Keys to Eligibility: Preemption, History, and Levels of Abstraction

by Dennis Crouch

The US Solicitor General has provided her input–arguing that the Supreme Court should grant American Axle’s petition and decide whether the claimed method of manufacturing a driveshaft is patent eligible. American Axle & Mfg., Inc. v. Neapco Holdings LLC, Docket No. 20-891 (Supreme Court 2022). [USDOJ Brief]

A decade ago, the Supreme Court decided Mayo v. Prometheus, 566 U.S. 66 (2012). Mayo broadened the scope of excluded “laws of nature” and established a two-step test for judging eligibility. The court followed-up two years later with Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), extending Mayo‘s holdings to abstract ideas and computer implemented inventions.  In the wake of these decisions, the USPTO substantially changed its practices as did the U.S. Courts.  Thousands of claims have been denied, cancelled, or invalidated, but those involved still experience “substantial uncertainty about the proper application of Section 101.”  In American Axle, the Federal Circuit reluctantly took the law a further step by finding abstract a method of manufacturing and calibrating a mechanical structure.  The USDOJ concludes that the claim at issue here is a “paradigmatic examples of the ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied.”

American Axle’s US Patent No. 7,774,911 claims a method of manufacturing an automobile driveshaft that operates with reduced vibration & noise.  The claims are particular directed to the use of a shaft liner that has been tuned to reduces multiple vibration modes (bending and shell mode vibrations).  Prior technology included a shaft liner, but not one tuned to multiple vibration modes.  So, the novel feature here is that the liner has been tuned to both resistively absorb shell mode vibrations and reactively absorb bending mode vibrations.

22. … tuning a mass and a stiffness of at least one liner … wherein the … liner is a tuned resistive absorber for attenuating shell mode vibrations and wherein the at least one liner is a tuned reactive absorber for attenuating bending mode vibrations.

The crux of the problem found by the Federal Circuit is that these novel features are claimed functionally–at a fairly high level of abstraction.  Rather than claiming the actual steps of tuning, the patentee has endeavored to claim all methods that achieve the claimed result. In some ways, this is like the claimed process in Diehr, but instead of using the Arrhenius equation the inventors here just use an unstated algorithm.

Broad claims like these have been typically dealt-with under the disclosure requirements–written description and enablement; as well as obviousness.  Under those doctrines, broad functional claims are permitted so long as the disclosure is sufficient and the prior art allows.   By shifting to eligibility the defense was able cut-off the broad claims straight away.  And importantly from a procedure perspective, was able to achieve this without worrying about the strictures of “evidence” or “fact finding” because eligibility is a question of law that rarely involves any underlying factual findings.

Substantial Uncertainty: The DOJ brief focuses on uncertainty created by Mayo/Alice framework, both at Step 1 and Step 2.

Clarification of both steps is especially important, both because a court’s step-two analysis often finally resolves the determination as to patenteligibility, and because the nature of the initial step-one screen logically depends in part on the inquiry that courts will apply at step two.

DOJ Brief.  The original petitioner brief focused on Alice Step 1 — asking what is the “appropriate standard for determining whether a patent claim is ‘directed to’ a patent-ineligible concept.”  The DOJ suggested that the court focus on both steps and ask more generally is it patent eligible?

Preemption: An overarching theme in patent eligibility jurisprudence has been the potential of handing-over exclusive rights  to fundamental aspects of human life and “building blocks” human ingenuity.  Avoiding improper preemption is the key goal.  But, the Alice/Mayo test does not use preemption in its decision process, and the Federal Circuit has found evidence of no preemption irrelevant to eligibility.  Rather, as the DOJ implies, preemption considerations should be fundamental to the eligibility analysis.

Levels of Abstraction: The role of patent attorneys has historically been to help inventors abstract-out their inventions to ensure that the claims cover sufficiently valuable scope.  What we know is that some abstraction is OK, too much is not.  The DOJ suggests that it would be helpful to have a bit more guidance.

Historic Exceptions: The court wrote in Bilski that these exceptions are historic and based upon longstanding precedent.  The suggestion is that they should be guided by the old precedent and not expanded further without congressional input.

Despite my earlier focus on results-based claiming, the DOJ Brief explains that the claims here go far enough in reciting:

a specific sequence of steps … taking a “hollow shaft”; “tuning” the “mass” and “stiffness” of a liner, which the district court construed to mean “controlling” the liner’s mass and stiffness “to match the relevant frequency or frequencies” of vibration of the shaft; and “inserting the” liner “into the shaft,” whereupon the liner acts as an “absorber” of two kinds of vibrations.

DOJ Brief.  These sequence of steps make the case look much more like Diamond v. Diehr than O’Reilly v. Morse.

Regarding Alice Step 2, the DOJ argues that “conventional claim elements” should not be disregarded.  Rather, the focus should continue to be on the claimed invention “as a whole.”

The petition asks a second question — whether eligibility is a question of law.  The DOJ suggests that this is a secondary question that can only be addressed once the general doctrine is established. “Answering the second question presented thus would be difficult while uncertainty about the substance of the Section 101 inquiry persists.”

139 thoughts on “Keys to Eligibility: Preemption, History, and Levels of Abstraction

  1. 14

    Reportedly, Neapco filed a supplemental brief responding to these Solicitor General arguments finally filed in the American Axle pending cert. Neapco reportedly argued inter alia that the Solicitor General’s recommended question was not even addressed by the Federal Circuit in its decision being appealed from. Because, the Federal Circuit panel majority explicitly addressed only the “natural-law” exception and remanded the “abstract” question back to the district court.
    Reportedly on the same day that Neapco filed its supplemental brief the Supreme Court announced it will consider the case on June 23, 2022.

  2. 13

    Christopher J (37469),

    Have you always been an Agent?

    Your grasp of both the law and the history of the law is very shaky
    (101 conflating with 103)
    (101 conflating with 112)

    Plus, you do not seem to recognize the various regulars here, nor understand their points of view.

    1. 13.1

      Hah, you’ve mistaken me. It is true I might not have a grasp of as many things as I’d like, that’s why I wandered here, to learn. I’d pointed out similarities btw the sections you mention, and recall this past year other lawyers expound on that as well, so I didn’t invent that, I kinda parroted it but put it in here, to see what any response might be. That’s twice now anon that you’ve invited me to make the discourse about me. I suppose I had different expectations, but, I can see where forums are like shark tanks, haha. Be well.

      IN MEMORY ON THIS DAY TO THOSE SOLDIERS AND OTHERS GAVE THE ULTIMATE SACRIFICE TO SECURE LIBERTY

      1. 13.1.1

        C. Whewell>>That’s twice now anon that you’ve invited me to make the discourse about me.

        That is because you —by tone and substance–are putting yourself up as an expert and arguing points that are made by the anti-patent group.

        You also seem unable to respond to criticisms of your posts.

        This blog is filled with people that are paid to blog against patents. There are huge amounts of money spent every year trying to tear down our patent system. It is like the road system where there few to speak for it.

