Judge Lourie, who was joined by Judges Dyk, Prost, Reyna and Wallach, in CLS Bank v. Alice Corp. wrote: “At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.”
One way that Judges probe generalized statements is to look for the boundaries to test the logic. If the statement cannot be stretched to apply to even similar scenarios then the logic of the statement is questioned and believed to be faulty and self-serving. So let’s see if the above statement can withstand even modest scrutiny.
The statement above, by any fair reading, says that if the core of the invention is something that a human could do but slower then the subject matter is patent ineligible. So what about robots? Robots are more efficient, stronger and faster than humans, but a human can do what a robot can do. So are robots patentable?
The easy answer is — of course robots are patentable because they are a device. But that can’t be true based on the logic of Judges Lourie, Dyk, Prost, Reyna and Wallach. Furthermore, in Bilski v. Kappos 8 out of the 9 Justices of the Supreme Court determined that while the test presented in State Street Bank was the wrong test, the patent claims there were patent eligible because they cover a machine. The machine claimed there was a data processing system. But Judges Lourie, Dyk, Prost, Reyna and Wallach said that systems are not patent eligible? So could that mean that certain machines are not patent eligible if humans could do the task albeit more slowly?
This is the slippery slope of unintended consequences is exactly why Judges are supposed to decide the issues in front of them and nothing more.
The systems claims in the Alice patents cover a device as well. These Judges even recognized that it was not appropriate to lump systems claims together with the other claims that more purely claim software, but they did it anyway. Judge Lourie acknowledged:
For some systems claims, the abstract ideas exception may indeed be plainly inapplicable, and such claims will face little difficulty passing through the §101 filter.
So the fact that the claim specifically defines a device means nothing apparently. These Judges apparently want to evaluate what the invention really is, not what is being claimed. The Canadian Patent Office has recently issued guidance to its patent examiners along the same line, telling examiners that they need to engage in a purposive construction prior to evaluating whether there is patentable subject matter. In other words, figure out what the invention is really is before determining whether to issue the claims.
Why have claims if the claims don’t matter. Essentially Judge Lourie, and the Canadian Patent Office too, are saying ignore the claims and read the specification to determine what the innovation is and then without regard to the language of the claims make your determination. Under this viewpoint claims are simply irrelevant. Yet we know that claims are not irrelevant, and such a view is directly contrary to the Patent Act itself. Ignoring claims is utterly ridiculous given inventions are not patentable. Patent claims are supposed to be evaluating NOT the entirety of the invention. The sine quo non of patents are the claims. It is black letter law that the claims define the exclusive right granted. Ignoring the claims shows reckless disregard for the well established law and is nothing short of judicial activism.
But this all begs the question about robots. How about this method of using a robot in an agricultural setting, which comes from U.S. Patent No. 8,381,501. Certainly the Founding Fathers, who were by and large farmers leading a nation of farmers, would have considered agricultural advances extremely significant. The fact that you could engage in farming faster and more efficiently certainly would have been considered worth of patent protection. But let’s look at the claim of the ‘501 patent to see if this continues to exhibit patent eligible subject matter under the view of Judge Lourie et al. The ‘501 patent claims:
A method for using an agricultural robot system comprising: entering a field having plants with a scout robot; approaching a plant with said scout robot wherein said plant comprises agricultural elements including agricultural elements to be harvested with a worker robot; logging coordinates of said scout robot by said scout robot; mapping a location of at least one agricultural element comprising branches or leaves or fruits or vegetables within said plant by said scout robot to produce a map; continuing said approaching, said logging and said mapping until at least a plurality of said plants in said field have been mapped; wherein said mapping said location by said scout robot occurs without performing an agricultural operation that transforms or physically alters said agricultural elements and without harvesting said agricultural elements to be harvested of said plant within said field; transmitting said map from said scout robot to said worker robot; creating an action plan from said map to optimize agricultural operations by said worker robot at a later time wherein the action plan is created by said worker robot or by a server, wherein said action plan includes optimized robot arm motion paths of robot arms coupled with said worker robot; moving said worker robot near said plant after said scout robot leaves said plant; performing an agricultural operation that transforms or physically alters, or harvesting, said agricultural element or said agricultural element to be harvested associated with said plant by said worker robot using said action plan.
Well, if Judges Lourie, Dyk, Prost, Reyna and Wallach get their hands on that claim it should be gone! After all, the robot in this claim is just doing what a human could do.
Join the Discussion
22 comments so far.
ikhMay 21, 2013 08:50 pm
“By saying that computers are nothing you are undercutting your entire position it seems without even appreciating what you are saying.”
No Gene, I did not say “computers are nothing”. Like you did with the CAFC judgement quote in the article you left out words that provide essential context. And you did not bother to address those comments.
