by Dennis Crouch
The Federal Circuit has affirmed a D.N.J. court’s dismissal of patentee Beteiro’s infringement complaints against DraftKings, et al., agreeing that the asserted claims are directed to patent ineligible subject matter under 35 U.S.C. § 101. Beteiro, LLC v. DraftKings Inc., No. 2022-2275 (Fed. Cir. June 21, 2024). The patents at issue were directed to methods of facilitating remote gambling activity using devises equipped with GPS.
Claim 2 of the US10255755 (2002 priority date), was the most discussed claim in the case. The claim is directed to a method for facilitating remote gambling and requires detecting information about a gaming or sporting event, notifying a user about the event, receiving a bet from the user along with their location information (determined by a GPS device in their communication device), and then determining whether to allow or disallow the bet based on the user’s location. This claim is significant in the context of gaming because it attempts to address a key challenge in the online gambling industry: ensuring that bets are only accepted from locations where such activities are legal.
Applying the two-step Alice/Mayo framework, the Federal Circuit agreed with the district court that the claims were directed to the abstract idea of “exchanging information concerning a bet and allowing or disallowing the bet based on where the user is located.” The court found the claims included the several “indicia of abstractness:” generic steps of detecting information, generating and transmitting notifications, receiving messages, making determinations, and processing information; using result-focused functional language; being analogous to other claims found abstract in precedent; and being directed to longstanding real-world practices.
The court rejected Beteiro’s argument that the claims were tied to technological improvements, finding they involved “the mere use of computers as tools and do not claim any improvement in the computer-related technology itself.” The claims include content regulation and checking legal compliance, but those are legal problems, not technical problems. The patentee argued that its unique use of GPS as an “input into a system in order to perform this legal compliant wagering, that application of GPS was certainly not conventional at the time.” (oral args). But, the problem is that this was, according to the courts, simply combining two abstractions to form a third.
At step two, the court agreed with the district court that the claims lacked an inventive concept, achieving the abstract steps using “several generic computers” and “a set of generic computer components.” The court found the patents described the components, including the GPS on mobile phones, generically, supporting the conclusion they were conventional. Although GPS is not preemptive of all ways to locate user, its use was still generic enough to fail step 2. Reciting the common use/improvement dichotomy refrain, the court rejected Beteiro’s argument that the claims were tied to technological improvements, finding they involved “the mere use of computers as tools and do not claim any improvement in the computer-related technology itself.”
Unconventional – Focus on Specification: The court was unpersuaded by Beteiro’s contention that the complaint raised a genuine dispute about whether including GPS on mobile phones was conventional in 2002, the claimed priority date. But the specification did not provide technical instructions on creating/using a GPS system. The court concluded that this could “only plausibly mean that the patent applicant drafted the specification understanding that a person of ordinary skill in the art knew what GPS was, how to include it on a mobile device, and that using it for the purposes disclosed in the patent was routine, conventional, and well-understood.” The court stated that the specification dedicated “only 15 lines” to GPS – I counted and this was 117 words. The court noted that amount was quite small – especially in recognizing that the specification is almost 50 pages long. In my opinion, 15 lines can certainly be sufficient, but the problem is that those 15 lines don’t contain any genuine technical details. For me, The basic idea here is that the patentee should not expect to hang their eligibility hat on their use of off-the-shelf technology that they mention only in passing in the specification.
The case is also important because it retrains eligibility focus on the claims and specification – in an attempt to prevent patent litigants from avoiding dismissal by raising or spinning new facts in the complaint.
No Examiner Buffer: During prosecution, the examiner had expressly considered eligibility issues and then allowed the patent to issue. On appeal, the Federal Circuit gave no weight with two different lines of reasoning:
- The examiner applied pre-Alice case law and so should be disregarded for applying the wrong law.
- Even proper examination does not “in any way shield the patent’s
claims from Article III review for patent eligibility.” Quoting Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178 (Fed. Cir. 2020).
Based upon this outcome, it is unclear whether any weight can be given to an examiner ruling – likely none in this context.
In the end, the Federal Circuit wrote that Beteiro’s claims are “nothing more than the practice of an abstract idea using conventional (even as of 2002) computer equipment, including GPS on a mobile phone.”
