by Dennis Crouch
In 2022, the Federal Circuit issued a Judge Hughes decision in IBM v. Zillow invaliding the claims of IBM’s asserted claims as ineligible subject matter. Intl. Bus. Machines Corp. v. Zillow Group, Inc., 50 F.4th 1371 (Fed. Cir. 2022) (U.S. Patent No. 9,158,789). In that case, Judge Stoll dissented in part, arguing that dismissal on the pleadings was inappropriate because the patentee had alleged plausible and specific facts showing that the claims embodied inventive concepts.
Now in 2024, the Federal Circuit has issued a new opinion in separate IBM v. Zillow case with patents from a different family. U.S. Patent Nos. 6,778,193 and 6,785,676. Seemingly by happenstance, Judges Hughes and Stoll were both on this panel. Judge Hughes again wrote the majority opinion affirming the motion to dismiss on eligibility grounds; Judge Stoll again dissented-in-part, concluding that the district court should have construed the claims (or preliminary relied upon IBM’s proposed construction) before deciding eligibility.
Intl. Bus. Machines Corp. v. Zillow Group, Inc., — F.4th — (Fed. Cir. January 9, 2024)
The two asserted patents related to improving the display of search results to users by using “visual workspaces” (the ‘193 patent) and “user context vectors” (the ‘676 patent) to better capture user preferences and context. The majority found these techniques covered only abstract ideas of “identifying, analyzing, and presenting certain data to a user.” This holding parallels the 2022 IBM decision as well as others, such as Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed. Cir. 2020).
In dissent, Judge Stoll argued that the majority failed to properly consider IBM’s proposed construction of the term “user context vector” in the ‘676 patent claims. IBM asserted this term should be construed as “an n-dimensional vector derived from the combination of user context and previous interaction with the system,” which Judge Stoll argued “add[ed] a degree of particularity.” But the majority stated Zillow had not disputed this construction, so there was no claim construction issue for the district court to resolve.
A key dispute in the case centered on whether IBM’s allegations of technological invention beyond the abstract idea were sufficient to survive dismissal. The majority held these allegations too “generic.” contrast, dissenting Judge Stoll argued reversal was warranted because “IBM has demonstrated that its claims plausibly recite an inventive concept under its proposed construction.”
Representative Claim 1 is below. What do you think?:
1. A graphical user interface for a customer self service system that performs resource search and selection comprising:
a first visual workspace comprising entry field enabling entry of a query for a resource and, one or more selectable graphical user context elements, each element representing a context associated with the current user state and having context attributes and attribute values associated therewith;
a second visual workspace for visualizing the set of resources that the customer self service system has determined to match the user’s query, said system indicating a degree of fit of said determined resources with said query;
a third visual workspace for enabling said user to select and modify context attribute values to enable increased specificity and accuracy of a query’s search parameters, said third visual workspace further enabling said user to specify resource selection parameters and relevant resource evaluation criteria utilized by a search mechanism in said system, said
degree of fit indication based on said user’s context, and said associated resource selection parameters and relevant resource evaluation criteria; and,a mechanism enabling said user to navigate among said first, second and third visual workspaces to thereby identify and improve selection logic and response sets fitted to said query.
As an aside, the panels of the two cases were not identical. In the IBM 2022, the Judge Reyna joined the majority, in IBM 2024, Judge Prost joined the majority.
Goutam Patnaik (Desmarais) argued on behalf of the patentee IBM, Steven Seigel (Susman Godfrey) argued for the defendants.
I was lost at the preamble …
1. A graphical user interface for a customer self service system that performs resource search and selection comprising: …..
Who does what? Does the GUI “perform”….or does the “customer self service perform”…
Has a “customer self service system” or “resource search and selection” even been defined yet? Why include such detail?
I guess that’s my biggest question, why draft a claim like this to begin with?
Good question as to why draft a claim like this.
Ahh my old friend IBM. Can’t say I’m ever sad to see them lose a case.
Despite MM’s certainty that most of these cases are predictable, this is a prototypical case of having zero idea how an opinion will look or what the judicial philosophy of each jurist may mean to the outcome. Happy to see Wandering explicitly acknowledge that claims are abstractions made of words, and claims aren’t inventions. Unless/until some doctrine comes along that regards abstraction in claims differently than abstraction in inventions, it will be constant random conflation.
