A Rush to Judgment on Patentable Subject Matter

Should a District Court decide the question of patent-eligible subject matter under Section 101 as a “threshold issue” at the outset of the case – i.e., without the benefit of expert testimony and/or claims construction?

_________________

Former CAFC Chief Judge Rader at AIPLA on 10/25/14.

On November 14, the Federal Circuit issued its third opinion on the question of whether the claims in Ultramercial v. Hulu & Wild Tangent describe patent–eligible subject matter under 35 USC 101. In the first two decisions, the panel consisting of Chief Judge Rader and Judges Lourie and O’Malley, reversed the District Court’s granting of defendants’ Rule 12(b)(6) motion to dismiss based solely on the pleadings, i.e., prior to any discovery, expert testimony or formal claim construction.

In the latest decision (“Ultramercial-3”), the panel reached the opposite conclusion and affirmed the dismissal. This apparent turnaround was based on two intervening events: (1) the Supreme Court’s Alice decision in June; and (2) the fact that Chief Judge Rader was no longer on the court, and his place on the panel was taken by Judge Mayer. Much has, and will be, written about the first of these factors, so I would like to focus on the second, and in particular, the diametrically opposed views of Judges Rader and Mayer on a very important procedural issue; namely, whether the lack of patent-eligible subject matter should be a basis for dismissing a case at the outset based only on the “intrinsic” evidence, i.e., the patent itself and its prosecution history in the USPTO, without any discovery, expert testimony and/or claim construction. Notwithstanding the importance of the substantive Alice holding re how to distinguish a claim to an abstract idea from one that has a practical application, the procedural question is at the heart of the reversal of the CAFC’s holding in Ultramercial-3. The two judges’ opposing perspectives can most clearly be seen by comparing Judge Rader’s opinion of the court in Ultramercial-2 with Judge Mayer’s concurrence in Ultramercial-3.

In Ultramercial-2, Judge Rader cited the following three reasons why, “it will be rare that a patent infringement case will be dismissed at the pleading stage for lack of patentable subject matter”:

  1. The normal burden of proof on a 12(b)(6) motion. “Dismissal is appropriate only if the well-pleaded factual allegations in the complaint, construed in the light most favorable to the plaintiff, suffice to establish the defense.”
  1. The statutory presumption of validity and the resulting clear-and-convincing evidentiary standard for an affirmative defense based on invalidity.
  1. The likelihood that the 101 analysis, while ultimately a legal determination, will often be, “rife with underlying factual issues” as to the meaning of claim terms that require interpretation via expert testimony.

Judge Rader argues that the combined effect of these considerations is that Rule 12(b)(6),

requires courts to accept the well-pleaded factual allegations as true and to require the accused infringer to establish that the only plausible reading of the claims is that, by clear and convincing evidence, they cover ineligible subject matter” (emphasis added).

In stark contrast, Judge Mayer cites the following three “salutary effects” justifying a District Court’s determination as to the presence or absence of patent-eligible subject matter at the outset of the litigation:

  1. Conservation of scarce judicial resources, where claim construction is not required –

“[T]he asserted claims disclosed no more than ‘an abstract idea garnished with accessories’ and there was no reasonable construction that would bring [them] within patentable subject matter” (quoting the District Court opinion; emphasis added).

  1. Bulwark against vexatious infringement suits (aka “the scourge of meritless infringement claims”) –

Those who own vague and overbroad business method patents will often file ‘nearly identical patent infringement complaints against a plethora of diverse defendants” and then ‘demand . . . a quick settlement at a price far lower than the cost to defend the litigation’ . . .

Addressing section 101 will thwart attempts – some of which bear the indicia of extortion . . .” (emphasis added).

  1. Protection of the public by early resolution of eligibility, thereby —

clearing the patent thicket, weeding out those patents that stifle innovation and transgress the public domain.”

Judge Mayer’s position is based on two fundamental premises.

First, he believes that there should be no presumption of validity, and thus no clear and convincing evidentiary standard, in connection with a Rule 12(b)(6) motion to dismiss for invalidity under 101, because “the PTO has not properly considered the issue” of what constitutes patentable subject matter,

Because the PTO has, for many years applied an insufficiently rigorous subject matter eligibility standard, no presumption of eligibility should attach when assessing whether claims meet the demands of section 101.”

Second, he argues that the question of patent eligible subject matter is not merely a matter of statutory interpretation – it is a constitutional issue (as previously argued in his August 15 concurring opinion in I/P engine v. AOL et al and his 2008 dissent in In re Bilski). He therefore concludes that business methods are not “within the technological [i.e., useful], arts” as required by Article 1, section 8, clause 8 of the U.S. Constitution, but rather within the “entrepreneurial arts” and are therefore excluded from patent protection as a class.

One may argue that upon closer inspection, the positions of Judges Rader and Mayer are not really at odds in that Judge Mayer limits his recommendation for early resolution of subject matter eligibility to those cases where, “there is no reasonable construction” of the claims at issue that would pass muster under 101. The practical problem is, how does the court come to that conclusion without hearing from persons of skill in the art as to the meaning of claim terms. (It should be noted that the very same consideration applies to a 12(b)(6) dismissal based on claim indefiniteness under section 112(b), following the Supreme Court’s recent decision in Biosig v. Nautilus.)

So who is right, Rader or Mayer? Well, it depends on how one feels about the cost-benefit tradeoff that underlies the U.S. patent system. If you believe, as many do, that patents stifle innovation, then any attempt to limit the availability and scope of patent protection is a good thing. On the other hand, if you believe that patents encourage individual inventors, operating companies and investors to commit the human and financial resources necessary to create disruptive technologies rather than incremental improvements, then Rader is your guy.

Share

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

73 comments so far.

  • [Avatar for Anon]
    Anon
    November 30, 2014 03:02 pm

    Ron, and step back – the question is not one of mere “meaning to the human mind” – as ALL questions of utility (a requirement for patent eligibility) have that dimension.

    It is a question of type of meaning to the human mind.

    Further, we use words, because that is the only tool us scriveners have to use in order to capture inventions. Once upon a time, working models may have been also required to be submitted, but that requirement has gone like nearly forever.

  • [Avatar for step back]
    step back
    November 30, 2014 02:28 pm

    Ron, yes, absolutely.

    Except on 1st glance, the semiotic paper in its opening paragraph seems semi-idiotic to me.
    Take for a example an electrical voltmeter that measures voltage between two electrical nodes.
    The output is purely symbolic, the needle swinging over printed matter in the case of the old ballistic galvanic meters. Are we saying that all measurement instruments are unpatentable because their output is symbolic? It is by these symbols that we humans gain useful understanding of what our reality is.

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 30, 2014 11:59 am

    “We use words and predeterminantly loaded phrases but know not their meanings.