        It is unclear whether you are just an average bumbler or whether you have nefarious motives.

        1. 13.1.1.1

          oh is that so ? Any reasonable mind recognizes that pre-judging ppl from one’s personal perception of of “tone and substance” in a few messages is….. understandable, because so many ppl are quick to make judgements. Maybe its the new normal for y’all internet keyboard peckers.

          Ooo, I made a statement that sounds like “the anti-patent group”. Really ? If I make a statement used by either of (take your pick) pro or anti abortion ppl, are you gonna associate me as being either pro or anti abortion ??

          Maybe the “anti-patent group” in your head might have some good points to make. One purpose of free speech is to aire ideas, and observe the responses. If the idea is bad, then it gets shut down. If it is not bad, it might get some traction towards improvement. But not all ideas folk put out are winners.

          I realize I run the risk of some mal-contents writing senseless drivel or demurr and try to shift the conversation to be about Chris Whewell. The one who resorts to personal attacks, loses by default, if its a contest. What’s next ? Call me Shicklgruber ? But you have to expect it on the internet. Dr. Einstein told us that the world is run by fear, greed, and stupidity. So on those criteria, I ponder the motivation of some, writing anonymously to me as they have. They have fear, otherwise they’d put their name to their words. Certainly they’re not “real” lawyers based on my experience, the lawyers I know have enough good candor to not behave that way, and some might say its unbecoming of a Bar member, to write anonymously and attempt personal attacks. If I write to the ABA and convince them to change policy to not permit members of the bar to make internet postings anonymously, instead, put their actual names by their words, and not cower behind an anonymous internet handle, would that be Constitutional if ABA adopted such a policy ? I think there’s a need for such change, It’ll be an easy letter.

          And on Memorial Day of all days, a day of remembrance and mourning for the Nation of those who gave so much. Uncouth, unbecoming of a lawyer, IMO.

          Fear, Greed, and Stupidity still rule the world, including the internet blabbermouths.

          1. 13.1.1.1.1

            >>C. Whewell

            It is not all that complicated. Your argument, for example, about 112(f) is the position that the anti-patent groups are taking like Lemley. Those of us like me that write real patents for real companies and real products know that writing a specification that includes all embodiments is not practical. That is fact and not an argument. I’ve written claims that have brought in 10’s of millions in licensing and I would not have been able to protect the invention with 112(f) and all the embodiments in a specification.

            Your arguments are absurd. Just simply false. Maybe you just don’t do a lot of prosecution or you deal with patents that aren’t licensed or sold. I don’t know. But I do know your position is ridiculous and one only the ignorant would believe and one that likes of Lemley pushes almost on a daily basis.

            So, get that we that work in patents are under constant assault from the SV propaganda machine that is probably best represented by Mark Lemley.

            1. 13.1.1.1.1.1

              And as a practical matter I would challenge you to show me claims to a modern invention that use 112(f) and protect all the embodiments. That is an invention where I couldn’t easily design around the embodiments disclosed in the specification.

              Reality.

              1. 13.1.1.1.1.1.1

                Sure Kimosabe (and only a True Friend would ever use that word), if US 6,593,495 did not contain the listings of materials it does in the spec for what qualifies as each of the components of claim 1, what value would claim 1 have had absent those disclosures in the spec ? How many defendants have sat in court thinking “If only we had included a clause which stated _____ in the spec., we wouldn’t be here right now.” ? So get in as much as you can; yes each case is different so it is not possible always to expound in some as in others. Sometimes also, there’s no necessity to cover “all” possibilities, practical business and commercial or engineering issues sometimes enter in2 play.

                In a chemical comp. of matter case like that, the recitation of an acid anydride component in claim 1, is a cousin of a “means for”, clause because on the molecular level there is no question that it performs some function, synergistically with other components.

                Not all cases are the same, general statements don’t apply to every case, just take what ya can from it, if anything.

                1. That’s just it isn’t it? I said EE/CS/Mechanical, which is generally the areas I work in.

                  One reason that Lemley is pushing 112(f) is because it is easier to get around 112(f) in the chemical arts, although I think this is probably only with the help of the judge as many compounds can have an infinite number of variants that are non-reactive that somehow are included.

                  So basically this is Lemley’s way of dividing the patent system –crippling the EE/CS/mechanical patents while leaving the chemical arts relatively untoched.

            2. 13.1.1.1.1.2

              And just as a final issue:

              What is the point of trying to make people put in all the possible embodiments? That was never the intent of the patent system.

              Plus we all have very little time to write a patent application. Budgets are tight and because of Lemley and others patent value has dropped 80% in the last 10 years.

              We get about 1/2 if that of what we used to get to write a patent application. Now, Lemley is trying to force us to spend untold hours putting in every possible embodiment that one skilled in the art might think of. An impossible task that could easily take 20-200 pages.

              And yes I know what I’m talking about. I’ve had these conversations with real inventors with real Ph.D.’s writing patent applications to real consumer products.

              I ask, “can we go through some of the ways the competitors might get around the claims?” The response is usually a ten minute recitation of 100’s of different ways that the invention could be realized and the inventor getting mad saying “this is what the invention is” and all those other ways are just stealing the invention by using a different way that we all know.

              Anyway………..

              1. 13.1.1.1.1.2.1

                That’s the competition in the market – who can write the best spec in the shortest amount of time. Plus, it is always a good idea to “over-deliver” to the client in ways they can cognize. The result of GATT has been the commoditization of patent services market, particularly since the number of new practitioners attempts to increase exponentially while the demand is perhaps decreasing arithmetically. In all markets, commoditization is a race to the bottom in terms of its effect on prices. I look also at economic “demand destruction” during a monetary inflation. One force driving upwardly, the other down, like they battle each other. What effects does this have on the potential client base ? You’ll notice I’ve never shared “practice tips” if only rarely, b/c, why would I want to educate my competition ? haha, it has been long enough by now that everything almost has dissipated. But, each change usually provides new opportunities, re patenting strategy. I try to keep an open mind and conjur potential new ways of looking at things.

                1. Yes but the whole point is that the case law on 112(f) is a sham to weaken patents.

                2. Chrissy does not seem to be the only one that misses the differences (and wants things like bio/chem/pharma….

                  Maybe he too has not heard of the Kondratiev waves…

              2. 13.1.1.1.1.2.2

                “I ask, “can we go through some of the ways the competitors…”

                Yep, I require it all in writing. Some of it gets pitched after further inquiries, other aspects kept.

                I tend to tell people that the patent application they might file, will only cover what it discloses. And possibly equivalents recognized by those of skill. But, I saw a decision in which it was stated: “A patent specification preferably omits that which is well-known in the art”. But where is the dividing line in our heads about what the person of ordinary skill will say on a witness stand 10 years out, about what was then-previously-known to the person of ordinary skill ? ugh. Its far easier, to write more in the spec ab initio. Unfortunately, time can be an enemy. I refused many who wanted a “cheap provisional patent”, b/c they could never decide on which parts should be omitted in the application, vs. had I been asked to prepare a non-prov. haha, its a tough question ! What aspect of your invention that I would normally describe the heck out of in a regular patent app., would you like me to omit from your budget application ? I never got a straight answer. Luckily, many ppl know they get what they pay for usually.