Are computers useful? Of course! They help me make a living as a professional programmer. And is software necessary to make them useful. Yes! But that does not make software 101 patentable. Not according to the USSC and now, a panel of the CAFC. Not even when you tie it to a general purpose computer.
Sorry Gene, but I am not the one ignoring realty. You are. You are ignoring the reality of the USSC and a panel of the CAFC. Are software patents dead? Sadly, not yet. But they are a lot closer to being dead.
You can not deny that all a computer does is calculations on integers. Nothing more nothing less. And that is all that is needed to build very powerful systems. But it is still just a string of calculations.
The power comes for the amazing results of mathematical abstraction and it is beautiful. But that does not help you either :-).
ikhMay 21, 2013 07:42 pm
Cool! you have head of Turing. Sadly, you don’t seem to understand his results. Turing Completeness, more correctly referred to as Church Turing Completeness is a mathematical hypothesis regarding regarding programming languages and instruction sets and how rich they need to be to write every program that ever could be written. It has never been proven ( mathematically ), although most mathematicians believe that it is probably true.
I think perhaps you were trying to say that a manual calculator is not a general purpose Turing machine. Which is true. But the key difference between the two is that a stored program computer ( to give it its full name ) does not need to be told the operations to be performed, by its keyboard. Don’t forget, all the data in a computer are numbers, and the programs are numbers and all it does is add, subtract and some bitwise operations. That is still a glorified calculator. All it ever does are calculations. Please show ( or tell me what a computer can do that is not a calculation!
You say that I said that “That the computer is nothing.” I said no such thing. I said that it is nothing more that a glorified calculator. That is not nothing!
” I hear a voice of a scared medieval thinker. A coward. A Luddite.”
I think you must be talking to yourself ;-).
Wayne BoreanMay 21, 2013 05:32 pm
Which totally ignores the issue of whether the technology, or invention if you prefer, is a patentable invention under Sections 102 and 103.
I agree that a computer without software is pretty useless. One of the things that got Bill Gates and Paul Allen started was the sale of Microsoft Basic for the Altair 8080 computer. Until the Altair had a High Level programming language available, it was basically nothing more than an expensive toy. With software it started to gain users, like small businesses which could use it for accounting functions.
Mind you I wouldn’t have tried to run a business on an Altair. It was a horribly limited machine. That said, at the time it had capabilities that only machines costing ten times the price had.
Was the Altair an invention? No. It was a kit bash using off the shelf components. The only thing that could be considered “new” about it was that it was priced under $50,000.00.
Gene QuinnMay 21, 2013 02:28 pm
You say: “all General Purpose Computers are nothing more than a glorified calculator.”
Your position is extraordinarily odd. By saying that computers are nothing you are undercutting your entire position it seems without even appreciating what you are saying.
Obviously, a computer without software is nothing more than a paper weight that has all kinds of unrealized potential. By contrast, a computer with software is extremely useful.
I will also point out that a general purpose computer without software isn’t even a calculator. So it is the software that makes the device operate.
You can continue to ignore reality if you like, but based on the arguments you make it seems clear to me that you in your heart know the truth and understand that software is and should be patentable. Why you can’t see that your justifications against software patents actually support their existence is a mystery.
NWPAMay 21, 2013 01:25 pm
@IKH General Purpose Computers are nothing more than a glorified calculator
Well, they are not calculators. Because calculators are not Turing complete.
Such strange statements. A machine that can perform information processing faster than people. A machine that can perform information processing tasks that people cannot. A machine that is replacing people in information processing tasks. And, yet, we hear this type of argument all the time. That the computer is nothing. I guess than our brains are less than nothing, and we are less than nothing.
Is there any sense to your logic? If so, I don’t get it. I hear a voice of a scared medieval thinker. A coward. A Luddite.
ikhMay 20, 2013 08:22 pm
As a lawyer, I would expect you to be very precise with words. And yet, in this article you appear to be deliberately
misleading and using smoke and mirrors.
In the part of the judgement you quote above it says:
“At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could. Unless the claims require a computer to perform operations that are not merely accelerated calculations, a computer does not itself confer patent eligibility.”
The key words in this are “calculator”, “mental steps”, and “calculations”
You then go on to say:
“The statement above, by any fair reading, says that if the core of the invention is something that a human could do but slower then the subject matter is patent ineligible.”
No it does not. Because you leave out the key limitations of calculator, mental steps and calculations.
What the CAFC and the USSC have said is that you can not make an unpatentable method/process in to a patentable device by adding a general purpose computer that is only a glorified calculator. And all General Purpose Computers are nothing more than a glorified calculator. By definition.
