Eligibility for Dummies; Benson Redux

by Dennis Crouch

I’ve become somewhat callous toward patent eligibility jurisprudence and so was surprised when I read the Federal Circuit’s decision in ADASA Inc. v. Avery Dennison Corp., 55 F.4th 900 (Fed. Cir. Dec 16, 2022). The case concluded that constructively dividing a fixed-length binary number into different sub-portions was not an abstract idea.  Now, the accused infringer has asked the Supreme Court for review.

ADASA’s US Patent 9,798,967 is directed toward an RFID chip “encoded with a unique object number.”  This object number as various blocks pre-allocated to identify the selling-company, product reference, and serial number as shown below.  The serial number has a unique feature of being divided into a section of “most significant bits” (MSBs) and “least significant bits” (LSBs). This division between MSBs and LSBs help in the allocation of unique serial numbers in a distributed production system.  The basic approach:

  • A product-line will be exclusively allocated a particular MSB and all possible accompanying LSBs. It will then enable RFID chips using the allocated MSB and then sequentially incrementing the LSB.
  • A separate product line might also be simultaneously enabling other other chips. To ensure no overlap in serial numbers, the second-line will be allocated a different MSB.
  • The result then is that we can guarantee that each chip has a unique serial number despite parallel production lines.

The claims do not appear to include any novel features other than this constructed division between bits in a binary number.  (Claim 1, is reproduced below). In its petition, the adjudged infringer relies heavily on the old cases of Benson and Flook to argue that the setup here lacks eligibility.

Question presented:

Radio Frequency Identification Device (RFID) tags are encoded with lengthy serial numbers that uniquely identify particular items. The patent at issue in this case designates the leading bits in a binary serial number as “the most significant bits,” and directs that all serial numbers in an allocated block begin with the same “most significant bits.”

The question presented is whether that claim, by subdividing a serial number into “most significant bits” that are assigned such that they remain identical across RFID tags, constitutes patent-eligible subject matter under 35 U.S.C. § 101.

Avery Dennison Petition.

Chief Judge Moore wrote the opinion and concluded that the claims were not directed to an abstract idea but rather provides a novel data structure within a serial number.  Here, the idea is that the patentee was able to create a new data field that was “not a mere mental process, but a hardware-based data structure focused on improvements to the technological process by which that data is encoded;” and an improvement with “important technological consequences.”

An interesting feature is that the general idea presented by the patentee was already identified and discussed in the book RFID for Dummies.  If Avery Dennison loses here, then the district court will hold a trial on anticipation.  Still, the “for Dummies” label has strong rhetorical appeal — should everything in that book title be considered an abstract idea?  The petitioner writes:

“[A]bstract ideas are not patentable.” … It is hard to imagine a more blatant transgression of that rule than the claim in this case, which sought a patent monopoly over the simple concept of treating one long serial number as the combination of two shorter numbers, and then [requiring] blocks of RFID tags all start with the same shorter number. At bottom, that claim is no different from a direction to mentally subdivide all telephone numbers into two component parts and then assign the same leading part to an allocated block of numbers (e.g., all telephone numbers in the District of Columbia start with 202). That may be a good idea (indeed, the concept in ADASA’s patent appears in the pages of RFID for Dummies), but it is no more patentable than the other good but abstract ideas that this Court has held unpatentable for more than 150 years.

Id.  I’m confident that if the Supreme Court takes this case, it would even further expand eligibility doctrine.

= = =

Claim 1: An RFID transponder comprising:

a substrate;

an antenna structure formed on the substrate; and

an RFID integrated circuit chip which is electrically coupled to the antenna structure,

wherein the RFID integrated circuit chip is encoded with a unique object number, the unique object number comprising an object class information space and a unique serial number space,

wherein the unique serial number space is encoded with one serial number instance from an allocated block of serial numbers, the allocated block being assigned a limited number of most significant bits, and

wherein the unique serial number space comprises the limited number of most significant bits corresponding to the allocated block and remaining bits of lesser significance that together comprise the one serial number instance.

109 thoughts on “Eligibility for Dummies; Benson Redux

  1. 11

    iDan:

    Whether it is given patentable weight depends on the substrate:
    1. A book, comprising computer code. – no weight.

    2. A computer readable medium comprising computer code that, when executed by a computing device, causes the device to perform function – weight.

    Why? What is the principled difference?

    When a useful technical algorithm is loaded from the book and executed in the mind of an engineer, why does it matter that a machine ran an instruction rather than a human mind?

    I think it matters a great deal.

    And what of the four statuary categories of 101 should the computer code fall into?

    “How does code running on a general purpose computer change the operation of the computer? It does not.”

    Sure, it does. That’s the entire point of the code.

    It no more changes the computer than running Family Guy changes your television, or weaving a rug or weaving a sweater changes the loom.

    The computer, the TV, and the loom are exactly the same after running the code.

    1. 11.2

      As this thread hits its 101 post, the usual suspects continue to showcase their perilous position so high upon their respective peaks of Mount S’s.

      Purposefully chosen 1g n0r ance is simply no excuse of the law – and yes, those purposeful choices are exhibited in full here by marty (who has been repeatedly advised to discuss these things with his patent attorney) and worse yet, Malcolm (who avows TO BE a patent attorney).

      Comparisons of software to ‘flow-thoughs’ such as television programs and work product of resulting woven rugs or sweaters may be ‘cute,’ but completely miss the objective physical truth that in the patent sense, software is equivalent** to firmware and is equivalent to hardware.

      Hint: one of the three provides functionality which is the hallmark of the utility patent system.

      I daresay that YOUR patent attorney may well want to take it upon his initiative to verify that you do understand these things (at least on the basis of informed consent upon which he operates; and as for you, your having provided oaths to the government for your claimed inventions),

      The argument otherwise stems from the absolutely stale position of the likes of IBM when THEY missed the boat early on with their business decision to only focus on HARDware.

      This is a matter of well-documented history.

      ** and yes marty, it IS important to understand the words and phrases of “patent sense,” and “equivalent.” You have in the past went wildly in the weeds wanting some type of literal EXACT when that is simply neither required, necessary, nor accurate.

      As to the rather silly question of, “And what of the four statuary categories of 101 should the computer code fall into?