One point missing from this discussion below of why so many patents issue with Alice 101 exceptions problem claims is covered in the most recent Patent Docs:
“An Empirical Study of Low Allowance Rate Examiners
By Michael Borella —
Any patent attorney who has been in the business for more than a few years understands from experience that some USPTO examiners are tougher than others. This should not be surprising, as each examiner is an individual who is applying their own experience and knowledge during the examination process, which inherently includes some degree of subjectivity. Nonetheless, we all have experienced examiners from time to time that appear to be exceptionally difficult. These examiners are more likely than most to reject claims on multiple grounds and be less responsive to applicants’ rebuttals. Some are unwilling to engage in productive conversations during interviews. Most have low allowance rates. With analytics tools now readily available to applicants and their attorneys, we can obtain concrete statistics about these examiners, and then analyze their prior prosecution histories in order to better understand their individual proclivities and nuances. It has become generally accepted in the field that the examiner that is assigned to an application can be as determinative on its outcome as the application itself….”
The giveaway that these claims are b.s. is that they all recite nonsense about “bets”. It’s sad that this still has to be explained to people but if any of the people involved with drafting this application were competent at anything besides leaving a trail of slime behind them, they’d claim the “real computing invention” or the “real communication invention” straight up. The reason they didn’t do that is rather obvious to anybody who has been paying attention for the last 20+ years.
The giveaway of Malcolm thinking any claims are “b.s.” are if they are in any way directed to the computing arts.
¯\_(ツ)_/¯
Based upon this outcome, it is unclear whether any weight can be given to an examiner ruling – likely none in this context.
Obviously no weight can be given to an Alice analysis when it was examined under a pre-Alice regime. But generally why would you give Chevron deference to legal questions not subject to specialty knowledge? If the examiner had explicitly found some relevant facts (that GPS was unconventional or such) then at least there would be a basis for affording deference to that fact finding. Why should any deference be given to legal conclusions?
Re: ..why would you give “Chevron deference” to legal questions by a single non-attorney PTO application examiner?
Indeed, that is no AGENCY position. Nor is this even an interpretation of a statute. Two reasons it has no Chevron deference in any subsequent legal proceedings. Examiner Legal positions, especially case law interpretations, do not have any deference even within the PTO, much less in judicial proceedings.
One interesting legal point. The claim itself recites “a computer” that “initiates a communication link with a first communication device and transmits the notification message to the first communication device as an electronic transmission.” Presumably, the computer == an app server and the first communication device == a smartphone in today’s parlance.
However, the claim ALSO recites “using the information regarding the position or location of the first communication device *or* the second communication device” (emphasis added). Briefly looking at the spec, it seems to describe some system that can also verify location using the bettor’s physical proximity to some other electronic device (i.e., NOT using their smartphone). I’m not sure I’ve ever seen that second part… much less seen it conventionally practiced. That is, I’ve seen betting kiosks/machines, where everything based on the location of that kiosk/machine, but not a two-device based location verification system.
Now, the legal point. From a 103 point-of-view, I can kinda see ignoring one fork of the “OR” clause…as it inherently doesn’t have to ever be true. But the Court also seems to do so in their declaration of the “abstract idea.” It seems less defensible to not seriously engage with everything recited in the claim there.
Put differently, if a claim could be read to cover both conventional and non-conventional embodiments, is it still ineligible under 101?
FWIW, iPhone 1 apparently came out in 2007. Solving some of these problems would have been much tougher before such technology became widespread.
News flash: computing “technology” that you see in cheap, commercially available “portable” products is almost never “new”. Not even close.
OK, but the relevant question is “conventional,” not “new.”
Agreed.
As I have often had to remind examiners, their rejections asserting that something is conventional requires far more showing than merely that something either exists or is even widely known.
Conventional carries with it the notion of widespread use.
e.g., Merriam Webster:
ceremonial, ceremonious, formal, conventional mean marked by attention to or adhering strictly to prescribed forms.
Prior art being either of 102 art or 103 art may well be a start, but by no means is such a legitimate or sufficient basis for a legal conclusion of “conventional.”
Thanks for your digging your own hole again. Yes, it’s true that something could be taught in the prior art thousands of times for a 100 years and still not be “conventional”. And if that doesn’t illustrate to a thinking person how ridiculous the CAFC’s impossibly wrong reading of Supreme Court dicta is, I don’t know what will.
That you do not “like” is clear; but your dislike has no connection to an assertion that the Supreme Court meant something else.
Try again.
Put differently, if a claim could be read to cover both conventional and non-conventional embodiments, is it still ineligible under 101?
