by Dennis Crouch
As I was reading the Federal Circuit’s nonprecedential decision in Realtime Data v. Array Networks, I noted the court’s repeated statements about how the broad functional claims lacked support in the specification. Although I knew this was an eligibility case, the language made me think enablement and written description. Then I reached Judge Newman’s dissenting opinion that begins:
This is properly an enablement case. . . . § 101 was never intended to bar categories of invention in this way. This judicial exception to eligibility is an unnecessary and confusing creation of the courts. This case is an example, for the enablement requirement of § 112 is better suited to determining validity of these claims than is the distortion of § 101. I respectfully dissent, and would remand for determination of validity under § 112.
Slip Op. (Judge Newman in Dissent).
The seven patents here all relate to methods of selectively compressing files to improve speed/storage capacity. The basic idea behind the inventions is to quickly figure out whether it would be faster to compress & store a data block rather than simply store the uncompressed block. This generally appears to be a technical question whose solution should be patentable, but the district court all the claims ineligible as directed to one or more abstract ideas. For instance US10019458 was deemed directed to the abstract idea of “compressing data using two distinct lossless compression algorithms such that the time to compress and store the first data block is less than the time to store the uncompressed data block.” On appeal, the Federal Circuit affirmed, finding the claims directed to abstract ideas and lacking any eligible inventive concept under Alice Step 2.
The majority opinion included substantial animus to functional claim limitations:
- Ineligible if simply “claiming only a result.”
- Ineligible if merely “stating a functional result.”
- Ineligible if fail to “identify how the functional result is achieved by limiting the claim scope to structures specified at some level of concreteness.”
The policy debate over functional claiming is longstanding as was evident in the Supreme Court’s recent decision in Amgen v. Sanofi. This case continues that debate in the context of 101.
The majority opinion was written by Judge Reyna and joined by Judge Taranto. The majority opinion does not reference enablement or Judge Newman’s dissent.
Newman’s dissent is only 3 pages and begins with the argument that the claims should be evaluated under 35 USC 112 for enablement, not 101 for eligibility. Newman argues the enablement requirement of 112 already addresses overbroad functional claims by requiring the specification teach how to make and use the invention. Using 101 eligibility to target functional claims is therefore unnecessary. Of course eligibility offers a short-cut for judges and accused infringers.
Judge Newman also makes the larger claim that section 101 was never intended to be a “limitation on patentable subject matter” but rather merely an introduction to the statute. Expanding upon this, she criticized the judicial exceptions to 101 eligibility created by the courts as an “unnecessary and confusing creation” and identified the the current 101 law a “distortion” of the statute that creates “uncertainty” and “stifles innovation.”
You keep on using that word ‘abstraction’ for things that clearly are not abstractions she says, utterly failing- as always- to define “abstraction”.
This amongst the near dozen comments- spam basically- that constitute the activity on this thread today.
I’ll be happy to define the word. An abstraction is irreducibly the presence of a concept in a human mind.
No human mind, no abstraction.
“amongst the near dozen comments- spam basically”
LLet’s see what is the best way to categorize this labeling from marty….
Hm, the simplest way is leading:
B$
“An abstraction is irreducibly the presence of a concept in a human mind.”
Presence…?
Nope – perhaps you meant a totality. ALL patents have some presence in a human mind (that is how the legal concept of utility is recognized).
This is literal gibberish.
Surely you were not expeanything else…
marty – your lack of understanding the domain of patents does not make it gibberish (literal or otherwise).
Billy is the master of his domain, Marty. Never forget that.
Ha!
Greg “I-Use-My-Real-Name-Except-When-I-Don’t” DeLassus — replying to Malcolm (whom he has asserted that he has blocked) to something that I wrote (whom he has asserted that he has blocked).
¯\_(ツ)_/¯
I think you missed the word “irreducably.” Regardless, Judge Newman was right and “The Prophet” is, as many so-called prophets are, closer to Cuculidae than celestial. Generally, however, I would not trust nearly anyone who regularly frequents the comments section here to drive a car, let alone draft a patent application, given the propensity to veer violently off course. And I wouldn’t leave a child in your presence, given the proclivity toward random acts of mean ness and general lack of basic d – cency. So glad I never met you all before falling in love with patent law or I might have reconsidered.
“No human mind, no abstraction.”
Case in mind: traffic lights.
No human mind to understand the utility, no patent.