      This has been asked and answered – many many times now.

      Here’s the 10,000 foot summary answer: innovations OFTEN can be (and ARE – ever note that most all granted patents have claims to multiple statutory categories) described in one or more of the statutory categories.

      Never mind the fact that these categories were meant to be an extremely low bar and in and of themselves are meant to be expansively considered (I have taken you personally to the woodshed many times now in regards to 35 USC 100(b)).

      Software – as software – is a manufacture. It is a machine component every bit – in the patent equivalence sense – of a machine component as would be hardware or firmware. Each of these are KNOWN to be design choices and software can easily be rendered into hardware (you have heard of ASICS, right?) and vice versa.

      THIS IS NOT NEW. Yet again, don’t even take my word for it – ask your patent attorney to explain this to you.

      As to your willful 1g n0r ance as to the Grand Hall Experiment, your assertion of that phrase having no “accepted” meaning is beyond bizarre. That is a phrase coined here AT Patently-O. It very much has a “well-accpeted” meaning, as it has been consistently used AND explicated dozens upon dozens of times on THIS blog. That YOU do not understand it (Google or otherwise) is merely YOU being you upon that Peak of yours. Nothing else.

      1. 11.2.1

        “ Software – as software – is a manufacture. It is a machine component ”

        How much does it weigh, on average, per megabyte?

        1. 11.2.1.1

          Malcolm,

          You have posed this (bogus) question many times now without ever answering the counterpoint put to you.

          But before we revisit that (again), where in the world are you getting this A S S umption that components must — of their own accord — have weight? – at any average? – at any per anything?

          Now to the point previously put to you: The Three Resistors example.

          I have three resistors (you can pick any weight you want to).

          Do I have a different component if those resistors are configured in series?

          Do I have a different component if those resistors are configured in parallel?

          What is the difference in weight, on average, per megabyte on these “objective physical” different components by way of configuration?

        2. 11.2.1.2

          And yes, in case you were wondering, this is reflected in the Grand Hall experiment — something that you have never addressed in an inte11ectually honest manner.

      2. 11.2.2

        “Software is EQUIVALENT to hardware”

        Sure. And likewise instructions for teaching are EQUIVALENT to robot teachers!

        Where are you going with this?

        Instead of pretending that parenting software and algorithms and data makes any sense in our utility patent system, why not just admit the truth: it was shoe horned in and you are going to do ridiculous contradictory backflips defending the shoe horning because that’s the kind of unimaginative greedy patent-huffing child that you are and always will be. Heck, you might even get on the road to adulthood and some semblance of rational dialog if you work at it hard enough. We will all forgive you, probably, for the time you’ve wasted.

        1. 11.2.2.1

          As to this mindless rejoinder, maybe you should focus on the fact of the equivalence rather than assert your (projected) falsehoods.

          I am not pretending anything.

          Software (as a design choice) was NOT shoe-horned into the utility patent system — as I noted to marty above, it is a perfect fit because of utility.

          Nothing of what I have ever said on this topic can even be remotely said to be “ridiculous contradictory backflips” — you are doing that projecting thing again.

          As for adulthood, you belie what YOU consider to be that state with your own childISH actions of dissembling, projecting, mindless (and quite missing the mark) name-calling.

          Lastly, your forgiveness is just not needed nor is it proper.

          1. 11.2.2.1.1

            I will add (just in case the likes of marty and Malcolm are confused), an item may well have multiple different aspects that obtain different protections for those different aspects under the different IP laws.

            Software happens to have multiple aspects and different ones of those different aspects DO obtain different protections under different IP laws for its different aspects.

            It is understanding the patent sense of utility that can set you free marty (little hope for Malcolm, given that he already professes to be a patent attorney and definitely should know better).

      3. 11.2.3

        My patent attorney’s role is to obtain patents for our company, which he does with admirable skill. It’s not to read the minds of rando Internet commenters and parrot their moro nic talking points. When that changes, I’ll let you know.

        I can’t recall you citing authority except in whatever oblique way may satisfy your cravings, but please cite a case where software was held to be something other than a workpiece or “flow through”

        To the contrary, the statutory categories have been firmly defined by caselaw and the MPEP, and simply not seeing how software and hardware are equivalents,

        Machines – a concrete thing, consisting of parts, or of certain devices and combination of devices.

        Manufactures – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations.

        How does software fit? It does not. It only fits as a Process. Do you have a citation otherwise? mmmm hmmmm.

        By the by, firmware is defined as software in every single available definition. How about a cite showing that otherwise?

        Crickets no doubt.

        1. 11.2.3.1

          It is truly amazing just how high that Peak of Mount S is for you marty. Much taller than at the river Lamus in a place called Donacon, albeit, no doubt, you have an equivalent spring.

          My comment about your patent attorney has to do with basic representation agreement – and your own signing of the oath as to the claims of your patents. He has a duty to have informed consent, and your actions show a serious lack of being informed. Further, I do wonder whether or not ANY of those obtained patents (never doubting that such obtained with admirable skill) include claims to software.

          Your perception then that asking him any of the points of YOURS that are in error (hardly the “rando moro nic” characterization that you would attribute to anyone else) very much fits. That you do not recognize this is a YOU problem.

          As to “ can’t recall you citing authority except… held to be something other than a workpiece or “flow through.”

          First, I need not provide ANY citing authority.

          Second, I HAVE provided controlling CAFC case law that explicitly provides that which you would deny. This is also a reason why I have prodded you to ask your attorney – you simply will not accept anything provided to you that does not agree with your rather strange viewpoint.

          Third, you again miss (see my reply to Malcolm on this very thread) in regards to your quip of, “ To the contrary, the statutory categories have been firmly defined by caselaw and the MPEP, and simply not seeing how software and hardware are equivalents

          You are NOT SEEING, because you are FAR too absorbed in looking at your own reflection at that pool at your own Donacon. Try to understand the Three Resistors aspect, which does reflect the Grand Hall experiment and note that – as fully explained – software is a manufacture.

          But again, as you simply do not WANT to believe me, consider as well that for software to EARN copyright protection, it must be legally fixed in a tangible medium. Do you also now reject the notion that software can earn copyright?