Why wouldn’t it be? Every other aspect of the statutory scheme states that violation by one embodiment defeats the entire scope. You can’t assert nonobvious over a teaching away that only applies to part of the scope. You can’t enable only part of the scope. Why would a scope that embraces ineligible subject matter stand because other embodiments may be statutory?
The 101 inquiry is supposed to be about what the claim is “directed to.” If you take that language seriously, it’s not about corner cases.
Policy wise, I’ll note that the 102/103 inquiry and the infringement inquiry use the same test i.e., there is natural tension between aggressive infringement assertions and aggressive validity assertions. No such balance exists wrt 101.
“ The 101 inquiry is supposed to be about what the claim is “directed to.” If you take that language seriously, it’s not about corner cases.”
A vague phrase like “directed to” doesn’t have a “serious meaning” when we are talking about US patent claiming where the drafter never has to identify what elements in the claim were in the prior art. In other words, 101 is not about the use of “magic words” because that would immediately render it useless.
Are you back to wanting Jepson claim formatting to be mandatory?
In several places below, Wt speaks at length to what I have posted many times now.
The two word summary:
Gordian Knot.
based. and 101 pilled
From the decision: “Independent claim 2 of the ’755 patent, which the district court, the parties, and we agree is representative for purposes of evaluating the issue of patentable subject matter,”
What a ghastly mistake — letting one claim be representative of all the claims (apparently both those asserted and those not) . . . from not just one . . . not just two . . . not just three . . . but from four patents.
Four patents. 80 claims. All wiped out in one feel swoop.
An inventor’s nightmare. An infringer’s dream come true.
Why do some folks continue to do this?
My guess is that claim had both a GPS and used the location from the GPS to determine whether the bet was allowed or not. Some of the other independent claims had a GPS but then (oddly) did not link the location from the GPS to the determination whether to allow the bet or not.
In other words, this was probably their best shot (eg, under the “describe a technical problem, show how your invention solves the problem, and put the solution to the problem in the claims” concept).
“Based upon this outcome, it is unclear whether any weight can be given to an examiner ruling – likely none in this context.”
Why would anyone expect anything else when the PTO adopted its own, distinct eligibility analysis?
It’s almost as if you believe the patent system is optimized for something other than extracting money from applicants.
“Why would anyone expect anything else..”
Gee, maybe because it is the law as set by Congress:
35 U.S.C. 131 Examination of application.
The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law the Director shall issue a patent therefor.
and
35 U.S.C. 282 Presumption of validity; defenses.
(a) IN GENERAL.—A patent shall be presumed valid.
Gee, maybe because it is the law as set by Congress:
This is an issue and your mistake here is a redressability mistake. If the PTO applies the wrong standard, the court simply won’t be bound by it. The alleged infringer doesn’t get their rights lessened because the PTO doesn’t do its job correctly.
This IS a problem for patentees because the office makes no bones about the fact that it doesn’t apply real 101, and that means that the courts shouldn’t give any weight. The correct redressability is to force the PTO to do the proper analysis, which applicants should be demanding – loudly. There is a wrong here, and there is someone to complain to, but it’s not the CAFC.
This is the kind of “patent quality” that both the office and applicants purport to want, but the former doesn’t actually want the quality and the latter doesn’t complain because the more lax standard is beneficial for issuance. This is something applicants will have to work out with PTO brass at some point.
“ The correct redressability is to force the PTO to do the proper analysis, which applicants should be demanding – loudly.”
BWAHAHAHAHAhahhahhaha … wait … have to read that again … BWAHAHAHAHAHAHAhahaha…
link to patentlyo.com
“the practice of an abstract idea”
That is quite a trick. You aren’t eligible because you are nothing but an abstract idea with nothing more and you are a “practice” of an abstract idea, which means you are not abstract.
“Shhh . . . that’s one of our little patent-killing, innovation-crippling secrets.”
— Your CAFC Overlords
The pre-Alice caselaw applied by the Examiner was SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 94 USPQ2d 1607 (Fed. Cir. 2010). It is cited in MPEP 2106.04(a)(2)(III)(A), so you can sort of understand the Examiner thinking it was ok to use.
Also, for clarity’s sake, the Examiner did not “expressly consider[] eligibility issues” in the 755 prosecution itself, although he did consider eligibility in the three earlier parent cases.