Handily, AI can help me comment on these threads. Here is what Bard had to say about it:
Prompt:
can you summarize the published paper “subject matter eligibility in the information age” by martin snyder and relate his thoughts to existing patent law?
******************************************************
In his paper “Subject Matter Eligibility in the Information Age,” Martin Snyder argues that the current patent system, designed for the Industrial Age, struggles with process-based inventions involving information in the digital era. He proposes several adjustments to address this disconnect:
Identifying the Problem:
Current patent law, based on concepts like “things” and “machines,” doesn’t adequately handle inventions whose main output is processed information.
Applying Industrial Age legal frameworks to information-based inventions leads to inconsistent and unpredictable outcomes, hindering innovation in areas like computer and biotechnology.
Proposed Solutions:
Focus on Results: Snyder emphasizes the need for process-based inventions to have a clearly defined and tangible result, even if that result is information itself.
Enhanced Markman Procedure: He suggests expanding the “Markman” procedure (which defines claim terms) to explicitly address both subject matter eligibility and patentability, promoting clarity and consistency.
Separate Eligibility and Patentability: Snyder argues for distinct tests for subject matter eligibility (whether something can be patented) and patentability (whether a specific claim is valid). This allows for efficient screening of ineligible claims while leaving room for innovative information-based inventions.
Focus on Human vs. Non-Human Actors: He proposes considering the target audience of the information to assess eligibility. Information consumed solely by humans might be ineligible, while information used by non-human actors (e.g., machines) could still be patentable.
Relationship to Existing Patent Law:
Snyder’s proposals don’t drastically overhaul existing patent law but aim to refine its interpretation and application in the context of information-based inventions.
His focus on results aligns with established legal principles, while acknowledging the unique nature of information as a patent output. The proposed expansion of the Markman procedure builds on existing frameworks but adds a specific focus on eligibility questions.
Distinguishing between human and non-human information consumption introduces a novel factor for eligibility analysis but still operates within the broader concept of public benefit inherent in patent law.
Overall, Snyder’s paper challenges the rigid application of Industrial Age patent law to the Information Age and proposes nuanced adjustments to foster innovation in areas like software and artificial intelligence.
While his ideas face ongoing debate and refinement, they offer a valuable contribution to the critical discussion on subject matter eligibility in the 21st century.
I hope this summary is helpful! Please let me know if you have any other questions about the paper or related topics.
I love that Bard, thank you
You’re welcome! I’m glad you found the summary helpful. Is there anything else you’d like to know about “Subject Matter Eligibility in the Information Age” or other related topics in intellectual property law? Perhaps you’d like to delve deeper into specific aspects of Snyder’s proposals or explore how they’ve been received by the legal community? I’m happy to assist in any way I can.
“ acknowledge that claims are abstractions made of words, and claims aren’t inventions. Unless/until some doctrine comes along that regards abstraction in claims differently than abstraction in inventions, it will be constant random conflation.”
That is most decidedly NOT what that “admission” was about.
Wandering appointed you their mouthpiece did they?
No need to be appointed – you are just trotting out again your tired tripe.
This is already covered under post 2 below.
Let’s just cut through the ridiculous whining by WT and state the obvious: if you see a claim like the one at issue in this case and you believe for ONE SECOND that it has a likelihood of surviving litigation then you are incompetent. If you actually draft a claim like this, accept money for it, and tell your client that it is likely to survive any kind of post-issue challenge, then you are a fraud and should be disbarred.
It’s 2024 and, as predicted, the patent maximalist w a n k e r s just never give up the whining. They are damaged in infants with only one thing on their sad little malformed minds: their own pocketbooks. Read always this.
“ Read always this.”
=> Twas ever thus.
I’m so impressed by these revolutionary powerful computers! Their ability to assign context attribute values to dynamic query resources without thresholding configurable input gates never ceases to amaze.
The invitation still is there for you to abstain from using anything that you would deny innovation protection to.
And yet, here you are.
IBM v. Zillow:
We agree with the district court that the claims are directed to an abstract idea. As with the ’193 patent, the claims are directed to improving a user’s experience when viewing search results but do not contain any specific mechanism for doing so. For example, representative claim 14 uses results-oriented language, such as “receiving a resource response set of results,” “receiving a user context vector,” “mapping the user context vector,” and “controlling the presentation of the resource response set,” without any explanation for how these steps are carried out. Thus, we agree with the district court that the claims of the ’676 patent are directed to the abstract idea of displaying and organizing information.