          Further yet, it is merely the execution of software that falls into the statutory category of Process.

          Do you really think that you can obtain copyright on a process?

          Please (yet again) ask your attorney as to YOUR talking point here.

          As to definitions of firmware, sure I can accept that firmware is a TYPE of software (and hopefully YOU recognize that not all software is firmware). This though misses the forest for the trees as ALL OF THESE wares are in fact mere design choices, and I certainly need no citation for that. And again, YOUR not seeing equivalence is a YOU problem – which is probably why you erred in your earlier retorts wanting “exactly the same” (thank goodness for small steps, as you are no longer making THAT blunder)

          Your parting words of “Crickets no doubt” is most odd.

          I have without
          F
          A
          I
          L
          always provided substantive counter points to any of your real points. You are likely merely confusing your own refusal to accept those substantive counter points – but as is so often the case with you, that is a YOU problem.

  2. 10

    Best of luck to Avery because this decision was a remarkable travesty. If the CAFC doesn’t reverse en banc, the Supremes should definitely take this case and give Moore and whoever else agreed with her a well-deserved swatting.

    Let’s consider the following:

    “A book, wherein said book contains [generic description of information with ‘important technological consequences LOL’]”

    Assume the information in question is new and non-obvious. This claim “as a whole” therefore passes 102 and 103. It also passes 112 (the skilled artisan will know how to get the text into the book) and it’s plainly useful (books are useful manufacturers for storing and transmitting information) and —crucially— the book has “important technological consequences”.

    So, according to Judge Moore’s “reasoning”, this is eligible subject matter and the floodgates are therefore wide open to creative drafters of “new book” claims who make the latest trendy arguments using the words that Judge Moore likes.

    Will any of the deep thinkers here who whine continually about eligibility jurisprudence explain how a manufacture carrying non-obvious information with “important technological consequences” gets screened out going forward? Surely you aren’t going to “dissect” the claim and “ignore” a claim element in your awesome test.

    So tell everybody how your fantasy version of 101 works to exclude a manufacture of the type described in the hypothetical claim I provided.

    Then describe how (or if) your analysis changes if information is written in a language that only a specially programmed robot can read. Then consider what happens if the manufacture is not a “book” but a “computerized display.”

    Good luck, deep thinkers. Keep it real. We all know that if this RFID claim goes down we will be returning to the Bronze Age.

    1. 10.1

      You know my answer MM. You don’t agree with it, but at least it’s coherent and repeatable.

      People read books. New, useful, non-obvious information from which utility arises inside a human mind – obviously- should not be patent eligible.

      I can’t especially see why clever cryptography, compression schemes, useful algorithms etc. should not be patent eligible, even though they are intangible and logical constructs.

      This is not a problem of law, directly. It’s a problem of philosophy and politics.

      1. 10.1.1

        MS: “I can’t especially see why clever cryptography, compression schemes, useful algorithms etc. should not be patent eligible”

        One reason: Because the applications are impossible to examine with any reliability given the malleability of “abstractions” and the malleability of language and the non-accessibility (by the PTO) of nearly all the prior art.

        Reason two: patents are completely unnecessary for promoting progress in the art of writing bug-free instructions for instructable computers in the exact same way patents are completely unnecessary for printing progress in writing text that is accurate and coherent to humans. On the contrary, given the fundamental and facile and abstract nature of the “arts” of carrying out logic and math (skills practiced by animals and toddlers), at best patents in these fields impede progress (see reason number one).

        Reason three: the “value” of developments in the areas you mention are already ridiculously inflated beyond their worth due to their current inclusion in the patent system which has created an entire well-documented culture of truly horrible lizard-brained “attorneys” and grifters (tr 0 lls, PAEs, etc), some of whom we are very familiar with. In addition, as a result of the massive over-valuation we see ridiculous amounts of money being moved into Ponzi schemes and obvious cons (“self driving” cars, “virtual reality”, “artificial intelligence”, “cryptocurrency”, etc) where that wealth could be used to promote progress in tangible materials (cheaper more effective medical devices/drugs, alternate energy sources etc).

        I can go on. There’s a reason logic and information was left out of the patent system until relatively recently and it’s not “there were no computers back then.” Logic and information was ALWAYS valuable and useful. It was also always abstract and will always remain so.

        1. 10.1.1.1

          “In addition, as a result of the massive over-valuation we see ridiculous amounts of money being moved into Ponzi schemes and obvious cons (“self driving” cars, “virtual reality”, “artificial intelligence”, “cryptocurrency”, etc)”

          ChatGPT has entered the chat.

          6’s newest AI drawn 2d women has entered the chat.

          6’s newest low interest crypto loan (possibly slowly self-repaying, and without any late fees or reqs to even make a given payment or payments period as long as you keep collateral high) has entered the chat.

          “cheaper more effective medical devices/drugs, alternate energy sources etc”

          Fantasies for the most part. Fusion has enough money, and can get more if we want to drop more from governments (private investment in it is useless for now). Other alt energy has plenty. As to medical devices, they seem to always get more expensive it seems, generally not less.

          link to romper.com

          Fun fantasies you have MM, but bottom line, the market knows better than you do by yourself. As to how patents should be involved, idk in some cases.

        2. 10.1.1.3

          To be sure, I agree with you. It would be better to just bar information inventions. Unfortunately, most of the sooper dooper tech loving world does not agree, and so the political and practical problems persist, and will persist.

          1) Yes, examining information inventions is more difficult, but then again, the bar for obviousness and written description should likewise be higher- PHOSITA knows more, and the spec/claims should be absolutely explicit, and examiners could- if there was a will to do so – be trained up.

          2) I disagree about cryptography and compression standards etc. Those things take lots of time and energy to create, they are needed, and there is a free-rider problem with zero IP protection. Is copyright sufficient? Maybe, but there are problems there too. Term length being just one.

          3) You would have to have your head in the sand to not see the utility and value of AI, and yes, driver assistance technology. Cars may not self drive yet- or ever- but they are sure as he ll safer than ever before and much of that is due to the information technology. There are dozens of computing arts that are entirely intangible, but directly improve quality of life- computational fluid dynamics, for one example, is utterly essential.