-kd
For clarity’s sake, examination is (must be) complete under the law.
It is not required to affirmatively state that the application passes 101. Generally speaking, it is only the items objected or rejected that are on the record.
Thanks for that. I wasn’t actually suggesting the Examiner dropped the ball at some point. I was just, literally, clarifying what happened.
The real story here is how, 10 years post-Alice and 8 years post-Electric Power Group, the PTO is still allowing claims that obviously flunk both of those cases. The earliest patent in suit issued in 2018 I believe. How can that allowance be explained?
I would be quite annoyed if I were the Federal Circuit and all these years later still wading through claims a la “device 2 sends user info to device 1; if X, device 1 sends message X back to device 2; if Y, device 1 sends back message Y to device 2”.
I am afraid that you are destined for disappointment, then. The PTO is funded by user fees, most of which would dry up if the PTO were to apply Alice with the same rigor applied by the Art. III courts. The PTO is always going to err on the side of allowing ineligible claims, because the rate payers would stop filing if word got out that ineligible claims are also unallowable at the PTO.
Yes, until someone tries to sell or assert a patent, which only happens to a small percentage of them, all of the parties involved are happy to see patents issue from the PTO even if their claims are clearly Alice-challengable – the inventors, their corporate employer, their patent attorneys, and the PTO budget managers / fee collectors.
You act as if someone by doing their job is a good thing…
As I have long told the naysayers and the likes of Malcolm, I do not want an improvident allowance.
Bad examination is bad – in both directions.
I want good examination. In that way, competitors are far less likely to scoff at desist or negotiate communications.
I would be quite annoyed if I were the Federal Circuit and all these years later still wading through claims a la “device 2 sends user info to device 1; if X, device 1 sends message X back to device 2; if Y, device 1 sends back message Y to device 2”.
It is the Federal Circuit that has created the mess — the USPTO has attempted to clean up the mess with the 2019 Patent Eligibility Guidelines. However, the Federal Circuit ignores those (and their own contradictory case law) as well.
For nearly anything that is currently allowed by the USPTO, there is case law that says patent eligible and there is case law that says patent ineligible. In that situation, what is the USPTO to do? Reject everything? Allow nothing?
Certainly, the gazillionaire tech bros in Silicon Valley would be overjoyed if that were to happen. If the USPTO cannot figure out whether a claim is patent eligible based upon USPTO case law, how can a patent applicant?
Some person thinks they have a great product/service and they want to get a patent on it. How are they supposed to know, with any certainty, whether after $25K of costs before the USPTO and $100K attorney fees with a litigation attorney if their patent is patent eligible or not?
How is progress being promoted when no one knows whether they can get a patent on anything these days?
I’m a patent attorney, and I think it is foolish for any solo inventor to get a patent these days. It is a waste of their money. The patent system will grind them down. One could say that I, in essence, am doing the bidding of the tech bros by discouraging the patenting of inventions. Perhaps I am. However, my duty is to do what is in the best interest of my client, and using the US patent system is certainly not in the best interest of most small entities (e.g., solo inventors and small businesses). Rather, it is a waste of time and money thanks to the Federal Circuit.
I’m sympathetic to complaints that the law is not as clear as it could be for some inventions. The type of claim I just described–which is this case–is not one of them. They’ve been dead-to-rights ineligible for years now.
The CAFC is not a real court. They are anti-patent activists who at each turn try to weaken patents. Some just want patents for pharmaceutical products.
The whole system has gotten far worse than it was 20 years ago and most of it is from the very low quality of CAFC judges. Most of the problem is not their intelligence but the quality of their character.
How are they supposed to know, with any certainty, whether after $25K of costs before the USPTO and $100K attorney fees with a litigation attorney if their patent is patent eligible or not?
How is progress being promoted when no one knows whether they can get a patent on anything these days?
I used to be a partisan of this viewpoint, but subsequent reality has long since disproved it. For one thing, while there used to be a lot of confusion in the case law in the immediate aftermath of Alice, ten years on there is a lot more clarity. The reality is that all of us—if administered truth serum—could have told Beteiro that their claims were ineligible. The current state of the law is regrettable, but not really all that unpredictable.
Meanwhile, the amazing advances that we are seeing of late in AI objectively demonstrate that innovators are not holding back on account of the patent law. Silicon Valley is full of folks who like to imagine themselves as John Galt, but none of them are withdrawing their labor to spite the U.S. patent system.