Software patents are dying, all be it, far to slowly for my taste.
patent leatherMay 20, 2013 10:29 am
Here’s a USPTO memo regarding CLS:
As I had hoped, “no change” at the USPTO. I actually think the USPTO would prefer the original CLS, which would render applications much easier to examine.
Gene QuinnMay 18, 2013 12:25 pm
Anyone that would seriously question whether an android the likes of Data should be patent eligible is not someone that should be taken seriously.
Also, your Star Trek knowledge is wanting. Data did not have free will. He also did not have emotions. Of course, neither are relevant to the question here, and your inserting slavery into the question of whether a robot or android is or should be patent eligible is nothing more than a diversion. You have nothing of substance so you seek to confuse.
Methods done by robots are patent eligible unless and until we decide that all methods are not patent eligible. The trouble is that we can’t say that because methods have been issued as early as 1790 by Thomas Jefferson as a patent examiner and signed by President George Washington. So no one will say methods are unpatentable.
I also notice for the record you wrote a lot in response but never addressed the substance.
Wayne BoreanMay 18, 2013 09:23 am
I’ve seen a lot of industrial robots that were slower than humans. Steadier, more accurate, and capable of working shifts without washroom breaks, but slower.
Which is beside the issue here.
U. S. Patent Law is a mess. This is hardly surprising, since it is a structure that has been added to slowly over a period of a couple of hundred years. Errors accumulate.
Sections 102 and 103 seem to often be ignored by the Patent Office. I’ve been ignoring Section 101, but from comments I gather that possibly there may be issues with it too.
A big part of the problem is the definitions of the words used in the law. It isn’t clear what the word “obvious” means, or you could say it isn’t obvious. This makes no sense. A lot of the discussions here, and at other places where patents are the topic, revolves around simple words. This is complicated by the malleability of various dialects of the English language. If you say you are going to knock a woman up in England everyone thinks it is normal, because that’s slang for calling to wake them up. In North America it’s slang for getting a woman pregnant…
Patents get applied for, and issued, under a certain understanding. Then a court ruling shifts everyone’s understanding. This is in conflict with the 14th Amendment, which promises equal treatment before the law (and yes, I know this wasn’t its original purpose, but it does fit).
The only real fix is a legislative one. However considering the current gridlock at the Federal level, I wouldn’t expect any substantive attempts at repair until after the next Presidential election, if then.
As things stand right now, you might almost be better having the courts forcing a shut down of the entire Patent Office. That would force the legislature to,act.
jesseMay 17, 2013 03:26 pm
Then it is equivalent to the “on-a-computer” patents were all the rage a couple of years ago. I believe most of those got dismissed too.
Gene QuinnMay 17, 2013 10:34 am
What part of harvesting aside from using a robot is new? Did you really just ask that question? Yikes! I guess nothing. The use of an android is nothing particularly impressive.
So now are we at the point where Data from Star Trek wouldn’t be patentable either?
AnonMay 17, 2013 08:02 am
I thought a post on that thread by my namesake was directly on point. That is, the right question was not being asked.
There is a difference between patent eligibility and patentability.
The patent system is clearly under attack. Obfuscation is the order of the day.
jesseMay 17, 2013 06:21 am
It is hard to tell if patent 8381501 fails the obviousness test as being obvious.
The last time I worked in a field (well, it was only two 50 foot rows of grape vines), I did exactly what the patent claims describe.
It also seems to match what I did going through an apple orchard to get a couple of ripe apples.
So what part of it makes it novel, other than the use of robots?
patent leatherMay 17, 2013 01:50 am
Dennis Crouch wrote this last year with regard to the original CLS and Bancorp:
“It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable”
It’s now even worse, isn’t it? I don’t expect Congress to resolve this (if anything, they would probably make it worse by excluding software patents altogether due to the anti-software patent lobby). The only party that can really straighten out this whole mess is the Supremes (gasp). In the past, I used to say that the Supremes should stay out of patent cases and leave it to the Fed Circuit (who of course has more patent experience), but I stopped saying that after October, 2008.
SWMay 17, 2013 12:25 am
I suggest you consider drafting all specifications as if computers do not exist.
Claim 1 can be directed to a computer system having a processor and a memory, etc. Better than pen & paper or mental arithmetic, right.
Claim 2 can be a dependent claim for the computer system of claim 1, wherein the processor is configured to perform a lovely new and nonobvious method.
See what objections the Examiner raises.
MarkGMay 16, 2013 11:49 pm
“I think you are correct and I have been contemplating writing an article about the first patent just as you suggest. I’m going to be writing a series of articles asking whether these inventions would pass muster. The unfortunate reality is that a great many innovations would not be patentable any more if Judge Lourie’s decision were to become the law.”