          Yes there is TONS of abuse taking place, but a much of it is because the current legal regime s ucks. There needs to be a construction of the invention early in a case, and Alice is a useful, compact 103/112 inquiry- it’s just in the wrong place. It should happen with Markman hearings, not 12(b)6 proceedings. And information valuable to human minds should be way, way outside of the patent system’s reach, because restricting thought is antithetical to human progress.

          We aren’t going to agree but your posts are always a highlight of my reading day ;-)

          1. 10.1.1.3.1

            ^^^ I am reminded of the phrase, “…the company you keep.”

            Both of you should feel insulted.

        3. 10.1.1.4

          Does your conservator know that you’re having an episode? Take your medication and you’ll feel better.

      2. 10.1.2

        New, useful, non-obvious information from which utility arises inside a human mind – obviously- should not be patent eligible.
        Except you have no basis for that “obviously” statement that is the basis of the rule that you apply. It is a rule without a rationale. Regardless, it is also a rule that has no statutory basis.

        1. 10.1.2.1

          Wt,

          marty’s perpetual hobgoblin depends on having no statutory basis.

          It is his eternal devotion to fighting a war upon terrain that he insists on not knowing.

        2. 10.1.2.2

          Wandering, things that happen inside a human mind cannot be an infringing act. That is the essence of liberty.

          As to what the statues say? They don’t say anything about abstraction, but here we are.

          So what?

          1. 10.1.2.2.1

            “Wandering, things that happen inside a human mind cannot be an infringing act. That is the essence of liberty.”

            Though I agree with this, it’s a little different than what you said above:
            “New, useful, non-obvious information **from which utility arises inside a human mind** – obviously- should not be patent eligible.”

            Diagnostic methods are a fine example of the former, with Mayo v. Prometheus being the archetype. The claim could be entirely performed in the human mind, such that reading the examples in the patent disclosure and thinking about them was technically infringement. And that shouldn’t be possible, because how do you get relief? Get an injunction ordering someone to stop thinking? It quickly turns nonsensical.

            But your latter statement doesn’t rely on the entire claim being a mental process, but just that the utility arises in the human mind. For example, improvements in computer user interfaces that are more intuitive or understandable are performed entirely in the computer… but their utility is for the human user. Should they be unpatentable, merely because if you got rid of the human, there wouldn’t be much point to the invention? And where does *that* lead? Are new textiles unpatentable, because they’re softer and less itchy than wool, but that’s an improvement realized by the human mind?

            It also suggests a parallel to the quote from Alice, at some level every invention is abstract – instead, it would be that at some level, every patentable invention has utility in the human mind, because otherwise, it wouldn’t be commercially viable and there would be no reason to invent it. A drug cures cancer, and thereby makes the patient happier. A car travels at higher speeds, and thereby makes the driver more excited. A mouse trap catches mice, which helps the human homeowner get a better night’s sleep.

            So, I think your formulation requires some tweaking: an entirely mental process raises the issues you note, but “utility to a human” can’t reasonably be a bar to patentability.

              1. 10.1.2.2.1.1.1

                A new and improved traffic light should be eligible.

                A method whereby a driver stops her vehicle upon seeing a red light should not be eligible.

                Do you have anything further to add? I didn’t think so.

                1. Your first item runs afoul of your attested stand, as the new and improved traffic light ONLY has meaning because the utility arises entirely because of information in the human mind.

                  You lose and are too dim-witted to even realize why.

                2. By the by – and as I have indicated many times now – have you patent attorney explain this to you.

            1. 10.1.2.2.1.2

              iDan,

              For example, improvements in computer user interfaces that are more intuitive or understandable are performed entirely in the computer… but their utility is for the human user. Should they be unpatentable?

              Yes, they should be unpatentable.

              Are new textiles unpatentable, because they’re softer and less itchy than wool, but that’s an improvement realized by the human mind?

              No, textiles are not a species of information. And no, being warm or not itching are not items of information, they are sensory perceptions. Dogs and cats get cold and itch. Improved textiles, and information useful to non-human actors, should be eligible for patenting.

              If you are unable to sleep some evening, consider reading my paper on the proposal. It covers the key cases and explains the limits and rationale for the test.

              link to papers.ssrn.com

          2. 10.1.2.2.2

            Wandering, things that happen inside a human mind cannot be an infringing act. That is the essence of liberty.
            Infringement is not patent-eligibility.

            1. 10.1.2.2.2.1

              No, but it’s an important part of the reasoning behind why eligibility is an issue. Courts can think about social policy, not just statutes.

              1. 10.1.2.2.2.1.1

                Courts can think about social policy, not just statutes

                You do realize why patent law is expressly different than say contract law or tort law, right?

                1. Try: there is a direct allocation of authority in the Constitution.

                  That’s not a small thing.

                2. … anon, you’re not suggesting that all court cases on patent law are invalid due to the separation of powers doctrine?

                3. No – but those in which the Judicial Branch have gone too far in writing (re-writing) legislative law from the bench ARE invalid as being ultra vires.

                  Separation of Powers and Checks and Balances ARE critical to the Rule of Law — even if disregarded.

    2. 10.2

      … a book…

      Thereby demonstrating (yet again) Malcolm’s penchant for not understanding the Written Matter Doctrine (with its critical exceptions).

      Maybe less emoting from you and more cognition, eh Malcolm?

    3. 10.3

      “Assume the information in question is new and non-obvious. This claim “as a whole” therefore passes 102 and 103.”

      Not so – the information is non-functional descriptive matter. It may well be new and non-obvious, but it has no patentable weight in the claim.

      This can be easily addressed under 102. There’s no need to twist the nose of 101.

      1. 10.3.1

        “ the information is non-functional descriptive matter. It may well be new and non-obvious, but it has no patentable weight in the claim.”

        As already stated, the information is extremely useful and has “important technological consequences.” Glibly stating that the information is “non-functional” just so you can “ignore” that element and conduct a 102 on the structural (non-abstract) part of the claim seems a bit cheeky, to say the least. Nothing in the patent act tells you to do this. It’s just a made up doctrine designed to achieve a desired result, i.e., to prevent people from using the patent system to protect data. In other words, your made-up doctrine which requires claim dissection and which is squarely at odds with the Supreme Court’s decision in Diehr is an eligibility screen (and the CAFC has admitted this).