      2. 13.1.2

        Hah, you’ve mistaken me.

        How so?

        Are you not the only listed practitioner by the name of “Whewell?”
        Is not your registration number 37469?
        Are you not aware that as of recent vintage (like last year), that name and registration number is also listed as belonging to an Agent?

        (some forget that they have a duty to update the Registration list – hence my question.

        How exactly have I mistaken you?

        As to drawing to you – as Night Writer (mostly correctly) illustrates, YOU have drawn yourself into the focus because of your recent rather odd posts.

        Unlike Night Writer though, I would not presume nefarious intent.

        Oh wait – Night Writer did NOT presume such – but merely asked whether you were a bumbler OR had nefarious motives.

        I do grant that it could be both.

        As to any sense of “pre-judging,” there is no such thing going on, and it is rather proper to ask questions (as both Night Writer and I have) when those (so-called) “few” messages impugn your ability to understand either the law or its history.

        And while you have been more pleasant than most, you really do NOT engage on the substance of the replies, but instead, merely insist on your view point, and NOT answer the counters put to you.

        And then your rather odd “dive” into ab0rtion— with ensuing RANT accusing Night Writer of the very thing that you yourself are doing IN your rant….

        It’s quite the strawman to suggest that you are merely “airing ideas as some form of free speech (as if anyone is denying you of that). Quite the opposite – and directly in line with your next sentence “ If the idea is bad, then it gets shut down” – YOUR bad ideas have been getting shut down.

        As for your inane “use your real name” schtick – “ So on those criteria, I ponder the motivation of some, writing anonymously to me as they have” – that is a KNOWN logical fallacy. There is NO legitimate basis for YOU to assert “fear.” You have NO legitimate basis to want an internet forum to have the same level of decorum as a court (or even correspondences between practitioner and the Office on official business. I have been more than clear that I believe in the John Maynard Keynes view that “Words ought to be a little wild for they are the assault of thoughts on the unthinking.”

        Don’t like it? MAKE BETTER ARGUMENTS in return. And good luck with that campaign with the ABA (oh you, Whiner about the freedom of speech – did you even take a First Amendment course? Do you not understand the Right to (gasp) offend you? Easy letter, you say – Heck, post it here and I will even critique it for you.

        Further on that line _ my questions were NOT “Personal Attacks” – so your bleating of “ And on Memorial Day of all days, a day of remembrance and mourning for the Nation of those who gave so much.” is even MORE misaimed – as those same Fallen FOUGHT for my right to offend you through my speech.

        In the best Shania Twain tones – “you don’t impress me much.”

        1. 13.1.2.1

          Feel better now cupcake ?

          1. 13.1.2.1.1

            Lol – “cupcake?”

            I touched a nerve – and you are left projecting that somehow I am the delicate one.

            Maybe instead, you address the points provided, eh (or feel free to prove my points). The choice is yours.

        2. 13.1.2.2

          Many view the Right you claim, to offend others with speech, as untenable. Did you learn that the first amendment does not give you the right to do anything at all, particularly offend others, any more than the 2nd amendment gives a right to harm others with weapons ? The first amendment confers no rights to anyone at all, it is a mere prohibition on government. There is no such thing as a “right” to offend others. I don’t like it that you called me “Chrissy” in another message, you’ve made me feel uncomfortable. Are you going towards my gender now ? Clearly, you saw my name as Christopher. I hope you apologize soon.

          1. 13.1.2.2.1

            Talk about cupcake — wanting an apology because I play with your name.

            As to Right (and the Bill of Rights), you confirm that you lack a law degree, much less having actually studied the First Amendment.

            You DO have the Right to continue displaying your lack of knowledge.

          2. 13.1.2.2.2

            That you assert “that many view… untenable” — like your feelings — are simply immaterial to a legal discussion.

            What makes you think that somehow you have some “Right” to be comfortable?

            Quite in fact, true learning is Often uncomfortable.

            And by the way, I have a brother named Christopher — we called him Chrissy all the time, so you take umbrage without just cause.

            Do you have any cogent point that you can sustain?

            Or perhaps you can put your feelings to the side and address the points put to you.

            1. 13.1.2.2.2.1

              Well, I never asserted anyone had a right to be “comfortable” as you suggest !! No communication I’ve ever emitted contained any such foolish proposal! I merely stated that you make me feel uncomfortable, b/c nobody else had replied as you had.

              I merely stated that the negative limitation on Government in the first amendment to the US Const. is not the same as a grant of rights. You can ask some of the other students about this, it really is true !!

              A negative limitation on one party, is not the same as a specific grant to another.

              The negative limitation on Gov. in amendment #1, grants nobody the right to offend others.

              One person’s right to offend others, can never be abolished, regulated or anything. I bet even William Wallace muttered some final F and U words.

              The point is, that you were oblivious to the fact that the 1st amendment doesn’t grant anything to anybody. eek ! I have some of old Blackstone Commentaries I can send if you like.

              1. 13.1.2.2.2.1.1

                If you divorce it from its context, it falls to pieces:

                “A negative limitation on one party, is not the same as a specific grant to another.”

                Similarly to computer software……

              2. 13.1.2.2.2.1.2

                A negative limitation on one party, is not the same as a specific grant to another.

                You are aware that our system of government is one of limited powers to the government and all RIGHTS elsewise are reserved to the people, eh?

                You are beyond wrong in your reply – and this leads me to an answer that you have yet to provide straight away _ you are still and agent and have never become an attorney.

                I recommend that you limit your comments accordingly.

                1. Its not “our” system, as I’m not one of “you”. keep writing head keyboard pecker, nobody cares.

                2. I provide some deeper on point and cogent proving, and all that you can come up with is that?

                  You need not be “one of me” to be ruled by the same legal structure.

                  Not sure why you think that “anything goes” (with your comments) when such is just not so.

                  Sure anyone – and everyone – can have opinions.

                  But that does not mean that all opinions are equal. That does not mean that all opinions have merit. That does not mean that all opinions have a tether to reality.

                  You have all the power in the world to response with nothing but insults and utter banality.

                  That just does not make for an interesting legal discussion, now does it?

    2. 13.2

      “ (101 conflating with 103)
      (101 conflating with 112)”

      The CAFC and PTAB do the same on a weekly basis

      Of course that’s not a valid excuse for ignorance

  3. 12

    I recently listened to Lemley sum up the year in patent law. What struck me was that Lemley has turned “high-level functional claiming” into a pejorative that means the judges can just invalidate the claims under 112(f) or Alice.

    No mention of the ladders of abstraction. No mention that many claims that are excellent claims would be characterized as “high-level functional claiming.”

    Also, no mention that “high-level functional claiming” just happens to be the way real inventors work out what inventions are in CS/EE/mechanical. You know like reality not the Lemley world of destroying patents.