    At last – the intersection of semiotics and patentable subject matter —

    http://ilj.law.indiana.edu/articles/85/85_4_Collins.pdf

  • [Avatar for step back]
    step back
    November 30, 2014 08:18 am

    Anon at 69, alas ole’ chum,
    the fault lies not in our stars
    but in our darn dictionary.
    We use words and predeterminantly loaded phrases but know not their meanings.

    Check our what Steve Pinker has to say about the subject.
    http://www.booktv.org/Program/16274/The+Sense+of+Style+The+Thinking+Persons+Guide+to+Writing+in+the+21st+Century.aspx

  • [Avatar for Anon]
    Anon
    November 29, 2014 01:25 pm

    And I would also point out that the attempt to “distinguish the physical medium from the underlying message” actually misses the point that “the message” is a manufacture – at least it is the combination that is critical for a discussion on software patents.

    The point of the exceptions to the printed matter doctrine applies – and applies fully. The manufacture is not just the physical medium – just as software is not just the underlying message. Software is a manufacture. The trap here (only exploited too eagerly by those opposed to software patents) is to note that the thought of software is in fact not software.

    There is far too much temptation to make a mess of things not to be careful with what is being “distinguished.”

  • [Avatar for Anon]
    Anon
    November 29, 2014 01:03 pm

    I will respectfuly – but nonetheless fully disagree with your rendition of Useful Arts as technological arts.

    Today’s parlance – especially given the words of Congress – necessitate that Useful Arts is broader than technological arts.

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 29, 2014 12:35 pm

    “We should not let the outward appearance (the “ewwww, shiny”) distract us from the underlying function.”

    Indeed. it’s essential to distinguish the physical medium (optical/magnetic removable storage, ROM/RAM, electrons. photons) from the underlying message (machine-readable operating instructions vs. passive data)..

    In 101, the noun, “manufacture” is preceded by the adjective “useful” (as in the constitutional phrase, “useful arts,” which, according to Judge Rich’s 1970 decision in Musgrave. means “technology” in today’s parlance. On the other hand, the word that best captures what the framers meant by “science,” is knowldege. Problem is, the boundary between applied technology and pure knowledge is very, very fuzzy — as the Supreme court’s “software” related 101 decisions over the past twenty years have shown.

  • [Avatar for Anon]
    Anon
    November 29, 2014 09:49 am

    Reading again the give and take – I offer my apologies to Ron, as I misunderstood what you were saying, and again I find myself more agreeing with your side more than with step back’s version (data is data is data).

    “Distinguishing” is not only done in the sections of 102/103 – it is how the manufacture is distinguished that is the emphasis of 101 (and thus the aspect of the written matter doctrine is not solely limited to 102/103). The distinguishing in 101 being as to type – not as to specific prior art.

    To this end, it does make a difference between data as a non-functional related item (mere text or information solely to be processed by the human mind) and data that has a functional relationship outside of the human mind.

    The essence of the exceptions to the printed matter doctrine is that “mere words” can in fact have patentable weight. The phrase “data is data is data” as used here, is simply misleading. Data can be “configured” merely as something that has to be processed by the human mind in order to have any meaning, but data can also be “configured” to have meaning – to imbue functionality – outside of the human mind. There is an added layer of subtlety involved as well, being that the functionality must also exhibit the type of utility that falls into the scope of Useful Arts. This utility screen is what makes proffered hypotheticals using music or literature inapposite to a legal discussion concerning patents (and this point cannot be stressed enough given the repeated attempts to cloud the discussion).

    I would posit that these critical distinctions drive the focus as to choosing a definition of software that avoids the evident confusion and eliminate the easy obfuscation. I would posit that the word software not be used to describe mere “data” that is presented without functionality outside of the human mind. The origin of the word “ware” carries the meaning of pottery, or vessel made for utility. Yes, even some of the earliest forms of pottery exhibit expressions as to descriptive form and decorations (colors, drawings) that would be the subject of copyright protection. But the functionality aspect is an aspect of utility and patent protection. The “ware” aspect fully belongs in the patent realm.

    We should not let the outward appearance (the “ewwww, shiny”) distract us from the underlying function.

  • [Avatar for Anon]
    Anon
    November 28, 2014 06:25 pm

    Ah, Ron, I think not – at least not fully, and certainly not as what is printed relates to function, the object of patent protection.

    An item may have attributes protectable by both copyright and by patent – the underlying item is not a mutually excludable item. Clearly, an item may have both function and expression in its form. The printed matter doctrine in its entirety does not preclude all printed matter from patent protection – merely a certain type or set of printed matter.

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 28, 2014 05:35 pm

    Is a printed book containing a work of fiction a “manufacture”? With the right OCR software, it can be automatically re-instantiated as a CD. I think we are dealing with the boundary between patent and copyright.

  • [Avatar for Curious]
    Curious
    November 27, 2014 07:57 pm

    Data is data is data and nothing more. …. It is not of itself, “inherently” anything.
    No … the data can be a functional element of a machine. It is what makes one machine operate (i.e., function) differently than another. The existence of the stored data (as opposed to data per se) makes one machine (e.g., a computer) different than another.

    The dots on your computer screen are just dots.
    However, how the dots get there is patentable.

  • [Avatar for Curious]
    Curious
    November 27, 2014 07:53 pm

    Why is a CD disk storing computer-executable software patent eligible but a CD disk storing digital music code not?
    Both should be patent eligible as they are both a manufacture. The printed matter doctrine (as currently applied) allows claim limitations to be disregarded under 102/103 analysis. This is not a matter of patent eligibility (i.e., 35 USC 101).

    The difference between a CD containing Bach versus one containing the Beastie Boys is one of non-functional material.

  • [Avatar for step back]
    step back
    November 26, 2014 04:01 pm

    Don’t forget.
    The dots on your computer screen are just dots.
    It is your human mind that decides to connect the dots and “see” something more. 🙂

  • [Avatar for step back]
    step back
    November 26, 2014 03:59 pm

    Data is data is data and nothing more.

    More to the point it is a physical alteration of some sort that we humans perceive as representing symbols. The alteration can be electrical, magnetic, chemical and/or mechanical.

    It is not of itself, “inherently” anything.
    Rather we use our human minds to cast onto the generic markings, meaning that are not inherently there.
    The markings “CAT” on a piece of paper is just ink on paper.
    It is the human mind that decides to see something more in there (provided that mind was trained to read and speak using the English alphabet).

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 26, 2014 02:41 pm

    “I believe that the discussion in Lowry (citing Bernhart) that “the claims requires that the information be processed not by the mind but by a machine, the computer” speaks to the inherently functionality of the data. As such, where the data is inherently functional (as in a computer), then the printed matter doctrine cannot apply..”

    The “inherently functional” language sis consistent with my definitional thesis above (comment 47) distinguishing machine-readable program instructions (“software”) from passive digital data (text, music, video, etc). and in fact was the basis of the 1995 PTO 101 examination guidelines distinguishing “functional descriptive material” (statutory subject matter) from “non-functional descriptive material” (non-statutory s.m.).