        The point of the exercise, of course, is to illustrate that protecting ineligible abstractions (like data) with patents is presently permitted in ONE context (computing) and that’s only because some judges decided that they like it that way. The lack of a coherent rationale for the distinction is why the courts have spent years struggling with “tests” that permit some claimed abstractions to be eligible and others not. And every time some computer-related claim is found not eligible we hear this shrieking about how awful it is to “dissect claims” wah wah wah which is absurd because claim dissection is essential for a meaningful eligibility screen in our current patent system (as you just proved).

        1. 10.3.1.1

          There is nothing “glib” about understanding the exceptions to the written matter doctrine — no matter how glib YOU want to be, Malcolm.

          You have been POUNDED on this point for well over a decade now.

        2. 10.3.1.2

          “As already stated, the information is extremely useful and has “important technological consequences.””

          So does a textbook. That doesn’t mean the contents have any functional relationship to the structure of the book, nor are they given patentable weight.

          “Nothing in the patent act tells you to do this. It’s just a made up doctrine designed to achieve a desired result, i.e., to prevent people from using the patent system to protect data.”

          It’s based on century-old precedent, and Congress didn’t overrule it in any of the patent act amendments since then, so it certainly has force of law.

          1. 10.3.1.2.1

            IDan: “That doesn’t mean the contents have any functional relationship to the structure of the book”

            This phrase “functional relationship” is doing a LOT of work here and, again, it’s just a made-up rule to keep people from protecting data through the patent system. Books exist to store and convey information. Books without information are totally different from books with information. So there is absolutely a functional relationship between the information and the book, in the same way that there is a functional relationship between a serial number and the object upon which the serial number is imprinted.

            To be clear, I am not suggesting that we should jettison the so-called “printed matter doctrine” as it is an extremely effective eligibility screen that keeps most abstractions from being protected by patents.

            The problem is the widespread failure to recognize and admit what is going on and WHY, compounded by the existence of “exceptions” which seem arbitrary and which depend on bizarre (and false) assumptions (e.g., “algorithms are structures”; “data objects are structures”).

            1. 10.3.1.2.1.1

              Your feelings are noted Malcolm.

              As is your refusal to take the law as it is BECAUSE your feelings do not like the as is.

              Needless to say (but FUN to say), your feelings just do not matter from a legal sense.

    4. 10.4

      Some good AI vids for MM. Got africa, persia, greece and egypt all AI futurismed up. You bros think it’ll be a decade at the most till they overtake the slop produced in hollywood?

      link to youtube.com

  3. 9

    “Still, the “for Dummies” label has strong rhetorical appeal — should everything in that book title be considered an abstract idea?”

    Conflating, yet again, the 103 inquiry with the 101 inquiry and showing, yet again, how thoroughly f—–d up SCOTUS’ “jurisprudence” is on this.

    “I’m confident that if the Supreme Court takes this case, it would even further expand eligibility doctrine.” I think DC meant “expand INeligibility doctrine”.

  4. 8

    I have said for a very long time that the RFID and other such similar situations require congress to just speak on whether they want them to be patent eligible or not.

    But at the least this problem is a smaller one that lef ty terro rists bombing police over practically nothing.

    link to yahoo.com

  5. 7

    We will be doing this for years.

    Once again, is this a manufacture, a composition, a machine, or a process? The words of the statute seem to require an invention to be one or another, because only one invention per patent. If something can be two or more of those, it should be two inventions.

    MM points out: it can’t be a composition or manufacture. Could it be a machine component? In my mind, yes, it could be. Data is real, even if intangible. Is it part of a process? That seems most apt.

    The court would not limit “process: in Bilski, when it could have. The term “process” cannot be unlimited because every human activity is a process and some human activity cannot be patented- by common law, common sense, lack of practicality and lack of morality.

    The patent laws are not written to handle new, useful, non-obvious information.

    The distortion of what should be a simple use of 101 into a hybrid 103/112 inquiry is driven by economics- and that’s not wrong.

    The ends do justify the means in some areas. Yes you, id iot.

    It would be better to fix things so that would not be true.

    So here we go:

    Is it a process? yes

    Is the useful result of the process a species of information? yes

    Does the utility of the information arise within a human mind? No, the utility is realized by RFID data handlers, by not replicating serial numbers.

    The invention should be eligible.

    Is it obvious or anticipated? I don’t know, I’m not a PHOSITA of RFID. It could be, or it could be a good patent.

    link to papers.ssrn.com

  6. 6

    Probably should be ineligible under current law. The invention is just organizing information, and all the structural aspects appear to be undisputedly old, as is the concept of encoding an RFID circuit chip. The only difference seems to be the type of information encoded, and information is an abstract idea.

    That being said, one could question the wisdom of conducting this sort of searching analysis based on the internal record without prior art, in the Flook/Alice way.

  7. 5

    So, we have: “wherein the RFID integrated circuit chip is encoded”.

    And people argue no structure. Just f’ing insane.

    1. 5.1

      I assume encoding an RFID chip with whatever information you want was not novel at the time of the invention.

      1. 5.1.1

        Would that be a similar assumption that any and all matter are put together with protons, neutrons, and electrons?

        That certainly is not novel, eh?

      2. 5.1.2

        Yes, Kyle all encodings of circuit chip are exactly alike. All just one big abstraction. I just don’t get why companies and governments are spending 100’s of billions of dollars to try to improve those encodings when they are all alike.

        /Sarcasm off

        1. 5.1.2.1

          If all you did was change the type of information encoded, I can see why the invention would be ineligible as an abstract idea. Alternatively, given 101’s problems, it could be held invalid as obvious as a matter of law.

          1. 5.1.2.1.1

            “ If all you did was change the type of information encoded, I can see why the invention would be ineligible as an abstract idea.”

            Exactly the same as finding a “non-obvious” book ineligible because it is exactly like prior art manufactures (e.g., prior books) except for the non-obvious (but ineligible) information “encoded” on the pages.

            Welcome to the theatre of the absurd, Kyle, where we watch a bunch of overpaid lawyers and professors do backflips while trying to preserve the eligibility of information and logical operations carried out on data (aka the worst claims ever written).