The real story here is how, 10 years post-Alice and 8 years post-Electric Power Group, the PTO is still allowing claims that obviously flunk both of those cases. The earliest patent in suit issued in 2018 I believe. How can that allowance be explained?
I mean it’s pretty simple – to “promote consistency” the office doesn’t allow for analogizing claims under examination to particular cases (you know, what lawyers would call “using precedent”?) so its unsurprising that you will find allowances that are substantially similar to CAFC-tossed claims.
Nor does the PTO use the same law. For example, the PTO explicitly states that the practical application standard does not consider conventionality. (MPEP 2106.04(d) – “Specifically, the “improvements” analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity. That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. “)
This case turns upon the conventionality of GPS to “solve” a technological location problem. If an examiner used the exact same analysis that was used in this case during examination it would be an error for the examiner, because the fact that conventional GPS solves the alleged problem is irrelevant under PTO analysis.
The PTO is always going to err on the side of allowing ineligible claims, because the rate payers would stop filing if word got out that ineligible claims are also unallowable at the PTO.
I mean, this is true, but also the PTO employs engineers with some legal training, while the private sector generally applies lawyers. Court cases have lawyers on both sides. You’ll never get the same rigor of 101 (even if you allowed precedent citation) at the PTO you’d get in the CAFC unless you hired a lot more lawyers. The only way to even remotely simulate CAFC outcomes would be for the PTO to have the same rules being argued by people of equal competence, and applicants don’t want to pay to hire those people or run that gauntlet.
What you assert does not pass muster.
You are confusing (and conflating) 101 and 103.
You are confusing (and conflating) 101 and 103.
All I’m doing is saying a case which the CAFC says is a 101 case conflicts with a MPEP section the PTO says is a 101 section, but you see what you want to see.
All that you are doing is as I am saying that you are doing.
You seem unable to recognize that.
You’ll never get the same rigor… unless you hired a lot more lawyers.
True, there are many reasons why the outcomes achieved by the PTO long have and will continue to fall short of what the CAFC lays down. My point, however, is that even if the PTO had an examiner corps composed entirely of law-trained professionals, it would still choose to allow invalid claims.
The tell for this is the Iancu guidelines (which are still in place). Everyone knows that the analysis provided in these guidelines does not jibe with current case law, but the patent bar rallied to support them when they were noticed for comment in the FR. Why? See 4.1 above for the answer.
My point, however, is that even if the PTO had an examiner corps composed entirely of law-trained professionals, it would still choose to allow invalid claims.
Eh, I simply disagree. Every agency inherently wants to seem larger and more important. The office is set up to be a coarse filter that makes most of its money on allowances and maintenance because that’s what the public wants. The director would love to be overseeing an office thrice the size, the union would love more members, and the examiners would love more examining time and higher pay for the increased training. But that would require shifting away from allowance/maintenance fees and for examination fees to be way larger, and inventors don’t want that.
The group of people who want a streamlined veneer of examination with de facto rubber stamping certainly isn’t the administrative state, it’s the applicants. And frankly, they’re not wrong – if we gave real examination to every application there would be a lot of dead work going on. Only a tiny fraction of patents are important enough to ever wind up in court. You think *the office* turned down a lot of money for doing work that would likely never be double-checked? No, my friend, the public never would have offered that.
You are not disagreeing with me. We are saying the same thing using two different framings.
I am saying that the PTO does not want to reject as many claims as deserve to be rejected. You are saying that the rate payers do not want as many rejections as they deserve. These are both true. The PTO does not want to make all meritted rejections because the rate payers would revolt. We are both describing the same coin, just you are talking about the heads and I am talking about the tails
I am saying that the PTO does not want to reject as many claims as deserve to be rejected.
But I think they do.
The PTO does not want to make all meritted rejections because the rate payers would revolt.
No I think they PTO in fact does not make all meritted rejections because the rate payers would revolt, but it is not what they want.
I’m making a statement about cause and effect and who is in the driver’s seat. This is not a both sides situation.
Driver’s seat…
Can you be clear? Who in your view is in the driver’s seat?
DC “ The basic idea here is that the patentee should not expect to hang their eligibility hat on their use of off-the-shelf technology that they mention only in passing in the specification.”
It doesn’t matter if the “technology” is “off the shelf” or merely “prior art published one day before the priority date”, if the “technology” is being used for its intended purpose the claim will still be going down if the rest the claim is abstract nonsense.