Thanks. As I have written elsewhere on your blog, I think that virtually any process claim could be potentially vulnerable to a Section 101 attack under Judge Lourie’s reasoning. For example, I don’t think Claim 1 in Diamond v. Diehr that was upheld by the Supreme Court survive Judge Lourie’s reasoning. Every step could be considered “routine” and all the other subject matter in the claim could be considered abstract.
You could even challenge people to try to send you patented process claims that they think could not be shown to be patent ineligible under Judge Lourie’s reasoning and then post the claims to have people come up with ways the claims could be taken down under Section 101.
Gene QuinnMay 16, 2013 08:14 pm
I think you are correct and I have been contemplating writing an article about the first patent just as you suggest. I’m going to be writing a series of articles asking whether these inventions would pass muster. The unfortunate reality is that a great many innovations would not be patentable any more if Judge Lourie’s decision were to become the law.
MarkGMay 16, 2013 06:22 pm
Not just robots are in danger of becoming patent-ineligible under Lourie’s reasoning his CLS concurrence. I think there is some serious doubt that even the first patent issued in the U.S., signed by George Washington himself, would pass all of Lourie’s tests.
I couldn’t find a easy to read text of the first US patent issued in 1790, but according to this link:
“Hopkins’s [the inventor’s] key advance [in his patent for an improvement in the making of Potash and Pearl Ash by a new Apparatus and Process] lay in burning the raw ashes in a furnace before they were dissolved in water. This second burning resulted in much greater carbonate formation, apparently because the free carbon in raw ashes (which partly accounts for the black color) was more completely oxidized and because of exposure to concentrated carbon dioxide gas from the fire. Hopkins also increased yields by mixing the insoluble residue from one batch with the raw ashes of the next, instead of simply discarding it.”
Lourie cites the Supreme Court’s decision in Mayo for the followin proposition:
“Also in Mayo, the Court instructed that the added steps, apart from the natural law itself, must
amount to more than ‘well-understood, routine, conventional activity previously engaged in by researchers in the field.’”
Steps such as “burning raw ashes in a furnace,” “dissolving the resultant ashes in water,” etc. sure look pretty conventional once you eliminate the “natural law” that ashes treated will result in much greater carbonate formation in the ashes.
step backMay 16, 2013 02:18 pm
35 USC 101 ends with a period.
It says machine, process, manufacture, composition, PERIOD.
The Alice (v. CLS) in wonderland per curium says ignore the PERIOD and add on a new further test.
That is judicial activism pure and simple.
The other option I can think of is that the CAFC intentionally orchestrated this 5-5 split so that the SCt. can Bee-itch slap down the CLS v. Alice decision and say no, there is no 2nd step test. If it’s a machine it is a machine. PERIOD.
John SmithMay 16, 2013 01:46 pm
” a new test.”
A “new” test? They pretty much pulled the “test” straight from the decisions they explained all about it looked to me like. Nothing particularly “new” about it except that the Federal Circuit just now got around to implementing it.
Their test is plainly anticipated by the writings of the USSC. We’re talking about a straight up 102b with all elements arranged just so.
step backMay 16, 2013 12:17 pm
You need to re-read very carefully the logic used by the Lourie group.
They agree that the system claim recites a “machine”.
But then they go on to enunciate a new test.
“After” you determine that it is a machine you go on to do part 2 of their test.
The one they made up out of thin air:
CLS v. Alice informs us:
Because we are assessing judicially created exceptions
to a broad statutory grant, one of the principles that must
guide our inquiry is that judge-made exceptions to properly
enacted statutes are to be narrowly construed. … Accordingly,
the basic steps in a patent-eligibility analysis can be summarized as follows.
 We must first ask
whether the claimed invention is
a process, machine, manufacture, or composition of matter.
If not, the claim is ineligible under § 101. If the invention falls within one
of the statutory categories, we must then
 determine whether any of the three judicial exceptions nonetheless
bars such a claim—is the claim draw_wwwwwww_n to a patent ineligible
law of nature, natural phenomenon, or abstract
If so, the claim is not patent eligible.
Only claims that pass both inquiries satisfy § 101.
step backMay 16, 2013 12:09 pm
“a computer is just a calculator capable of performing mental steps faster …”?
The neurons in my brain are frying themselves into dendritic chaos trying to find the right words for the audacity, the arrogance, the sheer scientific ignormanacy of these non-neuroscience aware jackal pack of judges who have, without basis in expert testimony, found the temerity to unilaterally proclaim what “mental steps” are, what a “computer” is, and what “calculations” are.
Where to begin?
One almost can’t.
Just cut my leash free and I’ll unleash on this aphasiatic pack of jurisprudential jackals:
Sorry about that.
OK. The brain seizure storm has subsided.
Thanks for your patience.