own views, and instead employ that which you eagerly accused me of (what-aboutism).

                  You want the focus to be on Trump (STILL) and cannot seem to see that Biden’s actual actions have been FAR more authoritarian. You want to accuse me of smoking something while you are in complete denial.

                  And no, I am certainly not a part of the problem as I do NOT hold Trump up as some aspirational symbol (did you bother reading what I wrote?). I did not vote for Trump, and the mere fact that I am against the Liberal Left simply does not make me into a Right Wing person. THAT view is a major problem of the Liberal Left. I have jokingly made comments as to such with asking people if they think Joe Rogan is Right Wing.

                  I am a bona fide centrist. I think for myself — on every issue. I criticize our schools for their biggest failure: the abandonment of teaching the ability to think critically (in favor of merely following dogma).

                  It is telling that while you do seem to at least want to admit that authoritarianism is bad, you have absolutely zero desire to even look at the current administration, and instead, are fixated on the bloviated media caricature of what Trump WAS.

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