    1. 12.1

      I do a little searching now and then, and frequently encounter in older patents a lot of “means for” language. Reviewing the entirety of a spec it oft turns out the inventor did not expound on what exactly this “means for” comprises. It is as if, 60 or so years ago, it was common parlance to believe those two words were magic, and would encompass any subject referred to by the predicate. Not so ! However, one can use the power of being their own lexicographer, and include in the spec. lang. to the effect of: “As used herein, “means for X”, includes known means for X such as ____, ____, and _____. Moreover, it further includes ___, when ___ is ____. the person of ordinary skill immediately recognizes that_____.” Define it however you want within the constraint of definiteness. I can see where this approach could have greatly reduced some legal frictions.

      Separate topic Q., if a claim in a patent spec being examined is alleged ineligible via 101, isn’t it also true that the claim must be indefinite, that the two go hand in hand ? If so, one way to obviate a 101, might be by proving definiteness of the claim. hmmm, have to give this some thought.

      1. 12.1.1

        C. Whewell >>ne can use the power of being their own lexicographer, and include in the spec. lang. to ….

        This is just such nonsense. The whole problem is that there are so many different solutions to the problem that if one is constrained in having to list them in the specification, then one can be sure they will miss an embodiment. Not to mention the expense of trying to enumerate all the embodiments which would be 10’s if not 100’s of thousands of dollars.

        Just such nonsense. Re-read what I wrote. I know what I am talking about. You do not. The key is how do real inventors–right now–work and think. Not some reality that has been created by Lemley’s psychotic reasoning to fool the uneducated.

        1. 12.1.1.1

          There is much to be said about developing good habits in what I mentioned, your cited example of 100’s or whatever in your mind, does not relate to many many types of subject matter. There are not always huge numbers of substitute equivalents for say, a method step, sometimes they are finite and known (think KSR) and other times they’re somewhere’s in the middle. Peace. Have a lovely day

          1. 12.1.1.1.1

            >>C. Whewell

            I’ve written plenty of applications to real inventions and the solution of having to list all the known alternatives to protect an invention is impractical and unnecessary.

          2. 12.1.1.1.2

            Plus as far as I know it is not good law to say that ” includes known means for X” will be interpreted as all means know to a person skilled in the art. It would not.

  4. 11

    101 is a cousin of 103…. Eligibility is definitely a question of law, depending upon underlying factual inquiries. Graham outlined the points for 103, and the PTO slowly revealed its attempt at identifying the points for 101, in all the various updates to the Guidances published in so many iterations, relying upon the Courts. Fascinating to observe ! Can 101 be distilled into just four facets, as Graham ? Alice broke the ice. (Great song title) You know its in the works, changing the language of 101 itself…………

    1. 11.1

      “Eligibility is definitely a question of law, depending upon underlying factual inquiries.”

      Depends on what judge you ask on what day, and whether the judge fells like lying about the facts or the law. Personally, I don’t think these judges read most the stuff they supposedly wrote.

    2. 11.2

      I am not certain what point you are trying to make vis a vis 101 and 103.

      But let’s start with some fundamentals: do you recognize that there is but one branch of the government authorized under the Constitution to write patent law?

      And yes, the emphasis on “writer,” is intentional, as the Common Law vehicle of “interpret” is not to be confused with the judicial branch actually writing law.

      1. 11.2.1

        What I like is when 70% of the legislature seats are held by officers of the court, and el presidente also happens to be a lawyer. Then, that notion of “separation of powers” dissipates, and everybody can write all the patent law they want, provided they go thru the right channels ! Lawyers rule the World !

  5. 10

    Dennis, if the part of the Solicitors Brief supporting American Axle cert with a “preemption” test you were referring to is the following from pp.12-13, is it applying that test to preemption of all uses of a law of nature rather than preemption of all possible ways or solutions of solving the actual problem addressed by the patent, or both? Is there another part of this brief on “preemption?”
    “d. Finally, the Court has “described the concern that drives th[e] exclusionary principle” and that “undergirds [its] § 101 jurisprudence” “as one of pre-emption”: the “‘[m]onopolization’” by a patentee of one of “‘the basic tools of scientific and technological work.’” Alice, 573 U.S. at 216, 223 (citations omitted); see id. at 217, 223; accord, e.g., Mayo, 566 U.S. at 71, 86. The Mayo Court described its inquiry as seeking “practical assurance that the process” claimed “is more than a drafting effort designed to monopolize [a] law of nature itself.” 566 U.S. at 77. And in applying Section 101, the Court has considered whether a claim would “tie up too much future use of laws of nature.” Id. at 87. A claim that confers exclusivity only over a narrow range of activity is less likely to implicate that concern. See Diehr, 450 U.S. at 187 ..”

  6. 9

    From the brief:

    “Section 101 thus does not permit, for example, a claim for illuminating dark rooms by any efficacious means, or for doing so in any way that involves electricity. Such claims identify a goal to be achieved, but do not recite a “process” for achieving it.”

    How is “use electricity to illuminate a room” not a process? Is it any more a process than: “a method comprising: applying an amount of electrical current with a particular electric potential to a object in a dark room, where the electrical current causes the emission of photons, and where the emission of photons illuminates the room”?

    1. 9.1

      How is “use electricity to illuminate a room” not a process?” The operative part of this “process” is “use electricity.” The phrase “to illuminate a room” is the purpose of using the electricity, but does not restrict the manner in which the goal is achieved. In contrast, “generate light using electricity” could be a process that results in illumination of a room, but a room can also be illuminated by opening a window (using electricity).

      In response to your second question, no.

      1. 9.1.1

        “In contrast, “generate light using electricity” could be a process that results in illumination of a room, but a room can also be illuminated by opening a window (using electricity).”

        But “using electricity” is a limitation on the process of “illuminating a room”. We’ve excluded steps of opening windows and lighting candles.

        “In response to your second question, no.”

        I agree, but I think the drafters of this brief would disagree.

        1. 9.1.1.1

          But “using electricity” is a limitation on the process of “illuminating a room”. We’ve excluded steps of opening windows and lighting candles.

          This is hypertechnical but the process in your example is “using electricity”–not “illuminating a room”. As originally expressed in your example, any use of electricity that results in a room being illuminated was encompassed. This is the problem with the use of “to” and “wherein” clauses. Limitations based on purpose and circumstances do not result in a different method. Is turning on a light in a room substantively different than turning on a light outside or in a box? No.

          1. 9.1.1.1.1

            Ladders of Abstraction have many (many) rungs.

            This is less “hypertechnical” and more “hyperobtuse.”

            If your aim is “exacting picture claim,” then it is quite literally “turtles all the way down” – with NO end (well, maybe when you get down to the Plank length….)

        2. 9.1.1.2

          hi, your post made me think of “generate X using Y” and it could be many things analogous:

          generate music using a cello
          generate documents using a specialized-thingy-whatzit-printer machine
          generate fish oil concentrates by process X
          generate a movement in an the EGR valve responsive to use of input Y
          generate increase in bile mercury content by ingesting substance X
          generate an indication of time on a dialface using whatever.