            1. 5.1.2.1.1.1

              … exactly the same… book…

              It’s not as if this hasn’t been pointed out to you like a million times Malcolm.

            2. 5.1.2.1.1.2

              “Exactly the same as finding a “non-obvious” book ineligible because it is exactly like prior art manufactures (e.g., prior books) except for the non-obvious (but ineligible) information “encoded” on the pages.”

              A book is certainly eligible. It’s also certainly anticipated by existing books, since the non-obvious information is non-functional.

              1. 5.1.2.1.1.2.1

                IDan :“ the non-obvious information is non-functional”

                In fact, this book with the non-obvious information in it has important technological consequences and in places where the book has been distributed it has been observed that — as a direct result — computers are made to operate faster and more reliably. That was the intended purpose of the information. In the book. That is the FUNCTION of the information in the book, which was carefully presented (“structured”) to achieve the observed result. In no way is the non-obvious information “non-functional”.

                1. You really are demonstrating your glibness for terms that clearly are terms of art in the law.

                  You and marty make a nice pair — both c1ue1ess (except YOU profess to be an attorney, so mores the shame on you)

                2. “… this book with the non-obvious information in it has important technological consequences and in places where the book has been distributed it has been observed that — as a direct result — computers are made to operate faster and more reliably.”

                  So, you put the book next to a computer and the computer magically operates faster and more reliably? Or is it because of an intervening operation – a user reading the book and programming the computer better or improving the processor circuitry? I think you mean that the computer’s improvement is an *indirect* result of the book, not a direct result.

                  But regardless:
                  “That was the intended purpose of the information. In the book. That is the FUNCTION of the information in the book, which was carefully presented (“structured”) to achieve the observed result. In no way is the non-obvious information “non-functional”.”

                  You appear to admit that the information in the book does not cause any structural changes in the book. Accordingly, in a claim *to the book* comprising that information, it is non-functional and is given no patentable weight. Hence, the book is anticipated by any other pre-existing book.

                3. Abstract iDan,

                  Malcolm was taken to the woodshed on this point more than a decade ago.

                  Recall the Grand Hall experiment.

                4. Seizing on the word “direct” and trying to make hay over the meaning doesn’t get you anywhere and it wasn’t my point. The point is that the modified book I described has a function that is entirely related to the information stored in it and the results of that function are real and detectable. If the fact that a human is involved for some reason disturbs you, take the humans out and assume it’s book-instructable robots or computers whose activities are improved thanks to the book’s new functionality (which flows from the non-obvious info in the book).

                  Also, there’s no need to assume that “there are no structural changes to the book.” If ink is used to “encode” the information on the page, that’s a structural change (ink has a measurable weight). But I’ll go even further than any software patent applicant and specify in my claim every word and space that is typed in the book. I’ll even specify the size and shape of the book and the materials used in the binding (all of those are in the prior art). I’ll even provide a copy of the book to the PTO.

                  You’re still going to hang everything on “functionally related”? So some abstract info or logic defined at 10,000 feet that is allegedly readable by a computer (where working code has not in fact been written) is totally worthy of patent protection but a very specific (and very real) book with proven “important technological consequences” is kept out? What’s the rationale for this ludicrous disparity in treatment of otherwise ineligible subject matter (I.e., data and logic).

                5. MM: “Seizing on the word “direct” and trying to make hay over the meaning doesn’t get you anywhere and it wasn’t my point. The point is that the modified book I described has a function that is entirely related to the information stored in it and the results of that function are real and detectable.”

                  That’s not in dispute, dear boy. The issue is that the function of the information *has nothing to do with the book*. It doesn’t change the operation of the book, it doesn’t modify the structure of the book. It is irrelevant, as far as the book is concerned.

                  This is the point of the printed matter or non-functional descriptive matter doctrine. There may be deep and important meaning behind the music on a record, with the function of bringing tears to the listener, and it may be novel and non-obvious music… but it doesn’t affect the operation of the record, and therefore is not patentable over other records.

                  “Also, there’s no need to assume that “there are no structural changes to the book.” If ink is used to “encode” the information on the page, that’s a structural change (ink has a measurable weight).”

                  And yet, it’s the same structural change as any other printed book. The fact that the book contains ink may be considered for patentability. What that ink spells out may not be.

                  “You’re still going to hang everything on “functionally related”? So some abstract info or logic defined at 10,000 feet that is allegedly readable by a computer (where working code has not in fact been written) is totally worthy of patent protection but a very specific (and very real) book with proven “important technological consequences” is kept out? What’s the rationale for this ludicrous disparity in treatment of otherwise ineligible subject matter (I.e., data and logic).”

                  You’re begging the question. We’re talking about non-functional descriptive matter – the content of the information in a book that doesn’t affect the operation or structure of the book – and you’re now equating it with functions performed by a computer that *do* change the operation of the computer. The two are not equivalent for the reason we’ve been discussing, and therefore, there’s no “ludicrous disparity in treatment.”

                  Specifically, you are equating “function that modifies the operation or structure of the substrate” with “proven ‘important technological *consequences’.” Everything has indirect consequences, Mal. That doesn’t make everything patent eligible.

                  Sheesh. Patent maximalists, right?

                6. Abstract iDan,

                  Yet again, Malcolm was taken to the woodshed over his improper views of the printed matter doctrine (and its important exceptions) over a decade ago.

                  He refuses to understand.

                7. iDan and you’re now equating it with functions performed by a computer that *do* change the operation of the computer

                  So software code, which is a writing, and can be bound in a book, is non-functional? How does code running on a general purpose computer change the operation of the computer? It does not.

                  All that changes is the uses of the information processed by the unmodified computer.

                  Its the nature of the utility, not the nature of the information, which should have meaning in a test of abstraction for new, useful, non-obvious information.

                  The “substrate” of a bound book or an SSD drive or a papyrus scroll is irrelevant in any coherent philosophy on this point.

                8. marty hits a new low…

                  How does code running on a general purpose computer change the operation of the computer? It does not.

                  OMFG

                  Revisit the Grand Hall experiment (and ask your patent attorney and/or any third grader to explain this to you)

                9. Martin: “iDan and you’re now equating it with functions performed by a computer that *do* change the operation of the computer

                  So software code, which is a writing, and can be bound in a book, is non-functional?”