Analysis such as this exemplifies with judges with no patent experience should not be sitting on a court that specializes in patent law. “The purpose of claims is not to explain the technology or how it works, but to state the legal boundaries of the patent grant.” S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1369 (Fed. Cir. 2001). However, what Hughes is complaining about involves exactly the question about how the technology works. The analysis presented above evidences a complete failure to appreciate the difference between 112(a) and 112(b) and the role of the specification versus the role of the claims. As stated in 112(a), “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” It is the role of the specification (in conjunction with the knowledge of a person skilled in the art) to explain how the steps are carried out. However, Hughes criticizes the claims as not having “any explanation for how these steps are carried out.” He is asking the claims to do something that they aren’t supposed to do.
If Hughes had any prior experience in patent law, he should have known that the role of the claims does not involve an explanation as to how the steps are carried out. To provide a real explanation as to how steps are carried out (even in simple inventions) wouldn’t involve 150-200 words (a medium-sized independent claims) but more likely 1500-2000 words if not considerably longer (if you don’t take into account the knowledge of those skilled in the art). If I were to write a claim directed to a jet engine that fully explained how the engine worked and how to make/use it, the claims would be millions of words long.
It seems readily apparent that Hughes has looked at the claims and said to himself “I don’t understand how this works and thus it must be abstract.” However, claims aren’t written for someone like Hughes (or Prost, who was also on the panel) to understand in their entirety.
Ultimately, the flaw in Hughes logic is that the criticism of “without any explanation for how these steps are carried out,” can be levied against any method claim. By way of example, one might argue that a 3-step method claim can be further explained using a more-detailed 8 step method claim, which would meet the requirement. However, it doesn’t take much effort to declare that each of the 8 steps are themselves aren’t sufficiently explained. I can keep performing that exercise until those original 3-steps are further described using 999 steps. At that point, my 150-200 word claim becomes 10,000 words and nearly impossible to infringe — which may be the true intent of the (il)logic being applied here. Make the claims so long and detailed that they cannot be infringed.
There are different ways to neuter the US patent system without actively destroying it. This appears to be one of them.
Big +1.
Sounds like the only way to satisfy Hughes and others of his ilk on the CAFC is to put “I claim” in front of the specification; including each of the drawings.
Even following SCOTUS’ unconstitutional Alice decision results in these claims being easily eligible.
Big Blue and their counsel must be spitting nails over this off-the-rails decision.
Rightfully so.
Well put, a very clear, easy to understand explanation. Thank you
“It seems readily apparent that Hughes has looked at the claims and said to himself “I don’t understand how this works and thus it must be abstract.” However, claims aren’t written for someone like Hughes (or Prost, who was also on the panel) to understand in their entirety.”
Same thing happens during patent prosecution with Examiners. In 9/10 cases where there is an enablement/written description rejections, the rejection is based on the Examiner’s lack of understanding, and not whether the person of ordinary skill would not have understood the claim (likewise with a significant number of indefiniteness rejections).
Same thing happens during patent prosecution with Examiners. In 9/10 cases where there is an enablement/written description rejections, the rejection is based on the Examiner’s lack of understanding, and not whether the person of ordinary skill would not have understood the claim (likewise with a significant number of indefiniteness rejections).
Agree. I have frequently had to explain the difference between 112a and 112b to Examiners. I cannot tell you how many times I have had 112b rejections in which an Examiner states that the claims do not explain how the invention works. As to 112a, I have had many Examiners assert that the specification does explain how the invention works without going through the undue experimentation factors, which includes (among others), the state of the prior art and the level of one or ordinary skill.
When one is working with combinations of known elements (and the vast majority of the time, that is what inventors are doing), then there is no need to describe, in great detail, how those individual known elements work. Otherwise, 30 page specifications would morph into 300 or even 3000 page specifications, which would make patents even more of a “sport of kings” than it already is.
Certainly, those who are sympathetic to the “efficient infringers” would love to have that type of detail in specifications as it would greatly discourage patenting. As I said above, there are different ways to neuter the US patent system without actively destroying it.
^^^ I have labeled such as anti-patent.