You still need to be able to both understand this and integrate it into that very shallow puddle in which you so adore your reflection.
It is not coincidence that Judge Newman regularly points out the general lack of understanding by the other Fed. Circ. Judges of the patent law, let alone any of the technology that finds itself in front of them, is followed by them kicking her off the bench as not mentally fit. “Mentally fit” appears to mean “agrees with our creative interpretation of the law and technology.”
There is zero basis for the assertion that Newman is being “kicked off the bench” because of her alleged expertise or her alleged positions on various aspects of patent law.
Au contraire. I have seen zero evidence of lack of mental fitness, which is the alleged basis for her removal. I have seen *lots* of evidence that she is regularly embarrassing the rest of the court for their lack of mental fitness for the role. When those in power begin to blame others for faults that they don’t have, it’s usually a matter of transference.
“I have seen zero evidence of lack of mental fitness”
Start at page 33 of the Report that Dennis just shared with us. There’s 20+ pages of evidence there and it’s a sad situation.
For what it’s worth, the bizarre claim in her most recent dissent that section 101 is just a toothless preamble is also a sign of a lack of mental fitness.
To judges who lack any technical background, every patent application is going to look like an abstract idea since they have no concrete idea of what is currently the state of the art. Judge Newman who has a technical background is correct again that 112 is the proper criteria to evaluate the application since she discerns the technical novelty of the innovation. (Newman has a PhD in chemistry and was a research chemist/inventor as well as a patent attorney.) Yet another example why we need Judge Newman on the court, and more judges like her.
+1
Her 101 comments are exactly right, it’s the exception that will swallow everything. Just like the old 2nd circuit gist or heart of the invention test – that was specifically overturned with the ’52 Act and the codification of 101,102,103 – No patent was valid in the old 2nd circuit.
I think you’re thinking of the 8th circuit. Judge Hand was on the 2nd circuit along with his cousin, and they were relatively sunny toward patents
Kyle – YOU may want to refer to something else. iwasthere’s point is precisely as he put it.
Good point. See also, KSR – common sense (in hindsight!).
+1
The bottom line is that every claim can be said to be directed to an abstract idea under current case law.
That information processing requires time, space, and energy to transform represented energy. Currently actors are striking because they are afraid of these information processing machines taking their jobs.
Additionally, the conservation of information is considered a fundamental law of physics.
But here we are.
101 is patent law for the lazy. Do you know the claims just have to be invalid, but not exactly sure why? Just toss in all your grievances (too broad, vague, obvious, functional, whatever) and conclude ineligible. No need to formally establish what is in the prior art, level of skill, amount of experimentation or consider unexpected results. That stuff is too hard to prove up. But hop over to eligibility law, where we get to philosophize about what is abstract and what elements qualify as significantly more, easy-peasy. 101 jurisprudence is a word salad of 102, 103 and 112 law minus the rigor.
+1
+1
+1. I concur with my esteemed colleague.
Well, although I agree with the sentiment I’m not sure that it’s right to dismiss as “lazy” those who deploy the 101 tool to despatch any claim that ought not to have been issued. I mean, when all the other tools (102,3,12) are unavailable because over the years they are become so blunt and cumbersome that they are simply “too hard” today to wield with any useful effect, what else is a poor judge supposed to do, to serve the interests of swift justice between the parties?
Is it not nearly always the case, that one of the parties in dispute will gain an unwarranted and inequitable advantage by stringing out the duration of the litigation until it is more or less endless? And is it in the interests of justice passively to let that happen?
What Oldtimer said.
+1
Functional claiming at the point of novelty is what is “lazy”. Claiming logic and facts in a prior art context is “lazy”. Failing to do even a minimal amount of work to understand the law and the prior art is “lazy.”
In short, there is a context for the rise in the use of 101 and ignoring that context is … lazy.
“No need to formally establish what is in the prior art”
Say what? The relationship of the claims to the prior art is established in nearly every 101 case, mostly by admission or by the fact there is no dispute between the parties as to what was in the prior art. The only exceptions are the rare cases where the claims are pure abstractions.
“level of skill, amount of experimentation or consider unexpected results”
Why would you expect these considerations to be part of a subject matter eligibility analysis? Makes no sense.
More of Malcolm’s canard about ‘point of novelty.’
The claim as a whole IS the ‘point of novelty.
You seem unable — AND unwilling — to grasp this.
“ The claim as a whole IS the ‘point of novelty.”