  • [Avatar for step back]
    step back
    November 26, 2014 02:38 pm

    Rational Person @52

    Excellent question!

    IMHO that is the issue (better referred to as “nonfunctional merely descriptive matter”) that we have all been struggling with in our heads whether we admit to it out loud or not.

    Why is a CD disk storing computer-executable software patent eligible but a CD disk storing digital music code not?

    IMHO they are both manufactures and thus both per se patent-eligible.

    The CD disk storing digital music code will generally (but not always) fail on 103 grounds in that it is obvious to use a standard music coding protocol to store music (even though it is novel music) and the music itself is generally not part of the useful arts (although there could be unusual exceptions).

  • [Avatar for Curious]
    Curious
    November 26, 2014 02:25 pm

    The dicta from In re Lowry has more to do with the Mental Steps doctrine being inapposite to those claims that may involve steps (or portions of steps) that can also be read as being done by a person, but the claim as a whole not reading purely on a person.
    I wouldn’t totally agree. As described within Gulack, “Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” I believe that the discussion in Lowry (citing Bernhart) that “the claims requires that the information be processed not by the mind but by a machine, the computer” speaks to the inherently functionality of the data. As such, where the data is inherently functional (as in a computer), then the printed matter doctrine cannot apply.

    By comparison, within Ngai (set of instructions attached to kit and to be read by person) and King Pharmaceuticals (informing patient of increased bioavailability of drug) the asserted “printed matter” (or something analogous thereto) performed no function besides providing information to be processed by the human brain. This is not comparable to data structures within a computer that are used and/or manipulated by the computer system.

  • [Avatar for Anon]
    Anon
    November 26, 2014 12:59 pm

    Ron,

    The dicta from In re Lowry has more to do with the Mental Steps doctrine being inapposite to those claims that may involve steps (or portions of steps) that can also be read as being done by a person, but the claim as a whole not reading purely on a person.

    That logic seems to have been severely misplaced in today’s rhetoric.

  • [Avatar for A Rational Person]
    A Rational Person
    November 26, 2014 12:21 pm

    Anon @53

    I think I knew those printed matter cases at one time, but had forgotten their subject matter even if I remembered their names. So thanks for reminding me about them.

    The main reason I know about Class 283 is that I spent vacations in my misspent youth working as a patent searcher, often for individual inventors, and did some searching in the printed matter art.

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 26, 2014 11:56 am

    The following quote is from the 1994 Fed Circuit’s In re Lowry decision —

    “The printed matter cases ‘dealt with claims defining as the invention certain novel
    arrangements of printed lines or characters, useful and intelligible only to the
    human mind.’ The printed matter cases have no factual relevance where “the
    invention as defined by the claims requires that the information be processed not
    by the mind but by a machine, the computer.”

  • [Avatar for Anon]
    Anon
    November 26, 2014 11:23 am

    A Rational Person,

    Are you aware that the most famous cases for the “Printed Matter” patents have nothing at all to do with computers or software at all? Rather, they deal with measuring cups and magic hats.

  • [Avatar for A Rational Person]
    A Rational Person
    November 26, 2014 10:48 am

    NWPA @51

    One problem with the Federal Circuit’s new “technology test” would appear to be the fact that for probably over a century now, the US Patent has been issuing patents for “printed matter” inventions, i.e., the patents currently classified in Class 283. Just browsing through the subclasses of Class 283, one can imagine there must be quite a few patents issued that don’t pass the Federal Circuit’s new “technology test”. How has the Federal Circuit allowed the USPTO to issue all of these patents for decades now, when they were “clearly” not patent-eligible subject matter?

    🙂

    For example, here are some of the subclasses in Class 283:

    2 CALENDAR
    5 BALLOTS
    34 MAPS
    36 INDEXED
    44 MATHEMATICS
    46 LANGUAGE
    56 ADVERTISING
    115 CHART OR GRAPH

  • [Avatar for NWPA]
    NWPA
    November 26, 2014 06:24 am

    To my mind the question is where is this going to stop. Laurie and the Google judges (Renya, Taranto, Hughes) as well as some others like Mayer are going to go wild on 101. They have a clear sign from the SCOTUS that they can just write nonsense and trash the system. I am not sure where the fire line ends. A technology test can be a fire line, but you the technology test as practiced at the EPO is very subtle and the difference between a Laurie technology test and one applied at the EPO is vast.

    So, we have one fire line the technology test. But what other ones do we have?

  • [Avatar for step back]
    step back
    November 25, 2014 09:26 pm

    Electrons may move – but clearly, that is not the end of the story.

    Anon,
    Quite right.
    Photons also move. Phonons move. Magnetic fields move (sometimes).
    And when all intelligently guided by the hand of sapient man, perform new and useful functions.

    Oh, but then again isn’t that what 35 USC 101 says? Any new and useful manufacture?

  • [Avatar for Anon]
    Anon
    November 25, 2014 08:18 pm

    step back,

    I will have to side with Ron (but not fully) on this.

    Electrons may move – but clearly, that is not the end of the story. How the hand of man has fashioned that movement is indeed critical, and makes all the difference (especially in the patent law context, given the ever-ready confusion that certain philosophically bent people will want to render onto the Useful Arts – and yes, that rending does include, sadly, some of the judiciary)

  • [Avatar for step back]
    step back
    November 25, 2014 08:09 pm

    Ron @48

    The electrons don’t care what either you or I (or SCOTUS) says.
    They move nonetheless.

    Have a good holiday! Ho Ho Ho 🙂

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 25, 2014 07:43 pm

    step back @46

    I suppose everyone is entitled to their own definition of software. To me, computer program code, which is expressed in a particular language with prescribed rules as to format, syntax, etc, is software (regarless of the physical medium on which it resides, but digitized data on which a program may operate, is not. . If the stored bits (whether on ROM, RAM, CD, mag tape, etc) are recognizable by a computer operating system as a set of instructions, which when executed perform pre-defined arithmetic or logical operations, then in my taxonomy, it’s software. If it’s text, graphics, music, video or any other form of passive data, it’s not.

  • [Avatar for step back]
    step back
    November 25, 2014 06:50 pm

    Ron @43 FWIW:

    You may mean well, but you are incorrect.
    No one knows what “software” is is.
    You talk to 10 people and you will get 20 misconceptions.

    Let’s consider a bunch of binary bits loaded into a reprogrammable ROM or RAM.
    As far as an electrical engineer might be concerned this is a lookup table (LUT).
    Address bits go in, data bits (of the read kind) come out and you have a parallel code transforming block.
    There is no “language” like Greek or Farsi in this case.
    Yet it is software.
    It moves nonetheless.

    Or let’s take a CD disk loaded with music code. That is not a language. But it is software.

    Or let’s take a TV cable settop box loaded with a descramble code.
    That too is not a language. But it is software.
    For WIW 🙂

  • [Avatar for A Rational Person]
    A Rational Person
    November 25, 2014 05:20 pm

    Ron @43

    I think I’m very close to your position on the 101 subject matter issue and the 112 enablement issue.