          Such a framework of language can be used to describe many inventables. Can we look at a lot of issued patents, and ourselves in our minds, reframe them to fit the above generic lingo ? I betcha so, in a lot of cases. Maybe there’s clues in this… ?

          1. 9.1.1.2.1

            “ Maybe there’s clues in this… ?”

            Get help.

      2. 9.1.2

        Good points, but my respectful response is:

        112(a) and 112(f)

  7. 8

    This is from page 20 of the brief:
    In 2019, the USPTO provided its thousands of patent examiners and administrative patent judges with guidance designed to make application of judicial precedents more consistent. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). That guidance noted that applying this Court’s recent Section 101 decisions “in a consistent manner has proven to be difficult”; “has caused uncertainty in this area of the law”; has made it difficult for “inventors, businesses, and other patent stakeholders to reliably and predictably determine what subject matter is patent eligible”; and “poses unique challenges for the USPTO” itself. Id. at 50, 52.

    1. 8.1

      2019… Who was President when that was drafted ? What party? Just trying to remember the political affiliation of the appointee in charge of the PTO who was a professional liar and water-carrier for the worst applicants.

      1. 8.1.1

        professional [ l 1 ar] and water-carrier for the worst applicants.

        I know that you think that you know what that means, but what exactly is your proof for making such an accusation?

        Do you have any? Anything other than your feelings?

        1. 8.1.1.1

          The professional liar part is a matter of public record. Use your favorite internet search engine to get more information.

          1. 8.1.1.1.1

            Malcolm is free to actually make a cogent point with ANY of those “easy to Google” things.

            As are you.

            Seeing as neither of you bother to do so though…

            1. 8.1.1.1.1.1

              You should know better than anyone what trying to explain something to you is like. If you won’t be bothered to understand, should it be surprising that people won’t bother to explain?

              In any case, the Washington Post keeps a partial list of his lies. Politifact has some, too.

              1. 8.1.1.1.1.1.1

                WaPo….

                You really want to try to use that as any type of credible source?

                And please — repeating stale mantras is NOT explaining things.

                That I don’t accept such nonsense is a feature and not a bug.

                If (and a very large if at that) one does provide a cogent explanation, I am all about engaging on that point.

                You are confused though because you think that merely because you think something and state something that you have “explained it.” Heck, have you even bothered with counter points put to you?

                1. I said “You should know better…”–not “You do know better…” I hope this helps you better appreciate your entertainment value.

                2. That YOU said anything – and wanted that to have actual value — IS beyond irony in consideration of your quip of “entertainment value.”

                  You just do not seem to grasp the concept of commenting on these boards.

    2. 8.2

      Great quote WT.

  8. 7

    Always worth remembering (and this is really difficult for some people) that the idea that there aren’t enough patents or that the system needs to be wildly expanded to remove some reasonable restrictions is an idea held only by a tiny tiny minority of rich people, most of whom are the sorts of glibertarian and authoritarian types who fetishize guns and never stop whining about the Feds. Any roadblocks or corrosives that can be used to cripple the “administrative state” is what these people fantasize about.

    Nothing new here. I’ve been pointing this out for many years because it’s been true for that long (and longer). Reap the whirlwind.

    1. 7.1

      Ok Sarah — your apoplectic rant is noted.

    2. 7.2

      The Constitution did not contemplate the Administrative State we have today. Unelected bureaucrats are not held accountable to the people. I am one of those who thinks it needs to be reined in.

      1. 7.2.1

        “ The Constitution did not contemplate the Administrative State we have today.”

        The Framers were infamously short-sighted about a lot of things. Probably that’s because a lot of them were horrible slave-owning types whose lives revolved around … owning slaves. But you probably knew that already because you are so very serious.

        In any event, as populations grow, society gets more complicated and more administration is needed. A five year old can probably understand that.

        As for “unelected bureaucrats”, maybe also focus on unelected Federal judges appointed for life by a minority who wants to turn the clock back to the pre-Civil War days. Or not.

        After all, you are one of those gun fetishists, aren’t you? You vote for the white dominionists, right? Go ahead and stun everyone with your complicated political “beliefs”.

        1. 7.2.1.1

          The Constitution limits the powers of the federal government. That is how it was drafted. You call it short-sighted. I call it brilliant.

          We may need more people, not more agencies. We have multiple redundancies already.

          The judges are nominated by someone who IS elected, and confirmed by others who ARE elected. It is all right there in the Constitution.

          1. 7.2.1.1.1

            PM – note the attempted “one-bucketing” that you are getting back from Malcolm.

            Some (like NS II) may even feel that “Malcolm has explained this to you.”

            Unfortunately — parroting a script seems to be the limits of their cognitive abilities.

            1. 7.2.1.1.1.1

              I cannot tell if it is sarcasm, baiting, or that they really believe the positions they are presenting. The only ones who want a bigger Administrative State are probably part of it.

              1. 7.2.1.1.1.1.1

                Well PM, I can attest that there are indeed people who truly believe in their philosophies that include a deep and unbridled disdain for this country, and truly believe that adding layer upon layer upon layer of administrative state apparatchik IS the “worthwhile” path to utopia.

    3. 7.3

      Wrong! The world will come to end if people are not allowed to patent ideas. What is the point of thinking without the incentive of obtaining a patent?

      1. 7.3.1

        NS II and his usual ‘wit’…

      2. 7.3.2

        Wrong! The world will come to end if people are not allowed to patent ideas.
        Nice strawman argument. Did the Wright brothers get a patent on the idea of “a flying machine”? Just look at claim 1 of USP 821,393:

        1. In a flying-machine, a normally flat a normally flat aeroplane having lateral marginal portions capable of movement to different positions above or blow [sic] the normal plane of the body of the aeroplane, such movement being about an axis transverse to, the line of flight, whereby said lateral marginal portions may be moved to different angles relatively to the normal plane of’ the body of the aeroplane, so as to present to the atmosphere different angles of incidence, and means for so moving said lateral marginal portions substantially as described.

        This claim doesn’t describe the details of these “lateral marginal portions” or how they are “capable of movement to different positions above or blow the normal plane of the body.” I have little doubt that if flying machines were never invented and this was to be patented today, that there would be many arguing that this invention is directed to an abstract idea.

        1. 7.3.2.1

          I have little doubt that if flying machines were never invented and this was to be patented today, that there would be many arguing that this invention is directed to an abstract idea.

          What is your point? Did the Wright Bros. successfully enforce this claim, such that we should consider it a settled fact that it is an enforceable claim? It is possible to draft a bad claim covering a meritorious invention. The mere fact that the Wright Bros.’ airplane was sound does not mean that their patent claims must also be.

          1. 7.3.2.1.1

            What is your point? That the Wright claims are “abstract?”

          2. 7.3.2.1.2

            The mere fact that the Wright Bros.’ airplane was sound does not mean that their patent claims must also be.

            Wrong! There is no distinction between an invention and the patent claims describing that invention. EVER!
            This is especially true for the patent claims like those of the Wright Bros. that precede the Patent Act of 1952.