                  With respect to the book, yes. If it’s instead loaded into computer memory and executed, it’s functional. Whether it is given patentable weight depends on the substrate:
                  1. A book, comprising computer code. – no weight.
                  2. A computer readable medium comprising computer code that, when executed by a computing device, causes the device to perform function – weight.

                  “How does code running on a general purpose computer change the operation of the computer? It does not.”

                  Sure, it does. That’s the entire point of the code.

                10. “ 2. A computer readable medium comprising computer code”

                  Paper isn’t a “computer readable” medium? Since when?

                11. MS: “ Its the nature of the utility, not the nature of the information, which should have meaning in a test of abstraction for new, useful, non-obvious information.”

                  The utility of all instructions that are readable by computers is to instruct the computer how to apply logic to data.

                  That’s why it should all be ineligible, just as all instructions have been since forever. Where was the massive bolus of applications to protect specific punch cards?

                12. Malcolm again engages in obfuscation…

                  The point about paper (of a book) is most definitely different than paper (as punch cards).

                  This is beyond clear. That YOU want to muddle this only shows your emotional animus. Nothing more.

                  And then you join your brother-in-arms marty with the known falsehood of, “Where was the massive bolus of applications to protect specific punch cards?

                  As I noted above, the miss in regards to punch cards was more or less a miss in the singular sense by IBM in their business decision. The plain and incontrovertible FACT is that the objective physical truth that in the patent sense, software is equivalent** to firmware and is equivalent to hardware.

                  ANY prevarication on that point immediately impugns the person being factually and legally false.

                  As to your obfuscation of (my emphasis added), “That’s why it should all be ineligible, just as all instructions have been since forever.

                  You are aware – and should be aware – that an entire statutory class can be termed ‘instructions.’ It’s called the Method category.

          2. 5.1.2.1.2

            It is still a structure. You are analyzing whether there is a difference in structure and then, if not, claiming it is an abstract idea. That ignores the recitation of structure in the claim. Do we get to ignore claim elements for 101?

            1. 5.1.2.1.2.1

              Under Flook, Mayo, and Alice, you first have to determine what the actual invention is, which can sometimes be hard depending on the specification and the stage of litigation. Otherwise, anything involving a computer is always eligible because “computer” can be made a claim element.

              A fair criticism of Flook and its progeny is that sussing out what the actual invention is more laborious than it’s worth, but I guess any unclarity would result in a denial of a motion to dismiss.

              1. 5.1.2.1.2.1.1

                An even more fair criticism of Flook et al. is that it is ultra vires to explicitly 1g n0re a major reason why the Act of 1952 was passed (to remove from Court authority the ability to employ their “Gist of the Invention” methodology).

              2. 5.1.2.1.2.1.3

                Perhaps it should be eligible, but then could fall under another section of the statute. If someone takes a process that can be performed by a human with a pen and paper, and develops a program to perform that process faster using a computer, and the computer is necessary to complete the process in a more usable/useful timeframe, why is it not eligible?

                This article by Michael Borella lays out the argument better than I.

                “In re-reading many of these cases and the M.P.E.P., our conclusion is that the courts and the USPTO are struggling with the doctrine. As a consequence, decisions and policies are based on a false equivalence between computers and human minds, are riddled with post-hoc rationalizations, and rely too heavily on claim specificity to influence the use of doctrine.”

                link to jdsupra.com.

            2. 5.1.2.1.2.3

              “Do we get to ignore claim elements for 101?”

              As has been explained repeatedly for many many years, not only do you “get” to do this but it’s ESSENTIAL that you be able to do this in order to have a functioning eligibility screen. The Supreme Court knows this (and has implicitly carried out the process) and the CAFC knows this (and has acknowledged this expressly, including recognized that the so-called “printed matter doctrine” is in fact an eligibility screen that requires “claim dissection”).

              1. 5.1.2.1.2.3.1

                You continue to stress how little you know of patent law Malcolm.

                Tell me about those exceptions to the printed matter doctrine (you know, the ones that I have rubbed your nose in for more than a decade).

              2. 5.1.2.1.2.3.2

                The CAFC only seems to know this sometimes.

                “But software inventions as actually claimed are the combination of the algorithm and the computer implementation, thus requiring the computer hardware. Courts and USPTO representatives often miss this point or ignore it altogether. To make things even more confusing, there is another (albeit much shorter) line of cases from the Federal Circuit holding that it is improper to bifurcate a claim in this manner in the eligibility inquiry. See Gree, Inc. v. Supercell Oy as a recent example. The Federal Circuit wrote, in relation to a PTAB decision, “[t]o the extent that the Board meant that a proper § 101 analysis may consider some claim limitations only at Alice step one and others only at Alice step two, we do not agree with its reading of Supreme Court precedent.” So on one hand, the Federal Circuit embraces the separation of claim elements in the eligibility analysis, and on the other tells us that doing so is improper.”

                link to jdsupra.com.

            3. 5.1.2.1.2.4

              Yes, for 101 you look at the “invention,” not the “claim.” This is textual reading of 101.

              1. 5.1.2.1.2.4.1

                It is NOT textual reading of 35 USC 101.

                Not at least how it is attempting to be spun here with some gloss that the Court can do whatever it wants.

                Recall that Congress acted in 1952 to explicitly remove the power of the Court as the Supreme Court had abused that power with its “Gist,” “Invention,” “Gist of the Invention,” and dozens of similar terms.

                Congress explicitly choose otherwise in creating 35 USC 103.

                Congress explicitly choose otherwise in stating that the inventor (and NOT the Judicial Branch) gets to define what the invention is.

  8. 4

    sought a patent monopoly over the simple concept of treating one long serial number as the combination of two shorter numbers
    “[C]laims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.” Diamond v. Diehr. In this instance, the claimed invention, as a whole, is directed to an improved RFID transponder.

    “At some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'” Alice Corp. V. CLS Bank (citing Mayo). As such, it becomes a trivial exercise to declare something an abstract idea after picking apart little pieces from a claim and analyze them in isolation.