Your idiocy is only matched by your shameless lying about literally everything. What a disgusting excuse for a human being.
Once again you project, as YOU are the one with shameless
L
Y
I
N
G
You have never been able to show anything that I have posted as being a
L
I
E
But you be you (who the F else would want to be you?)
As we all know, Billy, when presented with example of your l i e s, you will deny saying them (or assert falsely that some context is missing), or you will redefine the term “l i e” (or simply pretend that there is a different meaning to the term without telling anyone what it is).
You are clinically mentally ill.
“As we all know”
None of what you say after that point is true.
But you (continue to) be you.
Justice Breyer’s parting gifts reviving all those anti-patent subjective doctrines from the 2nd circuit.
iwasthere,
Thank you for reminding us that we should not be looking at the Supreme Court cases from any type of ‘monolithic’ viewpoint, and really do need to understand the various individual proclivities of the members of the Court (and courts).
+1. Yes, that.
A method of programming a computer is either a patentable process or it’s not. The easiest solution would be to just answer that question in the negative, citing the machine-or-transformation test, and move on. Unfortunately, the Supreme Court cut off that escape hatch in Benson, Flook, and Bilski. It’s hard to say that a series of steps (or aspects of software written to look like steps) are ineligible if there’s no firm definition of process.
I do agree that the line of Federal Circuit cases asserting that “claiming a functional result” is ineligible are dubious. It’s again a consequence of not asking what the actual steps are and having no coherent definition of “process”.
what the actual steps are
No claim ever describes all of the actual steps in the precise manner by which the process steps are to be performed. This is the problem of trying to import an enablement requirement into the claims. You can always find something missing — and hence ambiguous or “abstract”.
A process is a series of steps. Why shouldn’t a claim to that process “particularly point out and distinctly describe” those steps?
A process is a series of steps. Why shouldn’t a claim to that process “particularly point out and distinctly describe” those steps
35 USC 112(b): “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”
Pointing out all of the steps is not necessary to particularly point out and distinctly claim the subject matter regarded as the invention. Perhaps the invention uses a well-known “functional” step that could be performed a 1,000 different ways. Which one of those different ways may not (and is likely not) what the inventor regards as the invention. For example, if the claim recited “storing an identifier within memory,” there are tens of thousands of different ways that could be performed — each with some unique set of steps. However, the particularity of those sub-steps are not part of the invention — rather, it is the storing the identifier within the memory (along with other recites steps) that serve to distinguish the invention over the prior art.
These claims are generally one step: write computer program having the following characteristics.
There are only a few coherent options for when a process like that could be eligible: (1) always; (2) never; (3) when a physical change is accomplished by use of the computer, i.e. basically never; (4) when the process improves the functioning of the computer itself vs merely organizing or sending information. (4) is the closest to current CAFC precedent, but it’s still somewhat vague and unevenly applied.
The eligibility of software is an incredibly vexing issue. I’ve been doing this awhile, and I’m still not sure what the right approach is.
Your admission surprises no one.
Maybe you should consider doing something else.
Kyle I’d invite you to review my thoughts on how to solve the vexing problem of information inventions.
link to papers.ssrn.com
>These claims are generally one step: write computer program having the following characteristics.
These claims recite five distinct operations. There is a huge difference between a combination of functionally-described operations and what is traditionally considered to be “functional claiming.”
FWIW, you really only see true functional claiming nowadays in pharma patents.
+100
In an important sense, every process claim must be a result claim, because the concept of a process without a result is an oxymoron.
Every process patent should have it’s useful result construed as a matter of law, just like Markman does for the words in the claim.
The nature of the result is the entire problem with the current eligibility regime . If the useful result of a process is some species of information, the patent system needs a coherent way to distinguish eligible information results from ineligible information results.
There is a simple answer, but it’s not the MoT.
In many reasonable people’s minds, certain kinds of information results should be patentable from a policy or philosophy standpoint. Other reasonable people disagree.
The simple answer has to be a workable policy compromise easily understood by everyone involved.
Seems like it’s basically: analyze the actual content of the file (using prior art techniques) to determine which prior art data compression method to use, and then use them.
I concede you have superior knowledge of this technology, so please explain to me what this invention purports to add to the art.
Of course one needs to point out the steps with “particular”ity, but how much particularity varies from case to case.
I was going to 1g n0re the hidden signaling to various newspaper items from Greg, but the Krugman item is too much.