        2. 7.3.2.2

          A more valid analogy to the much broader American Axle claims than this Wright brothers USP 821,393 claim 1 might be:
          1. In a flying machine with a wing, a method of improved flying stability control by “tuning” the wing for said improved stability control.

          1. 7.3.2.2.1

            BTW, note that this Wright brothers USP 821,393 claim to their key invention of “wing warping” for horizontal stability of airplanes was cleverly written generically enough to cover the later invention by Glen Curtis of what everyone since actually uses in airplanes for that same purpose – hinged separately moveable control surfaces.

            1. 7.3.2.2.1.1

              BTW, note that this Wright brothers USP 821,393 claim to their key invention of “wing warping” for horizontal stability of airplanes was cleverly written generically enough to cover the later invention by Glen Curtis of what everyone since actually uses in airplanes for that same purpose – hinged separately moveable control surfaces.
              So are you reciting an abstract idea when you cover all ways of accomplishing something? You’ve determined that this ‘something’ is desirable. You’ve come up with one or two or three different ways of doing it that you like. You know that there are a lot of different ways to accomplish this ‘something’ and your patent attorney drafts a claim that covers that different ways. Are those claims valid? Or are those claims too abstract?

          2. 7.3.2.2.2

            A more valid analogy to the much broader American Axle claims than this Wright brothers USP 821,393 claim 1
            People were tuning shafts for a 100 years before the American Axle patent. It is MUCH NARROWER than you think it is.

  9. 6

    > these exceptions are historic and based upon longstanding precedent.

    But not any statutory or Constitutional text…

    >The suggestion is that they should be guided by the old precedent and not expanded further without congressional input.

    While I’ll take any decision that limits Alice/Mayo, such a rationale would simply reinforce the “judicial activism” that led us down this rathole. Somewhat ironic given the apparent Dobbs opinion.

    1. 6.1

      “Apparent Dobbs” is more than a misnomer.

      As barely a first draft, with zero give and take from any dissents, it is entirely premature to reference take-aways from that Leak.

      Believe me – as one who has coined the term “Kavanaugh Scissors,” having the Supreme Court revisit — and correct — their past overstepping of their authority would be worth celebrating — whatever the context.

      We just are not there (yet?).

      1. 6.1.1

        Kavanaugh Scissors are ineffective

        I want the new, improved Alito flamethrower.

        1. 6.1.1.1

          I get your wish, although would point out that the Scissors to the Gordian Knot have yet to be attempted.

    2. 6.2

      “ > these exceptions are historic and based upon longstanding precedent. But not any statutory or Constitutional text…”

      The statute in question is written incredibly poorly but it does not expressly include “logic”, “abstractions”, “facts”, or “algorithms.” None of these things were ever eligible for patenting and for good reason. Congress never contemplated using the patent system to allow people to own such things.

      Faced with incredibly poorly written claims and patentees asking for the world, the Supreme Court has made the right decision in nearly all of the eligibility cases (Diehr being the glaring exception which was immediately derided, then ignored, and then overturned except for its most banal holding).

      1. 6.2.1

        >but it does not expressly include “logic”, “abstractions”, “facts”, or “algorithms.”

        Oddly enough, I mostly agree. The claim has to be directed to a “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.”

        By implication (vs “express”), section 101 doesn’t permit abstract ideas (i.e., an abstract idea is an example of something that’s not a “process.”) But…and this is important…there is no independent reason to reject a claim on the grounds it’s an “abstract idea.” Or, for that matter, a “natural phenomena.”

        tl;dr we don’t need a test for “abstract ideas” because the question is irrelevant. The so-called “judicial exceptions” aren’t part of the text.

        >Supreme Court has made the right decision in nearly all of the eligibility cases

        1. 6.2.1.1

          fake edit

          >Supreme Court has made the right decision in nearly all of the eligibility cases

          On 101 grounds, they were all wrong. The courts/USPTO needs to stop being lazy and do a proper 112/102/103 analysis.

          1. 6.2.1.1.1

            Who can forget this one?

            The claim:

            The method of converting signals from binary coded decimal form into binary which comprises the steps of
            (1) storing the binary coded decimal signals in a reentrant shift register,
            (2) shifting the signals to the right by at least three places, until there is a binary ‘1’ in the second position of said register,
            (3) masking out said binary ‘1’ in said second position of said register,
            (4) adding a binary ‘1’ to the first position of said register,
            (5) shifting the signals to the left by two positions,
            (6) adding a ‘1’ to said first position, and
            (7) shifting the signals to the right by at least three positions in preparation for a succeeding binary ‘1’ in the second position of said register.

            Some of the reasoning:

            —-

            … It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. …

            It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly preempt the mathematical formula and in practical effect would be a patent on the algorithm itself.

            I have read that last paragraph so many times, and I still can’t decipher the logic.

            1. 6.2.1.1.1.1

              I get what the last paragraph is saying.

              1. Everyone agrees you can’t patent just an “idea.”
              2. The algorithm here in one sense is not purely a naked idea, because it is used on computers.
              3. However, the algorithm has no other practical use besides its use on computers.
              4. Thus, “in practical effect” the claims patent the algorithm itself (since it covers every use of the algorithm)

              1. 6.2.1.1.1.1.1

                Claims cover everything that a claim covers — that is what claims do.

      2. 6.2.2

        The statute in question is written incredibly poorly but it does not expressly include

        You DO realize that a forward looking law on innovation cannot include those things of which innovation may form, eh?

        I am certain that a pre-schooler can explain this to you.

        1. 6.2.2.1

          “You DO realize that a forward looking law on innovation cannot include those things of which innovation may form, eh?”

          The SCOTUS has actually said this in many opinions including Diehr, Chakrabarty, and Bilksi, but we know MM has never read these cases.

          MM, last time I looked, s101 never said anything about man-engineered organisms, metal alloys, or cell phones, and yet . . .

  10. 5

    Readers should download and study DE-A-3632418 (BMW). For those with little knowledge of German, the esp@cenet database includes an automatic translation facility by which the description, claims and abstract can be straightforwardly and rapidly translated. It will be seen that bending, torsional and wall vibrations of a drive shaft can all be damped by the disclosed structures.

    It will be noted that this reference was missed both by the USPTO and by the EPO. One explanation may be that although the abstract refers to the incorporation of a damping mass which may consist of a tuning mass and an absorber mass into the hollow drive shaft, the abstract makes no reference to multi-mode damping.

    1. 5.1

      Paul, similar to the exchange with MaxDrei, what you posit does NOT (directly) speak to the legal point of 35 USC 101.

      I say “directly,” because if in fact this is a solid 102 reference, the mere existence of 102 would speak in favor of the passing of 101.

      (I do hope that I need not explain why to you)

      1. 5.1.1

        “the mere existence of 102 would speak in favor of the passing of 101.“

        No. 101 is the threshold inquiry and if there is a clear eligibility issue then there is no need to get into 102.