    And when I look at a patent such as Ultramercial’s, I don’t see the algorithm.

    For example, at column 4 of U.S. Patent No. 7,346,545, there is the following description: “In accordance with the preferred embodiment, interposed sponsor preferably provides facilitator with access to a message 46, which will be subsequently exhibited to consumer if he or she chooses.” There is no description or diagram showing where message 46 is located, how the sponsor provides “access” to message 46, whether message 46 is a file or streaming data, etc.

    I also did a word search on U.S. Patent No. 7,346,545 and I could not find the terms “database” and “data store”, even though some type of storage of available messages and/or IP would appear to be necessary to implement the claimed invention. Unless, FIG. 1 should be taken literally and the IP 36 and the message 46 are on floppy disks and are delivered to the consumer on floppy disks.

  • [Avatar for American Cowboy]
    American Cowboy
    November 25, 2014 04:56 pm

    You know, when your read Scotus opinions in this area, you have to conclude that they don’t see the word “improvements” in their copes if 35 USC 101.
    An improved computer — improved by reconnecting its “and” and “or” gates in accordance with software.
    An improved piece of DNA — improved by deleting it from the host organism.
    An improved chemical combination that has explosive characteristics (a/k/s gunpowder)

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 25, 2014 04:23 pm

    FWIW, my philosophical “position” on the 101 subject matter issue and the 112 enablement issue, and their relationship to one another, is as follows —

    Software is just another language, like Greek or mathematics or sheet music, for expressing ideas (which happen to be represented in algorithmic form). The key attribute of this particular language from a patent law perspective is that it can be understood, and then “executed,” by a machine, without further human intervention.

    In contrast with copyright, law, the objective is not to protect the particular form of expression but rather the practical (technological) application of the algorithm. The societal quid-pro-quo for this protection is the disclosure of the algorithm, at whatever level or in whatever form, is sufficient to enable persons of skill in the art to use the patented process (after the patent expires) or, better yet, to create non-infringing (and potentially superior) substitutes during the patent term by designing around the claims.

  • [Avatar for Curious]
    Curious
    November 25, 2014 03:58 pm

    Yet, chemical method claims have never triggered the type of analysis proposed by the Supreme Court in Alice.
    No one has ever applied that analysis to chemical claims. You have, however, pointed to the flaw in the Supreme Court’s analysis that conflates obviousness/novelty with statutory subject matter. Regardless, neither Bilski nor Alice explicitly criticize software per se.

    Based on Mayo and Alice, virtually any method step is a “conventional step”. A judge could also reasonably interpret the steps of almost any method claim to be “abstract” and/or not doing “significantly more” than applying a natural law.”
    There you go … take Mayo and Alice to an extreme and nothing is exempt from the “abstract idea” exception. The Supreme Court (in their lack of foresight) fails to appreciate the wide-reaching impact of their analysis.

    I suspect that some in the Supreme Court want to do away with software but won’t go out and state it because there is zero support in the statute for that “policy position.” I say policy position because it isn’t based upon an interpretation of the statute or the Constitution. Instead, they try to backdoor their position by using some non-software-specific language associated with impermissible claims directed to an abstract idea. However, they will eventually realize that this language could easily be the exception (“abstract idea”) that swallowed the statute (i.e., 35 USC 101).

  • [Avatar for step back]
    step back
    November 25, 2014 03:37 pm

    Rational Person @38

    First we should repeatedly note that we have tongue in cheek (we are being sarcastic) when we say the high and mighty Supremes of SCOTUS are teaching us lowly patent practitioners a thing or two about science, technology and abstractionist art paintings.

    Otherwise casual passing-through readers might take us literally.

    I have no WTF idea of what spins inside the heads of the Mount Olympus mighty as they pontificate about finding a geek or two at a Silicon Valley coffee shop on a Friday evening so as to have those turnkey lowly geeks churn out the necessary code over the weekend for the proverbial, single geriatric computer.

    The Olympus mighty have already proudly proclaimed they can’t even handle a simple email.
    Nonetheless they are 101% sure they grok them there Internets and how the single “generic” computer operates. What can one say?

    -ROFCOSISS (Rolling on Floor Crying Off Slowly Into Self-inflicted Stupor)

  • [Avatar for A Rational Person]
    A Rational Person
    November 25, 2014 03:12 pm

    Anon @39

    “1) By and large, patent law is not divisible per art sector (as you appear to want to do).”

    I don’t think this should be done. I am a critic of Alice, Myriad and Mayo, because I think these cases treated computer-implemented claims and biotech claims to a different standard than had been applied to claims to other types of technology.

    “2) The Office (seemingly knowing 1) above), is in the process of actively promulgating a single directive to applying 101.”

    I would suggest that the USPTO’s problems in creating Myriad-Mayo guidelines illustrates the problems with trying to apply the holdings of the Alice, Myriad and Mayo cases to patent claims in general. For example, the first version of the guidelines indicated that gunpowder would not be patent-eligible today. The USPTO has also had trouble identifying any rational and useful way to distinguish a patent eligible claim from a patent ineligible claim.

    At least in Biotech, the major players are often patent holders, so there has been a lot more push back against the Myriad-Mayo guidelines than against the Alice guidelines.

    I still have not seen any example of a method claim in any technology that a rational judge could not find to be patent ineligible under 35 USC 101 based on the reasoning in Myriad, Mayo and Alice.

    Based on Mayo and Alice, virtually any method step is a “conventional step”. A judge could also reasonably interpret the steps of almost any method claim to be “abstract” and/or not doing “significantly more” than applying a natural law.”

  • [Avatar for Anon]
    Anon
    November 25, 2014 02:26 pm

    A Rational Person,

    Two things to point out to you:

    1) By and large, patent law is not divisible per art sector (as you appear to want to do).
    2) The Office (seemingly knowing 1) above), is in the process of actively promulgating a single directive to applying 101.

    The lesson here is (well, one of many, I suppose): Be careful what you wish for, you just might get it. (and that “you” would be the anti-patent wishers).

  • [Avatar for A Rational Person]
    A Rational Person
    November 25, 2014 12:46 pm

    American Cowboy @35

    Good point.

    Reading Supreme Court decisions, I often wonder if the justices’ concepts of science and technology are solely based on watching the Professor build various gadgets from a radio in a matter of hours on Gilligan’s Island.

  • [Avatar for A Rational Person]
    A Rational Person
    November 25, 2014 12:26 pm

    Curious @36

    “Perhaps you can show me specifically where in Bilski and Alice these justices showed skepticism regarding software.”