Malcolm has attempted (p00rly) to gaslight that he is not anti-patent.
The likes of Greg have attempted to portray this as NOT being anti-patent.
It’s easy to see what is and what is not anti-patent.
WT : “ the criticism of “without any explanation for how these steps are carried out,” can be levied against any method claim.”
Sure, if you’re content to expose yourself as a total w a n k e r, as you so obviously are.
Yours is the same low, low level of grifting attorney b. s. that brings us screeching “arguments” such as “everything is abstract!”
Get a life.
^^^ you did not actually say anything about the position taken, and ONLY spewed ad hominem.
Take another try – this time with some minimal level of content that is on the point of the argument and not your mealy and so-often misaimed banalities.
3 => 8 => infinity
It’s turtles all the way down.
As you note, claims are made of words. There was a p00r attempt a few years back to insist on some “MANDATORY DEFINITIONS” section – the problem of course, being that ANY such section – necessarily – must be made up of….
… words.
WT: “ To provide a real explanation as to how steps are carried out (even in simple inventions) wouldn’t involve 150-200 words (a medium-sized independent claims) but more likely 1500-2000 words”
LOL
Did your m o m m y take your pacifier away?
Please Pardon Potential re(P)eat … filter again…
Your comment is awaiting moderation.
January 11, 2024 at 8:52 am
Sadly, this post will do nothing but call out the likes of anti-patent folk like Malcolm and the inanities of marty.
Next.
Irredeemable g a r b a g e claims. What’s needed is not “more claim construction” but rather more shovels to beat in the heads of the know-nothing zombies who can’t distinguish abstractions and non-abstractions.
Why is “a mechanism enabling said user to navigate among said first, second and third visual workspaces” not also a 112 issue, as it claims every possible way, and every possible mechanism, of achieving that very broad function?
No doubt there may be a banal reply from Malcolm about “both,” while the better legal view would be that 101 NEED NOT BE rewritten when other parts of statute may be the more appropriate path.
Why is “a mechanism enabling said user to navigate among said first, second and third visual workspaces” not also a 112 issue
Do you write claims for a living? Do you even understand claim language?
Words, by their very nature, are abstractions. Take the term “switch.” There are hundreds/thousands of different devices that fall within the term “switch,” yet would you consider it to be indefinite? The same can be said about the term “light” or “engine” and like thousands of other examples I could come up with that describe devices. Moreover, many of these terms describe devices by what they do: light (produces switch), switch (switch from one thing to another), radiator, fastener, container (contains things).
it claims every possible way, and every possible mechanism, of achieving that very broad function?
Such a silly argument that evidences little understanding of the language used to create claims.
Wt,
Let me bring you up to speed.
Once upon a time Paul F. Morgan claims that he was a practitioner and had a registration number.
He has stated that he let that number lapse, as he had moved entirely into the litigation world.
You are not the first to point out how out of touch Paul has become with any notion of protecting innovations (and innovators) in the prosecution world of obtaining patent protection.
Instead, for more than a decade now, he has picked up the pom-poms of such as the AIA IPR racket and has worked (one way or another, sometimes flagrantly, sometimes subtly) to erode the protections for innovations and innovators.
Where does “a mechanism enabling said user to navigate among said first, second and third visual workspaces” distinguish anything this applicant is claiming novelty in from (for example) the old MS “cut and paste” function?
Being fully successfully retired, with no personal financial interest to protect, I can look back on all the unenforceable patent claims I have seen obtained by those thinking PTO issuance was the achieved goal. It is only the first down.
Where does “a mechanism enabling said user to navigate among said first, second and third visual workspaces” distinguish anything this applicant is claiming novelty in from (for example) the old MS “cut and paste” function?
Why is novelty relevant? Also, novelty lies in the claimed invention, as a whole.
Being fully successfully retired, with no personal financial interest to protect, I can look back on all the unenforceable patent claims I have seen obtained by those thinking PTO issuance was the achieved goal. It is only the first down.
Being fully retired, why are you here? Seriously. While patent law is a big part of my life and I enjoy discussing it, once I’m fully retired, patent law is going to be in my rear-view mirror.
WT: “ “cut and paste” function?
Why is novelty relevant? Also, novelty lies in the claimed invention, as a whole.”
Translation: “I live under a rock and therefore not only sound like an i d i o t but I am one.”
^^^
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