    In Alice, the Supreme Court also stated “[w]e have described the concern that drives this exclusionary principle as one of pre-emption.” The RFID transponder being claimed hardly preempt all uses of the alleged abstract idea (i.e., “treating one long serial number as the combination of two shorter numbers”) since this concept has wide applicability.

    1. 4.1

      … won’t stop those (like Malcolm, among others) that insist on the odd “Point of Novelty” in wanting to judge eligibility.

      Nor stop the propaganda narrative to that effect.

    2. 4.2

      “[C]laims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.” Diamond v. Diehr.

      As a matter of basic logic, given our system’s incredibly lax rules governing how applicants describe their alleged invention (aka “claim drafting”), this passage from Diehr was d.o.a. It never made sense and it never will. Also this irrefutable point about this massive incorrect statement in Diehr was made decades ago and has been made repeatedly (and never refuted) continually since that time. In that same time, Diehr has been predictably wiped entirely off the legal map except for the utterly trivial proposition that identifying a single ineligible or eligible element in a claim does not by itself determine the ineligibility or eligibility.

      Claim dissection is not only NOT prohibited in the US system as it stands. It’s fundamental and necessary.

      If you lack the intelligence to understand and accept this, just raise your hand and I’ll provide a simple example to help you (for the thousandth time).

      1. 4.2.1

        ^^^ your ego and emotions (read that as unwarranted elitism) have long been your major problem in adapting to the last two Kondratiev waves of innovation.

        Pull your head out.

        1. 4.2.1.1

          “ the last two Kondratiev waves”

          Here’s a Kleenex, Billy. Wipe up now and don’t do that again in public.

          1. 4.2.1.1.1

            Your reply is meaningless and does not address the substantive point out to you.

            Shockers, I know.

  9. 3

    I don’t find this ADASA Inc. v. Avery Dennison CAFC 101 decision that surprising, since (1) there are prior CAFC decisions suggesting that specific Improvements in the operation of computers may avoid 101 rejections, and (2) the cited claim is structurally limited to an RFID transponder with an antenna structure formed on a substrate and an RFID integrated circuit Chip which is electrically coupled to the antenna structure.
    The above-cited paragraph of the petitioner starts off with a 101 “abstraction” argument and then somewhat strangely appears to switch to a 103 obviousness argument based on telephone numbers and/or a named publication. What kind of apparently losing 103 defense, in the suit and/or in an IPR, did the defendant put on below if the latter feature was really the only novel claim element?

    1. 3.2

      > What kind of apparently losing 103 defense, in the suit and/or in an IPR,

      IIRC, the defendant declined to file an IPR….my guess/theory remains that the book doesn’t actually discuss RFIDs at required level of detail for 102/103, thus the hand-waving 101 defense that emphasizes the “…For Dummies” title.

      1. 3.2.1

        Why not cite MAC addresses, which uses an organizationally unique identifier in the most significant bits and an incrementing device-specific serial number in the least significant bits, and predate this by decades?

    2. 3.3

      Re point (1) above see Enfish, LLC v.Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and the exception noted in the middle of page 3 of Alice.

    1. 2.1

      Agreed NW. This is not a close call.

      Avery, look to 102 / 103 for the relief you seek.

      You’ll not find it with 101.

      Petition denied . . . and just hope no one else uses your 101 argument against your own patents.

      Now wouldn’t that be a kick . . .

    2. 2.2

      The problem (as I am sure both of you are aware) is that Avery is likely to find the relief it seeks in 35 USC 101, precisely because, while it is ‘so outrageous that anyone thinks this is ineligible,’ the folks (like Malcolm) have so tainted reality with the narratives of their propaganda, that the law is in shambles.

  10. 1

    “a novel data structure”

    There is no “structure” here in the patent-relevant sense of the term. This is “structure” in a sense more similar to “sentence structure” or “business structure” (neither of which are eligible subject matter, regardless of how non-obvious or valuable they might be).

    How much does the “data structure” weigh? What’s the melting point? Serious questions.

    Or you could just admit what rational people without strange obsessions already know: data “structures” are abstractions and therefore ineligible for patenting.

    1. 1.1

      Judge Moore: “important technological consequences”

      Utterly irrelevant. Books and policies have “important technological consequences”, too. Totally beside the point.

      1. 1.1.1

        She’s just saying it is unquestionably directed to the useful arts, here being where the courts have recognized a distinction between the useful arts and abstract ideas generally.

    2. 1.2

      in the patent-relevant sense

      Malcolm, you have shown a consistent inability to understand what ‘patent-relevant sense’ means.

      Your feelings simply do not reflect a modern understanding of innovation (read some Schumpeter innovation cycles).

    3. 1.3

      >ow much does the “data structure” weigh?

      I’d guess the claimed manufacture i.e., the “RFID transponder” weights about 1 gram.

      1. 1.3.2

        Best of luck to Avery because this decision was a travesty. If the CAFC doesn’t reverse en banc, the Supremes should definitely take this case and give Moore and whoever else agreed with her a well-deserved swatting.

        Let’s consider the following:

        “A book, wherein said book contains [generic description of information with ‘important technological consequences LOL’]”

        Assume the information in question is new and non-obvious. This claim “as a whole” therefore passes 102 and 103. It also passes 112 (the skilled artisan will know how to get the text into the book) and it’s plainly useful (books are useful manufacturers for storing and transmitting information) and —crucially— the book has “important technological consequences”.

        So, according to Judge Moore’s “reasoning”, this is eligible subject matter and the floodgates are therefore wide open to creative drafters of “new book” claims who make the latest trendy arguments using the words that Judge Moore likes.

        Will any of the deep thinkers here who whine continually about eligibility jurisprudence explain how a manufacture carrying non-obvious information with “important technological consequences” gets screened out going forward? Surely you aren’t going to “dissect” the claim and “ignore” a claim element in your awesome test.

        So tell everybody how your fantasy version of 101 works to exclude a manufacture of the type described in the hypothetical claim I provided.

        Then describe how (or if) your analysis changes if information is written in a language that only a specially programmed robot can read. Then consider what happens if the manufacture is not a “book” but a “computerized display.”

        Good luck, deep thinkers. Keep it real. We all know that if this RFID claim goes down we will be returning to the Bronze Age.

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