    From Alice:

    Taking the claim elements separately, the function performed by the computer at each step of the process is “[p]urely conventional.” Mayo, supra, at ___ (slip op., at10) (internal quotation marks omitted). Using a computerto create and maintain “shadow” accounts amounts to electronic recordkeeping—one of the most basic functionsof a computer. See, e.g., Benson, 409 U. S., at 65 (noting that a computer “operates . . . upon both new and previously stored data”). The same is true with respect to the use of a computer to obtain data, adjust account balances,and issue automated instructions; all of these computer functions are “well-understood, routine, conventional activit[ies]” previously known to the industry. Mayo, 566
    U. S., at ___ (slip op., at 4). In short, each step does no more than require a generic computer to perform generic computer functions.

    Based on the above standard of “conventional” virtually all of the steps of most method claims for chemical inventions are “conventional” i.e., heating, cooling, mixing, filtering, etc. would appear to meet the Supreme Court’s definition of conventional.

    Yet, chemical method claims have never triggered the type of analysis proposed by the Supreme Court in Alice. So, I think it is reasonable to infer that the type of claims that were the subject of the Alice decision, i.e., computer-implemented method claims, were likely what triggered this new test of patent eligibility.

    If the justices are not more skeptical about computer-implemented inventions than other types of inventions, what was the need for this new test that has so far only seemed to have been required for computer-implemented inventions?

  • [Avatar for Curious]
    Curious
    November 25, 2014 11:11 am

    Where have I said “the Supreme Court justices have stated that ‘computer-implemented method claims should not be patent-eligible.’”
    You stated “the perception of the public, judges, the Supreme Court justices and even many programmers that software claims and computer-implemented method claims should not be patent-eligible.”

    I am saying that no matter what the Supreme Court’s decisions say in Bilski and Alice, it’s pretty clear that several of the Supreme Court justices do not view software claims and computer-implemented method claims the same way they view other types of method claims
    Perhaps you can show me specifically where in Bilski and Alice these justices showed skepticism regarding software.

    I see no description of existing “off the shelf” software programs or products that are able to perform the various steps of the claimed method nor a description of how existing software could be modified to perform the steps of the claimed method.
    Don’t confuse dicta with a requirement. Are you or are you not an attorney? Regardless, you have yet to identify anything within the claims that one skilled in the art would need undue/unreasonable experimentation to achieve.

  • [Avatar for American Cowboy]
    American Cowboy
    November 25, 2014 10:40 am

    To chime in on the enablement discussion, didn’t Scotus teach us mere patent attorneys that all of this software stuff can be carried out by code written by a second-year engineering student over a weekend? That guidance from Mount Olympus establishes that the needed level of disclosure required is pretty minimal, apparently as a matter of law.

  • [Avatar for A Rational Person]
    A Rational Person
    November 25, 2014 10:08 am

    Curious @33

    Also, you need to re-read the case law if you think any of the Supreme Court justices have stated that “computer-implemented method claims should not be patent-eligible.” Wishful thinking statement about the law.

    Where have I said “the Supreme Court justices have stated that ‘computer-implemented method claims should not be patent-eligible.’” You are putting words in my mouth. I am saying that no matter what the Supreme Court’s decisions say in Bilski and Alice, it’s pretty clear that several of the Supreme Court justices do not view software claims and computer-implemented method claims the same way they view other types of method claims. Based on Mayo and Myriad, also I think the Supreme Court justices view many types of biotechnology differently than they view other types of technology. For example, I said months ago on this board that applying the reasoning of Mayo and Alice, most method claims in the field of chemistry could easily be found to not be patent eligible. And given how much I hate the Mayo and Alice decisions, this is not “wishful thinking” on my part.

    Regarding MPEP 2164.06, here is an example of a electrical device that was found not to be enabled under 35 USC 112:

    “For example, a disclosure of an electrical circuitapparatus, depicted in the drawings by blockdiagrams with functional labels, was held to benonenabling in In re Gunn, 537 F.2d 1123, 1129,190 USPQ 402, 406 (CCPA 1976). There was noindication in the specification as to whether the partsrepresented by boxes were “off the shelf” or mustbe specifically constructed or modified forapplicant’s system. Also there were no details in thespecification of how the parts should beinterconnected, timed and controlled so as to obtainthe specific operations desired by the applicant.”

    In U.S. Patent 7,346,545 I see no description of existing “off the shelf” software programs or products that are able to perform the various steps of the claimed method nor a description of how existing software could be modified to perform the steps of the claimed method.

  • [Avatar for Curious]
    Curious
    November 24, 2014 09:36 pm

    What evidence is there inU.S. Patent 7,346,545 that there was enough there that a programmer could make the claimed invention?

    I suggest you look at the factors discussed in MPEP 2164.01. BTW — the burden would be on you to establish that the experimentation needed to practice the invention undue or unreasonable. Perhaps you could point to something within the claims that one skilled in the art would need undue/unreasonable experimentation to achieve?

    feeds into the perception of the public, judges, the Supreme Court justices and even many programmers that software claims and computer-implemented method claims should not be patent-eligible
    Perhaps they need to look at the case law. BTW — the rule of law still applies in this country (although recent decisions give me pause). Also, you need to re-read the case law if you think any of the Supreme Court justices have stated that “computer-implemented method claims should not be patent-eligible.” Wishful thinking statement about the law.

    After see how little disclosure there is in these patents, many people who oppose software patent feel justified in being skeptical of the worth of these patents.
    Another example of the software crowd thinking they need special rules because of their “specialness” when they really aren’t. The same lack of details you bemoan in software patents are also absent in other types of patents. However, the software crowd isn’t aware of them because they don’t look at those patents or if they do look at those patents, they don’t know enough about the technology to appreciate the details that are missing.

  • [Avatar for Curious]
    Curious
    November 24, 2014 09:24 pm

    Take a look at the recent (post-Nautilus) Fed Circuit decision in Interval Licensing v. AOL et al. The prevailing “rule” now is that the scope of software-related claims should be analyzed under 112(f) — previously 112(6) — as if they were written in means-plus-function form on the basis that all software is inherently functional, i.e., an ordered sequence of operations performed by a computer).
    I’m a bit at a loss. I did take a look at this case (decided Sept. 10, 2014) and found nothing of the sort. There was no mention of 112(f) or the sixth paragraph of 35 USC 112.

  • [Avatar for A Rational Person]
    A Rational Person
    November 24, 2014 09:21 pm

    Curious @28

    I did not say “capable of producing a commercially-viable product” nor did I indicate this was the standard.

    I said “implement the method of the claims if a programmer only had the disclosure of the Ultramercial patent.”

    What evidence is there inU.S. Patent 7,346,545 that there was enough there that a programmer could make the claimed invention?

    I believe software should be patent-eligible. I believe that computer-implemented methods should be patent-eligible. But I can’t ignore that what it seems to takes to satisfy Section 112 with respect to many computer-implemented inventions seems to be minimal compared to what it takes to satisfy Section 112 with respect to other technologies.

    I would also suggest that the skimpiness of the disclosures of many software method and computer-implemented patents feeds into the perception of the public, judges, the Supreme Court justices and even many programmers that software claims and computer-implemented method claims should not be patent-eligible,. After see how little disclosure there is in these patents, many people who oppose software patent feel justified in being skeptical of the worth of these patents..