Why is anyone still following Krugman? His stuff is pure propaganda.
In perfect non-ironic symmetry, Krugman has never been better, being one of the very few economists to predict and identify several inflation affecting processes in the post Covid recovery- seeing beyond knee-jer k inflation fears and always fearful of the REAL destroy er: deflation. We have been fighting deflation off and on for over 40 years. Republicans may love them depressions, but any sane person does not.
That YOU think that Krugman has ‘never been better’ says far more about you that you realize marty.
(it’s not good)
You are actually dumber after reading Krugman.
“ You can always find something missing — and hence ambiguous or “abstract”.”
And yet somehow tons of process claims are obtained and licensed all the time, and reasonable patent attorneys are able to predict with high accuracy which claims are likely to run into serious 101 or 112 trouble.
What is your problem again? Oh, right. Your favorite claims stink.
“Easiest solution”…
Except not — not to anyone except an anti-patentist.
If Section 101 and the four statutory categories are merely preamble, where does the very concept of “eligibility” come from?
Everything would be eligible; some of it patentable.
If Section 101 and the four statutory categories are merely preamble, where does the very concept of “eligibility” come from?
You tell me. Where is it in the statute?
Let’s review the text of 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The first word is “[w]hoever” — not whatever. This would seemingly exclude AIs from being inventors becomes AIs are not a who but a what.
Then we get to “invents or discovers” — we will skip this for now.
Then we get to “any” — notably not “some.” While there is a limitation to “any” it is “subject to the conditions and requirements of this title” — not ‘subject to the conditions and requirements of judge-made law.”
The “new and use” modifies “process, machine, manufacture, or composition of matter, or any … improvement thereof.” Almost everything being invalidated under 101 these days would be considered a process, machine, manufacture, or composition of matter or improvement thereof.
Patent eligibility is a construct of the courts — not the statutory law.
>Patent eligibility is a construct of the courts — not the statutory law.
And a relatively-recent construct (in patent law terms) at that. As late as 1980, the standard was clearly “anything under the sun made by man.”
“As late as 1980, the standard was clearly “anything under the sun made by man.”
This was a euphemism and never the actual standard. The judicial exceptions and related doctrines were around before then and never ceased being applied, even after the miserable d.o.a. decision in Diehr.
Your (incessant) whining indicates that you never believed your own assertion here.
But you be you, Malcolm.
As late as 1980…
I think that this gets it backwards. The current anti-software bias was actually the status quo ante before the 1980s (e.g., Benson). The era of relatively pro-software patent policy is a recent (but short-lived) development. Alice represents a return to the long-term trend, not a break with the historical norm. Most of us in practice today have spent most of our careers under the lenient regime, so that seems “normal” to us and Alice seems like the “deviation,” but the reality over the long sweep of U.S. patent history is the other way around.
I happen to think that the Diehr/Chakrabarty dispensation is better policy than the Myriad/Alice dispensation. One should not let this policy preference, however, cloud one’s understanding of the actual legal history.
Wow – equating the Supreme Court AND Hunter Biden as being scandals on par….?
The “Intelligencer” is an abject example of 1984isms.
The concept of subject matter eligibility is plainly in section 101. Are you trying to tell us that you don’t know what the words “subject matter eligibility” mean? Or that the concept itself is too confusing for you? Because that’s what it sounds like.
I do realize there is a legal strategy out there characterized by the advocate pretending to be born yesterday. You seem to rely on it rather heavily.
Maybe think of the difference between patentability and patent eligibility.
“Discovery” that used to mean going into the rain forest and isolating a molecule that, let’s say is the cure for cancer. Now, however, that naturally occurring molecule is not a discovery at all but barred from patent under 101 because it was found in nature. Clown world.
coming soon (aka, already here), ALSO not eligible because the discovery was NOT by the hand of man, but rather was instead discovered by an AI machine….
(and let’s not forget the state of that OTHER non-real person legal fiction of the Person Having Ordinary Skill In The Art that is AI-equipped — especially for those who still want to cling to the notion that AI can not actually ‘generate‘ anything that was not already there)
Why was this opinion deemed non-precedential?
Judge Newman is spot on! Section 101 has become such complete nonsense!
Speaking of functional claiming, I once had a very interesting discussion with a patent practitioner who believed in nothing but functional claiming (and instructed his associates in that style). It was interesting from a philosophical point of view but I remained unpersuaded by his view that defining structural was tantamount to a sin.