Good riddance to these horrible claims that should never have been filed in the first place.
^^^ this sounds in your old “whatever” mentality (Ends justify the Means).
It doesn’t matter if the “technology” is “off the shelf” or merely “prior art published one day before the priority date”, if the “technology” is being used for its intended purpose the claim will still be going down if the rest the claim is abstract nonsense.
I don’t know about that. Alice could have used the term “known” but instead it used the term “conventional,” which suggests the standard for an element becoming insignificant under 101 is higher than the standard for being anticipated or nonobvious.
… as it should be.
That you seem immune to understanding that (it is your job to understand that) is not surprising – given your grasp of patent law (or more accurately, your lack thereof).
The only reason the Supreme Court used the term “conventional” is because the technology in the claims at issue was conventional. As a matter of basic logic, the issue is not “conventionality” (that would be absurd) but rather whether the technology being employed was in the prior art and understood to be useful for the task described in the claim.
Imagine a publication on Day 1 describing a mind-reading device that can read and transmit any thought in a person’s head as long as that person is within 6 feet of the device. Can Johnny Genius file a patent application on day 2 and claim a method of wagering in a poker game wherein that device is used? The device is certainly not “conventional” on Day 2 (it was just disclosed the day before). But the ineligibility of that claim is crystal clear when the argument is presented properly before a judge with at least a semi-alert, functioning rational mind.
You are most definitely conflating prior art and eligibility.
And you don’t have the excuse of being an examiner (not that such should reach very far).
There is no “conflation” of anything. Given the permissiveness in claim drafting in the US, there is no way to have a workable eligibility screen that does NOT address the prior art status of claim elements. Hence the various judicially created doctrines relating to eligibility. This basic fact about patent eligibility was old news 20 years ago, if not earlier. It’s certainly been cemented into most practioner’s skulls by now although in order to stick there has to be something inside the skull besides crumpled up copies of undelivered Grit magazines.
You conflated again.
That you cannot see this is competing with that you do not want to see this.
Either way, it is just not a good look for you.
“That only 15 lines out of a specification that runs to no
less than 98 columns are addressed to what Beteiro now
insists is unconventional technology greatly undermines
the plausibility of Beteiro’s allegations. ”
Fed. Circuit judges resorting to counting lines of disclosure to support their conclusions is usually a tell that their argument is weak. I’m surprised Judge Lourie wasn’t part of the panel.
“ Fed. Circuit judges resorting to counting lines of disclosure to support their conclusions is usually a tell that their argument is weak.”
Is this the sort of legal “expertise” you provide to your clients?
NotPaid–it is ridiculous. Some of best inventions of the last 1,000 years were described in just a few words. And the issue is how a person skilled in the art would interpret those words and not some filthy anti-patent judge.
In future applications, be sure to write lots of extra material. Don’t be succinct. Since they’re basing decisions on lines of disclosure, more is clearly better. Judge Stark hasn’t told us how many lines of disclosure is “enough”. So, just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots. Just write lots.
I’m surprised we didn’t get a 10 year retrospective on Alice (decided 10 years ago on Wednesday). That would have been a fun article.
As for this decision, with Stark, Dyk, and Prost as the judges, I could have guaranteed, with 100% confidence, that any appeal on a 101 rejection was going to be affirmed. Thomas Edison could have come back from the grave with an improved light bulb and that trio would have still found the invention to be patent ineligible.
There are many aspects of the decision I disagree with, but the one that struck me the most involved an allegation that the invention was directed to a technical problem. The Court’s response included the following statement:
Content regulation and checking legal compliance are rooted in the abstract – they are legal problems, not technical problems.
This is one of the problems when you have non-technical judges trying figure out the intersection between law and technology — they are generally terrible at it.
Determining a location of a user on a mobile phone is a technical problem. Depending upon that determination, the location may inform a system which edge server and/or antenna to provide data from and any number of other technical operations. The location can also inform whether a particular operation (e.g., performing a transaction) is allowed or not. That transaction may be technical in nature or, as in the case of this particular patent, the transaction may involve gambling. Regardless of the transaction being allowed (or disallowed), the determination of the location is a technical problem that is solved with a technical solution.