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 24, 2014 08:14 pm

    “I think much of the problems with “junk patents” has been caused because the USPTO has not required more from inventors of computer-implemented inventions with respect to Section 112.”

    Not any more. Take a look at the recent (post-Nautilus) Fed Circuit decision in Interval Licensing v. AOL et al. The prevailing “rule” now is that the scope of software-related claims should be analyzed under 112(f) — previously 112(6) — as if they were written in means-plus-function form on the basis that all software is inherently functional, i.e., an ordered sequence of operations performed by a computer). Under this view, the scope of the claim will be limited to the specific “algorithm” disclosed in the spec plus structural (whatever that means) equivalents thereof. Disclosure of an algorithm most likely requires, at a minimum, a flow chart, and in some cases maybe even source code. If the court determines that no algorithm is disclosed, it’s not a question of scope any more — the claim is invalid as indefinite under 112(b).

  • [Avatar for Curious]
    Curious
    November 24, 2014 07:22 pm

    I cannot imagine the hours of trial and error programming it would take to actually implement the method of the claims if a programmer only had the disclosure of the Ultramercial patent.
    I suspect the “hours of trial and error” spent programming the invention associated with Ultramercial’s patent is not substantially more (in fact, probably a lot less than some) than the hours of trial and error needed to build the vast majority of mechanical devices based upon what is in the specification.

    Patents are not operations sheets — not needed to one skilled in the art to practice the invention. Sure, it may take some trial and error to get all of the bugs out for a commercially-viable product, but “capable of producing a commercially-viable product” is a much higher standard than making/using the claimed invention.

  • [Avatar for A Rational Person]
    A Rational Person
    November 24, 2014 06:03 pm

    Step Back @27

    That’s a very intriguing and possibly accurate theory.

    One particularly frustrating thing about Ultramercial is that this ended up being a Section 101 case instead of a Section 112. As you’ve stated, the patent disclosure is “skimpy” and I really question whether this disclosure really meets the enablement requirement with respect to what is claimed.

    One of the ideas behind granting patents is that there is a quid pro quo: the inventor receives a limited monopoly in exchange for providing the public with information about how the inventor’s invention operates, how to perform the method of the invention, etc. With respect to Ultramercial’s patent disclosure, has the public really received anything of significant value with respect to knowing how to implement Ultramercial’s invention?

    I think much of the problems with “junk patents” has been caused because the USPTO has not required more from inventors of computer-implemented inventions with respect to Section 112.

    With respect to most mechanical inventions, the USPTO requires drawings showing the details of the invention.

    With respect to chemical inventions, the USPTO requires detailed examples showing how the invention works, drawings showing chemical formulas etc.

    With respect to biotech inventions, the USPTO requires examples of how the invention works, sequence listings, deposits, etc.

    With respect to electrical inventions, the USPTO requires schematic diagrams illustrating the circuits.

    In contrast, with respect to computer-implemented inventions, the USPTO seems to require surprisingly little disclosure, as shown in Ultramercial. I cannot imagine the hours of trial and error programming it would take to actually implement the method of the claims if a programmer only had the disclosure of the Ultramercial patent.

    In particular, I think about all of the 112 rejections I have seen with respect to biotechnology where the scope of the claims has been questioned based on not having enough working examples, because of the “unpredictability” of biological processes. Yet, the disclosures of these applications have been much more detailed than the disclosures of many of the patents for computer-implemented patents whose claims cover embodiments of vast scope that are often described in only a sentence or two in the patent disclosure.

  • [Avatar for step back]
    step back
    November 24, 2014 04:08 pm

    Rational Person @25

    There may be another dynamic at play.
    I f you look at the defendant in each of Bilski, Alice and Ultramercial you will note that it is “too big to fail” entity.

    In Bilski, the whole of the commodities trading market was at stake.
    In Alice, the CLS Bank was noted by the court to be the biggest settlement broker in the industry.
    In Ultramercial, pretty much everyone is using the forced-to-watch advertisement model as a way of monetizing their otherwise freely-given-away content.

    SCOTUS will grant cert only if one of the players is big enough to be worthy of SCOTU’s time.
    Some people here wonder why Ultramercial with such a skimpy patent disclosure bothered to take the case all the way up. Well, follow the money; meaning the size of the payoff had they won.

  • [Avatar for Curious]
    Curious
    November 24, 2014 02:22 pm

    My intention in writing the article was not to focus on the result in Ultramercial, but rather on the deep philosophical divides that exist on the Court in this area, such that a one-judge change in the panel can reverse the outcome.
    That was evident after Bilski. Frequently, one need only look at the composition of the panel to determine the result.

    So much for predictability.
    If the law was predictable, we wouldn’t need judges (or perhaps attorneys is some instances). Predictability would make my job easier but would leave judges less tools to muck around with the result (heaven forbid).

    an analytical approach which I thought was [rightly] rejected in their post-Flook decsions
    A slight improvement.

  • [Avatar for A Rational Person]
    A Rational Person
    November 24, 2014 01:54 pm

    Ron,

    Thanks for the article.

    As an illustration of your point about: “The practical problem is, how does the court come to that conclusion without hearing from persons of skill in the art as to the meaning of claim terms. (It should be noted that the very same consideration applies to a 12(b)(6) dismissal based on claim indefiniteness under section 112(b), following the Supreme Court’s recent decision in Biosig v. Nautilus.),” see the following from the Ulramercial decision:

    “This ordered combination of steps recites an abstraction—an idea, having no particular concrete or tangible
    form. The process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the
    sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application.”

    Even ignoring the fact that the court’s definition of “an abstraction” is not based on any definition of “abstract” or “abstraction” provided by the Supreme Court in Alice, because, of course, the Supreme Court provided no such definition, I think it is at least a question of fact if the steps determined to be an “abstraction” by the court in Ultramercial even meet the definition of “abstraction.” In fact, a case could be made that none of the steps listed meet the definition of “abstraction” provided by the court.

    So on top of everything else, the Ultramercial decision is sloppy. For example, where is the discussion of why the steps of “displaying an ad”, “receiving payment from the sponsor of the ad”, etc. are each an “abstraction” as a matter of law with no reference to any facts provided by the patent or any outside expert?

  • [Avatar for Anon]
    Anon
    November 24, 2014 12:12 pm

    Paul,

    I find your reply to be a non sequitur that simply does not address the point of my post.

    US law is different than EP law.

    Your post is as much cr*p as the applications you wish to denigrate. Sorry if that comes across as harsh, but you of all people should easily recognize the sovereign nature of patent law.

    Please withdraw the fallacy of your logic instead of trying to defend it.

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 24, 2014 12:11 pm

    Two points —

    1. My intention in writing the article was not to focus on the result in Ultramercial, but rather on the deep philosophical divides that exist on the Court in this area, such that a one-judge change in the panel can reverse the outcome. So much for predictability.