        Put another way, if you claim “A process comprising thinking about a Federal gun control law that the white dominionist party would favor” we don’t need to get into 102 (even though it’s easily shown to be anticipated). It’s an ineligible abstraction and that’s how it should be treated.

        1. 5.1.1.1

          No. 101 is the threshold inquiry and if there is a clear eligibility issue then there is no need to get into 102.

          Wow, did you miss the point.

          I suggest that you go back and read Paul Cole’s post and then — in context — read the reply.

          Let me know if you need a third grader to help you out. I think that I can find one and arrange a controlled tutoring zone in which you will not violate your probation.

      2. 5.1.2

        Anon, 101 still requires “new and useful.” So, anticipation is still relevant. It is for Congress to update the status.

        1. 5.1.2.1

          update the statute.

        2. 5.1.2.2

          I certainly agree that the job is for Congress (and not the Supreme Court ) – but you rather miss the point in that an item rejected for 102 (to another patent) PROVES the point that the item met 35 USC 101.

    2. 5.2

      It will be seen that bending, torsional and wall vibrations of a drive shaft can all be damped by the disclosed structures.
      And what does this have to do with 35 USC 101? I’ll answer the question posed — it has absolutely nothing to do with the issue presented before us.

      I can all but assure you that 99.9% of the people here don’t care whether these particular claims are invalid for some other reason. That being said, I have read the claims of American Axle, and what you describe doesn’t strike me as troublesome.

      1. 5.2.1

        “I can all but assure you that 99.9% of the people here don’t care whether these particular claims are invalid for some other reason.”

        Yes but only about 20% would admit that 99% of ineligible claims also fail under one of the other statutes and only about 5% understand that this is to be expected.

      2. 5.2.2

        Re: “.. 99.9% of the people here don’t care whether these particular claims are invalid for some other reason.”
        Among many blog commentators here, but not true for the many patent attorneys defending American companies from billions of dollars in patent suit costs, and not just representing patent owners in application prep and prosecution. A successful 12(b)(6) preliminary “unpatentable subject matter” motion can save a client millions of dollars as compared to a full blow patent trial defense and appeal to win on 112, 103, etc. Their client duty is to use the law as it exists, however ambiguous, until it changes.

        1. 5.2.2.1

          Ends do NOT justify the Means, Paul.

          No matter how much money you THINK that you would save with an abomination of the law.

        2. 5.2.2.2

          Among many blog commentators here, but not true for the many patent attorneys defending American companies from billions of dollars in patent suit costs, and not just representing patent owners in application prep and prosecution.
          And explain to me why the ultimate validity of those particular claims are relevant to those “many patent attorneys defending American companies from billions of dollars in patent suit costs.”

          A successful 12(b)(6) preliminary “unpatentable subject matter” motion can save a client millions of dollars as compared to a full blow patent trial defense and appeal to win on 112, 103, etc.
          A 12(b)(6) “unpatentable subject matter” motion? Do you practice in the US? As 12(b)(6) motion is the failure to state a claim. To do so requires the allegation of facts (taken to be true) identify a cause of action for which relief can be granted. The typical remedy for a successful 12(b)(6) motion is to allow the plaintiff to refile the complaint. The Supreme Court, most recently in Iqbal and Twombly, addressed the requirements for a 12(b)(6) motion. These motions are presented before evidence is introduced yet patents can only be invalidated based upon clear and convincing evidence. The Federal Circuit’s application of 12b6 in these instances is a farce.

          Your “save a client millions of dollars” is basically the judge deeming claims ineligible without the benefit of evidence. It is a judge saying that they know patent law better than the agency whose job it is to apply it — the same agency that issued the patent. The end result is the hack job (like in American Axle) in which the District Court judge (unfortunately now one of the newest member of the Federal Circuit) buys into an argument (i.e., that Hooke’s law was preempted) that anyone with a couple of semesters of engineering classes would laugh at.

          1. 5.2.2.2.1

            Alas, Wt, Paul is nothing but a shill for the Efficient Infringers.

            Once upon a time he actually had a USPTO registration number. He gave that up a LONG time ago, and has NO relation to protecting innovators by obtaining patent protection for them.

            1. 5.2.2.2.1.1

              maybe you should learn how to write claims that get past section 101. it is only hard to do if the “innovator” didn’t really invent something, but is merely performing a known method on a black box computer.

              1. 5.2.2.2.1.1.1

                maybe you should learn how to write claims that get past section 101.
                Run a seminar to do that. Let me know, and I’ll help you set it up for a take of the fees. We can make millions of dollars.

                it is only hard to do if the “innovator” didn’t really invent something, but is merely performing a known method on a black box computer
                Maybe you should hang out with the patent prosecutors a little more often. I’ve had easily a couple dozen applications in which we overcame the prior art rejection only to come up with with the Examiner maintaining the 101 rejection. In other words, we were doing something MORE than “merely performing a known method on a black box computer” yet that still wasn’t enough to get past 101. In the end, we’ve got a patents on a great many of those applications, but it took a lot more work than necessary.

                Anybody suggesting that there are patent applications that involve “merely performing a known method on a black box computer” knows little about what is being patented these days. Maybe those kinds of applications were floating around the USPTO 15 or 20 years ago, but not today.

                1. Wt,

                  “Litig8or” is not a patent practitioner is but yet another mouth piece for Efficient Infringers.

                  His suggestion to you to “learn how to write a claim” is especially funny given how own lack of knowledge.

  11. 4

    Dennis, what makes you say that the subject matter here claimed is a method of manufacturing and “calibrating”? For novelty, the patent owner relies upon a spurious step of “tuning” which is said to result in an assembled shaft different from the known shafts that already included a vibration-damping tuned liner in that its improved liner is a liner tuned to damp more than one mode of shaft vibration.

    Are we to accept as fact that the prior tuned liners had a damping effect on exclusively only one of the several modes of shaft vibration and zero damping effect on the others? Is that credible?

    And if it is, what then is it that is so special about patentee’s plain cardboard tube which magically endows it with a range of damping power not exhibited by the prior cardboard tubes? According to the patent, of course, there is nothing special. That’s what is so clever, we are to accept. What is special, we are asked to believe, is the step of “tuning” the carboard tube. As if prior makers of lined shafts didn’t ever resort to a bit of trial and error to find an optimal vibration-damping tube liner.

    Is that what you mean by “calibration”? Seriously?

    All that said though, if not by an enquiry into eligibility, what is to be done to help the USPTO fairly and efficiently to see off an ever-increasing flow of claims that ought not ever to be inflicted on the public

    1. 4.1

      Sounds like you have 102 art in mind there MaxDrei.

      1. 4.1.1

        Yes; or 103 . . . or 112.

    2. 4.2

      what is to be done to help the USPTO fairly and efficiently to see off an ever-increasing flow of claims that ought not ever to be inflicted on the public

      Your melodrama aside, the law (as previously written by Congress) is MORE THAN ENOUGH — as it ever was.