Where the Federal Circuit gets is wrong — grossly wrong — is that they assume problems can be only be technical problems or only be legal problems or only be business problems — such that being one one kind precludes the problem from being another kind. For anyone who is remotely familiar with technology and its applications in real life, nearly all technical problems are rooted in business problems. Outside of pure research, people don’t solve technical problems for the shear sake of doing it — rather, they solve technical problems because solving that particular technical problem helps them solve a particular business problem. In other words, they are not mutually exclusive. A problem isn’t either a technical problem or business/legal (i.e., abstract) problem. In situations where technology is involved, the problem being addressed is virtually always both.
The Federal Circuit avoids the case law in DDR Holdings by recharacterizing technical problems as business problems or, as in this case, a legal problem with the logic being that solving a technical problems can get around a 101 rejection but solving a business/legal problem cannot. Since nearly every technical problem can be recast as a business problem, any judge so inclined can simply ignore a legitimate argument that the claimed invention addresses a technical problem but stating the problem being addressed are business problems. And this frees the judges up to do whatever they want irrespective of what the law says.
My guess is that the claim would have likely been obvious under 103, but that kind of rejection takes work instead of hand waving … and the Federal Circuit is awfully fond of hand-waving these days — or should I say, the last 10 years.
If the assumption is that the only problem the patent owner has is the Alice 101 exception, and that they would have won on 103, note that since the only claimed advance was using exisiting smartphone GPS, not any New technology, the claimed invention here was just the idea of using it to determine legal ordering from the state the orderer was in, “ensuring that bets are only accepted from locations where such activities are legal.” However that same general issue was known and had already been variously addressed in ordering wine from out of state only from states in which it is legal to do so, and collecting sales tax for those states requiring that from the product-orderer, etc.
In my opinon, if patent owners had the common sense to get an independent second opinion before suing from patent litigation experts OTHER than those needing and anticipating potential millions in litigation billings, there would be a lot less of these kinds of patent suits.
It seems highly doubtful that the idea here was to “win in court”. The idea was to pound the defendant with legal paperwork and force a settlement.
Also, this “same general issue” you refer to is about as old as human civilization.
If the assumption …
You, like the Federal Circuit, have a fondness for ignoring the claim language. Frankly, I don’t know what else could have been in the claims that were patentable. At first glance, they looked unpatentable under 103. However, first glances are a terrible way to evaluate any patent claim.
In my opinon, if patent owners had the common sense to get an independent second opinion before suing from patent litigation experts OTHER than those needing and anticipating potential millions in litigation billings, there would be a lot less of these kinds of patent suits.
Are you saying that the USPTO isn’t an expert at knowing what claims are patent eligible under 35 USC 101? One of the patents in suit issued 5 years ago — 5 years after Alice. If the USPTO cannot figure out what is patent eligible after 5 years, why do you think some “patent litigation experts” are going to be better?
Now if your patent litigation experts are those that think EVERYTHING is patent ineligible, then perhaps they might be better at it than the USPTO. And ultimately, isn’t that where we are headed?
With the right judge(s) at the helm, I’m pretty comfortable saying that there isn’t a patent issued by the USPTO that cannot be attacked under 35 USC 101.
Re: ” If the USPTO cannot figure out what is patent eligible after 5 years, why do you think some “patent litigation experts” are going to be better?’
You cannot be serious in comparing a patent litigation attorney expert opinion on patent litigation 101 survival expertise with a single non-attorney PTO examiner with no exposure whatsoever to patent litigation and making 101 decisions in a completely ex parte [unapposed one side only arguments] very time restricted administrative proceeding.
You cannot be serious in thinking that there is “patent litigation 101 survival expertise”
A default of “not eligible” is not indicative of “expertise,” and the fact of the matter is that there is a Gordian Knot of case law on the matter.
Expertise starts with recognition of at least that much.
Well said!
“ My guess is that the claim would have likely been obvious under 103, but that kind of rejection takes work”
That’s because 103 is a hot mess that requires briefing on multiple judge-created patentee-friendly “secondary considerations” that make no sense or directly contradict the statute.
That’s because 103 is a hot mess that requires briefing on multiple judge-created patentee-friendly “secondary considerations” that make no sense or directly contradict the statute.
Huh? How often does the Federal Circuit allow any of these “secondary considerations” to be given weight with regard to 103. Don’t bother answering the question — the answer is almost never.
As for making no sense or directly contradicting the statute, when has consistency with the statute ever been a consideration in either 35 USC 101 or 35 USC 103 or 35 USC 282?