    2. I agree that 102/103 would have been a much batter basis for reaching the same result. (This may have resulted from the fact that the appeal was based on 101 only.) Problem is, in Alice the Supreme Court improperly conflated the statutory subject matter analysis (i.e., eligibility-as-a-class) with lack of novelty and/or non-obviousness of the particular invention as claimed — an analytical approach which I thought was rejected in their post-Flook decsions.

  • [Avatar for Curious]
    Curious
    November 24, 2014 12:04 pm

    If the specification does not disclose a fact patters sufficient for eligibility before the EPO, it is highly likely (but not a certainty) that this will be because the specification is cr*p. The same cr*pness will be present in the US case and will be detected by the US judges who are intelligent people.
    There isn’t a non-cr*ppy standard for either claims or the specification in the US. Your claims can be cr*p and the specification can be horribly written, but if you meet the requirements of 35 USC 102/103/112, then your claims should be allowed.

    it is an indicator (if you are a betting man) that US proceedings will also fail
    Hardly — different laws = different results. Regardless, the Ultramercial case came out different the first two times at the Federal Circuit. Are you saying that they should have just given up once they got the negative ruling in the lower court?

    Do you recommend to your clients to abandon every time you get a first action rejection?

  • [Avatar for Curious]
    Curious
    November 24, 2014 11:58 am

    Everything relevant is plain on the face of the document even to a non-technical person, and there was no reason for the court not to rule on eligibility and save everyone concerned further wasted effort.
    I’m sorry, but in the legal world I work in we rely upon evidence — not a gut feel as to what is or isn’t within the knowledge of university graduates. Regardless, that is a question of prior art — to be resolved under 35 USC 102/103 — not 35 USC 101.

  • [Avatar for Paul Cole]
    Paul Cole
    November 24, 2014 10:32 am

    @ Anon

    The law changes on going from the US to Europe (though less than you might think) but the facts do not.

    If the specification does not disclose a fact patters sufficient for eligibility before the EPO, it is highly likely (but not a certainty) that this will be because the specification is cr*p. The same cr*pness will be present in the US case and will be detected by the US judges who are intelligent people.

    It follows that if a case is thrown out by the EPO, that is not conclusive under US law. However, it is an indicator (if you are a betting man) that US proceedings will also fail, and that a trip to the CAFC (x3) or to the Supreme Court is very inadvisable.

    On the other hand, if you draft in such a way that a European application has a good chance of being granted, you may well have an application that is eligible in the US as well.

  • [Avatar for Anon]
    Anon
    November 24, 2014 10:18 am

    Paul Cole at 16,

    I would submit that you do not attempt to argue with the logical fallacy of “in the EP, the laws are such”

    Please respect the difference that the sovereign nation of the United States has in regards to business methods.

    As you do not in your immediate post, I will dismiss your post, with prejudice.

  • [Avatar for American Cowboy]
    American Cowboy
    November 24, 2014 10:17 am

    Paul Cole mentions “there is nothing in the Ultramercurial specification that goes beyond the understanding of most university graduates, irrespective of the subjects in which they have majored”

    Assuming that that is true, the patent application can be rejected or patent invalidated using the tools of the novelty and non-obviousness requirements. There is no need to toss on eligible subject matter grounds. Doing so, which is what this whole Alice-Ultramercial-Bilski line of cased does, makes determining what is patentable and what is not, nearly impossible.

  • [Avatar for Bob Zeidman]
    Bob Zeidman
    November 24, 2014 04:24 am

    Ron,

    Very nice article about the unfortunate state of the patent system.

    Hope you’re doing well. Sorry we won’t be working together as planned.

    Regards,
    -Bob

  • [Avatar for Paul Cole]
    Paul Cole
    November 23, 2014 12:39 pm

    In CLS v Alice the corresponding European application ran into business method objections and was allowed to become abandoned. In Ultramercurial the corresponding International application was referred to the EPO which refused to condict a search on the basis that all that was disclosed was an unpatentable business method. this finding was not challenged and the Internatiioonal application was not brought into effect in the EPO.

    Patents whose European equivalents are refused protection in this way are clearly at the margins of what is acceptable. It is unwise to litigate them, even more unwise to contemplate three references to the Federal Circuit and still more unwise to trouble the Supreme Court.

    While there may be cases where expert evidence is needed, there is nothing in the Ultramercurial specification that goes beyond the understanding of most university graduates, irrespective of the subjects in which they have majored. Everything relevant is plain on the face of the document even to a non-technical person, and there was no reason for the court not to rule on eligibility and save everyone concerned further wasted effort.

    Judge Mayer is clearly out of line with the majority opinions in both Bilski and Alice, and it is submitted that if a judge disagrees with concurrent oponions of a superior court, silence is the wiser course. However, the EPO practice is that when the state of a file is such that a decision can be taken, then it should be taken without further delay. That principle has much to commend it, and weeding weak patents out of the litigation process at an early stae has much to commend it.

  • [Avatar for step back]
    step back
    November 22, 2014 04:48 pm

    Thank you Ron!

    Should be a must-read on the SCOTUS book shelf.

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 22, 2014 04:40 pm

    Here’s the url –

    http://ipmall.info/hosted_resources/lipa/patents/patentact/lutz.pdf

  • [Avatar for step back]
    step back
    November 22, 2014 03:26 pm

    Ha!

    I didn’t know they were still around:
    http://www.jptos.org/news/152/80.html

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 22, 2014 02:21 pm

    We have been here before. For a little historical perspective, the following is an excerpt from a 1953 JPOS article written by a patent attorney named Karl Lutz commenting on the motivation for enactment of the 1952 patent statute —

    ““[T]he federal courts for over a hundred years took a liberal attitude toward patents. They believed that the purpose of the Constitution was to foster and protect invention and their decisions carried out that purpose.”

    “But since 1930 the U.S. Supreme Court has taken a less benevolent attitude toward patents. It has reversed precedents of long standing; it has destroyed well-established doctrines of the common law of patents; it has taken a harsh attitude toward most of the patents that have come before it. This attitude of the Supreme Court has naturally been reflected to some extent in the decisions of the lower courts.” [see Vol. XXXV JPOS 155.]

    This article is definitely worth a read.

  • [Avatar for step back]
    step back
    November 22, 2014 01:49 pm

    Ron Laurie,

    Thank you for participating in the comments dialog of this post.

    Curious and I may appear to be jokesters above, but basically it is gallows humor.

    We are reminiscing (some 50 years after JFK) about a dead document they used to call the Constitution of the United States of America and the supreme law of the land.

    In that long forgotten document there is a section about the legislative power vesting exclusively with the Congress.

    I don’t recall it saying, “And BTW the political jesters who get appointed to SCOTUS can make stuff up too.”

    Also in that long forgotten document there is a section about “securing to inventors the exclusive rights in their discoveries.

    I don’t recall another section in the Constitution saying, “And BTW, SCOTUS can de-secure inventors anytime and in any way it wants”.