    3. 4.3

      Max, are you saying that there is no 112 specification enablement at all for American Axle patent’s claim 22 claimed method of: “tuning a mass and a stiffness of at least one liner … for attenuating shell mode vibrations and ..attenuating bending mode vibrations.”?
      Can someone else please point out such spec teaching for how to change both mass and stiffness of a liner to attenuate both shaft vibrations?
      Is there any reason why the Sup. Ct. could not possibly take the case yet decide it on statutory 112 grounds and completely avoid dealing with its own “abstraction” unpatentability test problems?

      1. 4.3.1

        P.S. Is there a practical cert problem here, in that Justice Thomas [now a senior member of the new Sup. Ct. majority] delivered the opinion of the Court in Alice, which “abstraction” decision is effectively under attack here as ambiguous?

        1. 4.3.1.1

          Why would that be a cert problem?

      2. 4.3.2

        Paul my point is that you don’t need any such teaching in the spec because any old prior art cardboard tube damping liner can’t help do anything else but deliver finite damping of more than one mode of shaft vibration. As I said, it’s the thought that counts, the thought of writing a claim that riffs on the word “tuning”.

        anon, yes, 102, of course. Not to mention 103 for good measure. But it all takes time. We use without a second thought dumps for “junk” mails that work with clinical efficiency. Such a dump for junk claims with no plausible eligibility would also not come amiss, for everybody except those that scriven such wool-pulling and spurious claims.

        1. 4.3.2.1

          anon, yes, 102, of course. Not to mention 103 for good measure. But it all takes time.

          “Taking time” is no excuse for BAS TAR DIZING the law – the Ends do not justify the Means.

          Especially in law — EVERY decent attorney should recognize that.

          1. 4.3.2.1.1

            All well and good, anon, but let not the perfect drive out the good. Further, if one reads Ben’s quote from the Brief, in this thread at 9, a claim such as the one here, which gives you a task to perform which the prior art is unable to perform (here “tuning” out two or more vibration modes simultaneously) but does not tell you how to do succeed in that task, fails to pass muster under 35 USC 101. End of story, I would say.

            1. 4.3.2.1.1.1

              End of story, I would say.

              You would say — and be incorrect.

              Maybe you just don’t understand what “The Ends do not justify the Means” means…

      3. 4.3.3

        Is there any reason why the Sup. Ct. could not possibly take the case yet decide it on statutory 112 grounds and completely avoid dealing with its own “abstraction” unpatentability test problems?
        Did the District Court rule on this point? Was the issue briefed before the Federal Circuit? Did the Federal Circuit rule on this point? As best as I can tell, the answers are no, no, and no.

        Let me give you a hint as to why this is important — the Supreme Court is very typically a review court — not a court of original jurisdiction. In effect, this means that the Supreme Court is not in a position to address issues not raised down below.

    4. 4.4

      Then it should fail under a novelty analysis. When the two steps of Alice are rigidly applied, or the invention is abstracted out to its extreme by analysis, we end up with inventions that should be patentable not being patentable. Like what happened in Ariosa.

  12. 3

    “ the defense was able cut-off the broad claims straight away. And importantly from a procedure perspective, was able to achieve this without worrying about the strictures of “evidence” or “fact finding” because eligibility is a question of law that rarely involves any underlying factual findings.”

    Yes, it is true that most eligibility cases are straightforward because the relevant facts are not complicated or in dispute. Why make it sound nefarious?

    Patentee admits “here is the prior art and my claims describe that art plus I have added an additional element which is an unpatentable function or an abstraction.”

    Why should determining the invalidity of such a claim ever require lengthy litigation with more “fact finding” (also known as “dust-kicking by the patentee) and a jury? Serious question.

    1. 3.1

      >Yes, it is true that most eligibility cases are straightforward because the relevant facts are not complicated or in dispute.

      There is a long (and perhaps unique) tradition of having attorneys testify as expert witnesses in patent cases. I’m a little surprised nobody seems to have extended that tradition to some of the Alice/Mayo sub-parts.

      1. 3.1.1

        Have you ever looked at the claims in a typical “do it on a computer” eligibility case?

        The sort of “expertise” needed to tank the claim is basically being an expert at getting oxygen to your own brain. Did you know you can rank things and sort things and assign values to them? Oh, and you can do math. And accept inputs and communicate outputs. It’s true!

        Oh but this about a managing a bingo game so totally different universe of math and logic apply. Let’s hear from the inventor who is a cryptocurrency promoter by profession.

  13. 2

    I tip my hat to the Biden administration for advancing this position. Much more like the Obama administration’s position in Myriad than their position in Alice.

    1. 2.1

      Greg,

      I hear that Joe Biden himself wrote the brief. Just kidding, he was asleep by 8 PM and wondering when Corn Pop will visit the white house.

      1. 2.1.1

        “I know the Google.”

        — Biden

    2. 2.2

      I’m surprised to see you say that given:

      “I never want to see the SCOTUS take cert. in a patent case—may God bless and keep the SCOTUS… far away from us.”

      1. 2.2.1

        You are right to see an inconsistency there. American Axle is the sort of case that pits my heart against my head.

        My head knows that no good will likely come of the Court tinkering again with §101. My heart, however, will not let go of the idea that surely the Court can see what a mess Mayo/Alice has proven in practice and will want to set things aright (just as Diehr did with Flook).

        1. 2.2.1.1

          (just as Diehr did with Flook).

          THAT moment was Alice.

          Instead, we went full force INTO the rabbit hole.

        2. 2.2.1.2

          “My heart, however, will not let go of the idea that surely the Court can see what a mess Mayo/Alice has proven in practice . . . .”

          Greg, I think everyone knows that the SCOTUS is in hiding hoping for the lower courts to figure things out. Based on oral hearing in In re Killian, it is possible that we will find out 100% what the CAFC’s intentions are.

          The PTAB couldn’t have handed Killian a better set of circumstances to showcase how stupid Alice-Mato is.

          1. 2.2.1.2.1

            Llfilter hit…

            Your comment is awaiting moderation.

            May 26, 2022 at 5:36 pm

            B – you of all people should know that the c0w ards of the CAFC (being far too well trained fire-hose-simians-in-a-cage style) will not show the utter inanity of the Supreme Court’s earlier decisions.

            1. 2.2.1.2.1.1

              I handed the CAFC a flamethrower, Anon. The PTO refused to even address the issue. Taranto had zero pushback. The only pushback was by Chen who was basically phoning it in with “muh Benson!”

              Let’s see if the monkeys will us said flamethrower, or whether (as with Villena and Chamberlain) the court will just lie.

              1. 2.2.1.2.1.1.1

                sadly B – my bet would be on the “just
                L
                I
                E

                1. Hard to argue yet I have one last hope. Similar to Lot (the Genesis Lot) I hope to find six righteous judges as the CAFC, and five righteous justices at the Supreme Court.

                  We need eleven righteous jurists.

                  Then again, Lot made the case for ten righteous men, and failed

  14. 1

    In the end, Examiners will still ignore the ruling until PTO Management tells them how to follow the ruling….and they will still get it wrong.

    1. 1.1

      Getting it wrong is what the PTAB does best

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