    Moreover, there is a legislative act called 35 USC 101.
    I don’t recall it saying, “And BTW, any arbiter who is not credentialed in science and the useful arts can chime in and arbitrarily, capriciously decide what the claim is “directed” to and throw out the whole thing including its detailed bill of particulars (a.k.a. the elements of the claim, the subject matter which the inventor regards as the invention)”

    So where have all the flowers gone? Gone to spineless genuflectors who bow before SCOTUS and the CAFC no matter how far outside the Constitution they meander.

  • [Avatar for Curious]
    Curious
    November 22, 2014 01:12 pm

    which have been UNANIMOUS that the subject claims are not patentable subject matter
    None of my clients claim anything close to what is claimed in Bilski, Alice, et al. As such, I need to read the “various remarks” to get a clue as to what is patentable. A clearly evidenced from the concurrences of Bilski and Alice, there is a DIVISION in the court as to how far they will go.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    November 22, 2014 12:14 pm

    Thanks for the above responses to my practical questions in dealing with the present legal reality.

    BTW way too much attention is being paid to the various remarks in recent 101 decisions instead of the actual holdings, the actual decisions, which have been UNANIMOUS that the subject claims are not patentable subject matter. Just because a Sup. Ct. majority is unwilling to make “black letter law” against all business methods, or is even willing to define “abstract,” does not realistically provide the still open door or welcome mat that some folks would like to think that it does for business method patents.

  • [Avatar for Ron Laurie]
    Ron Laurie
    November 22, 2014 11:37 am

    “. . . how much evidence, including declarations, should parties try to put into the record with a 12(b)(6) motion, or a response to it, re an asserted business method claim . . .”

    Depends on the proper evidentiary standard for the moving party – if it’s clear-and-convincing, (per Rader),then any credible expert testimony as to a 101-compliant claim construction should require denial of the 10(b)(6) motion. In that case, those challenging validity will surely file an IPR or CBM in view of the USPTO’s “broadest reasonable construction” rule.

  • [Avatar for t]
    t
    November 22, 2014 11:00 am

    (raises hand) – Paul, I would definitely counsel clients to file a CBM petition considering the increasing broad subject matter that are being accepted. As for the first question, I would assume it depends on the particular jurisdiction (and judge) in which the case is being heard.

  • [Avatar for Paul F. Morgan]
    Paul F. Morgan
    November 22, 2014 10:25 am

    Since Judge Mayer’s views are only in a concurrence, not the actual, majority, opionion, they are not the law.

    The interesting practical question to me here is how much evidence, including declarations, should parties try to put into the record with a 12(b)(6) motion, or a response to it, re an asserted business method claim [or a “do it on any computer” apparatus business claim with no specific or novel software] on issues like “abstraction”, “preclusion” etc.? Could that affect, either way, a “I know it when I see it” abstraction determination on appeal?
    Also, is this not a question any client should ask its O.C.?: Why would any defendant not want to promptly file a CBM petition to raise the same 101 issue and be able to get a stay of the litigation in case the 12(b)(6) motion is not granted by the D.C. before being eaten by discovery costs?

  • [Avatar for t]
    t
    November 22, 2014 10:16 am

    Very humorous both of you. However, we are still going to need the legislature to change 101 at this point for any of us scribners to feel better. My sugggestion: “Whoever invents or discovers (start double underline) any (end double underline) 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.” Alternatively, “Whoever invents or discovers any (and we mean it any – darnit) 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.”

  • [Avatar for step back]
    step back
    November 22, 2014 03:10 am

    Silly attorney … reading statutes is for suckers and 1Ls. Sophisticated jurists realize that statutes are merely vague guidelines to be pondered but not necessarily followed.

    LOL

    Laws are only there to keep the little people in line, aye?

  • [Avatar for Curious]
    Curious
    November 21, 2014 11:28 pm

    Looks like you already got here.
    Words are overrated … we should just take a hit of a crack pipe and see if our feelings can tell us whether the patent is directed to an abstract idea. Relying upon your gut feel better fits the notion of judicially efficiency — facts and the law just get in the way of doing what the judge feels should be the correct result.

    Read also 35 USC 112
    This is why you haven’t anticipated the recent pronouncements from SCOTUS and the Federal Circuit — you actually think the statute means something. Silly attorney … reading statutes is for suckers and 1Ls. Sophisticated jurists realize that statutes are merely vague guidelines to be pondered but not necessarily followed. As a judge, If you aren’t rewriting the statute, then what good are you?

  • [Avatar for step back]
    step back
    November 21, 2014 06:04 pm

    Curious,

    Looks like you already got here.

    And yes. Read also 35 USC 112 where it is the inventor who gets to set forth the bill of particulars that is to be regarded as the claimed invention.

    http://patentu.blogspot.com/2014/11/sucking-off-abstract-pipe.html

  • [Avatar for Curious]
    Curious
    November 21, 2014 04:19 pm

    He therefore concludes that business methods are not “within the technological [i.e., useful], arts” as required by Article 1, section 8, clause 8 of the U.S. Constitution, but rather within the “entrepreneurial arts” and are therefore excluded from patent protection as a class.
    As I have pointed out before in different forums, Mayer really needs to look at the Alice concurrence — signed by 3 judges, not the 4 of Bilski, and not the 5 needed to change the law. The 3 (not 5) would have eliminated “business methods” (whatever that means) from patentability (i.e., “I adhere to the view that any ‘claim that merely describes a method of doing business does not qualify as a ‘process’ under §101′”). However, 6 justices did not sign onto that opinion.

    Mayer’s belief that CLS Bank sets out a “technological arts test” cannot be reconciled with the 6 justices who are unwilling to sign onto an opinion that forecloses any “method of doing business.”

    Mayer writes that it the duty of the patent laws to “encourage, rather than impede, scientific progress and technological innovation.” One problem with Mayer even writing this statement is that if the patent in question doesn’t involve “scientific progress and technological innovation,” then the patent does not “impede” the same. The second problem with Mayer’s statement is that “scientific progress” is an exceptional broad term — applicable to nearly all fields of knowledge (including business).

    Judge Mayer limits his recommendation for early resolution of subject matter eligibility to those cases where, “there is no reasonable construction” of the claims at issue that would pass muster under 101
    Ah yes … let’s skip straight to the conclusion without any fact-finding whatsoever. Wouldn’t law be easy if that is all that it took.

    I have already identified some of the misstatements within Mayer’s decision elsewhere, so I won’t repeat them at this time. To quote the only decent writer in the website that starts with a patent and ends with and O, “Read. The. Statute.” Besides 35 USC 101, I suggest that Mayer read both subsections (a) and (b) of 35 USC 282.

Varsity Sponsors


Warning: Undefined array key "tag" in /www/ipwatchdogcom_574/public/wp-content/themes/ipwatchdog/lib-2021/widgets/views/latest-posts.php on line 10

Junior Varsity Sponsors

From IPWatchdog