In re Smith: The Federal Circuit Jumps the Shark

“As with Killian, the Smith claims have nothing to do with ‘comprehending’ anything, the issue never appears in the PTAB decision or any brief before the Federal Circuit, and Appellant Smith never had an opportunity to be heard on the ‘comprehending’ theory of ‘abstract’.”

Jump sharkLast June, Gene Quinn published an iconic article, “Yu v. Apple Settles It: The CAFC is Suffering from a Prolonged Version of Alice in Wonderland Syndrome,” in which Mr. Quinn evokes Lewis Carrol’s White Queen, “who was known to have sometimes ‘believed six impossible things before breakfast’” to describe the ridiculous nature of the Yu. v. Apple decision. To Judge Taranto’s credit, the Yu v. Apple decision is a remarkable read, so long as one knows nothing of photography and nineteenth century art history. However, in less than three months after Yu. V. Apple, the Federal Circuit would progress from mere fiction to fantasy / science fiction in both the In re Killian case (in which the author served as counsel for Killian) and the more recent case of In re Jason Smith, Appeal 22-1310 (Fed. Cir. Aug. 9, 2022), in which Judges Lourie, Dyk, and Hughes rejected Smith’s claims in an act that is aptly described as “jumping the shark.”

A Remarkable Departure from the Record

In particular, the Smith panel declined to uphold the Patent Trial and Appeal Board’s (PTAB’s) theory of “abstract,” while quoting In re Killian to explain the abstract idea of “collection of information, comprehending the meaning of that collected information, and indication of the results, all on a generic computer network operating in its normal, expected manner” (emphasis added).

The first problem with this “comprehending” theory is that the claims in Killian were rejected by the PTAB as directed to the alleged abstract idea of providing social security benefits combined with the long defunct (at least by the Supreme Court) mental steps theory of patent eligibility. Finding an error in the PTAB’s mental steps theory, Judge Chen sua sponte changed the theory of rejection in Killian by asserting this “comprehending” theory of abstract. However, the Killian claims have nothing to do with “comprehending” anything, and the term “comprehend” (or any variation or derivative) never appears in the PTAB decision or any brief before the Federal Circuit. This new theory of rejection represents a remarkable departure from the record before the Federal Circuit.

The second problem with the Smith decision is that the Smith Panel decided, sua sponte, to change the theory of rejection by asserting the same nonsensical “comprehending” theory invented by the Killian Panel, despite the fact that the PTAB held the “abstract idea” of the Smith claims as related to “organizing business or sales activity.” As with Killian, the Smith claims have nothing to do with “comprehending” anything, the issue never appears in the PTAB decision or any brief before the Federal Circuit, and Appellant Smith never had an opportunity to be heard on the “comprehending” theory of abstract.

These decisions against Killian and Smith are back-to-back violations of both due process of law and the Administrative Procedure Act (APA), whereby the Federal Circuit spontaneously invented a new theory of “abstract” based on things that never happened in Killian, then applied this new theory to things that never happened in Smith to come to a conclusion of patent ineligibility having no basis in anything that ever happened at the USPTO or before the Federal Circuit.

A Failure to Comprehend

However, one can be too enthralled by these most recent constitutional violations by the Federal Circuit to appreciate the true absurdity of the Federal Circuit’s latest favorite theory of abstract. That is, forgetting that Killian and Smith have nothing to do with “comprehending” anything, the Federal Circuit’s latest legal fiction reflects a disturbing lack of understanding about how conventional computer networks operate. Specifically, “generic computer networks operating in a normal, expected manner” don’t “comprehend” things any more than a hammer does! The frightening thing about this absurd theory of rejection: One Federal Circuit judge in each of Smith and Killian had to write it down while at least two other Federal Circuit judges said, “Yeah, that seems right.”

Check the Precedent

Thus, the Federal Circuit not only expects the patent community to believe in impossible things but is now trying to sell science fiction in a manner that is prejudicial to Smith and a violation of binding judicial precedent from the Supreme Court that has been in place for over 60 years. See Burlington Truck Lines, Inc. v. United States, 371 U.S. 156, 168 (1962) (holding that courts are “powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.”); Securities & Exchange Comm’n v. Chenery Corp., 332 U. S. 194, 332 U. S. 196 (1947) (holding that a reviewing court must judge the propriety of an agency action solely by the grounds invoked by the agency, and that “[i]f those grounds are inadequate or improper, the court is powerless to affirm the administrative action); Motor Vehicle Mfrs. Assn. v. State Farm, 463 U.S. 29 (1983) (a reviewing court “may not supply a reasoned basis for the agency’s action that the agency itself has not given”); and Gonzalez v. Thomas, 547 U.S. 183 (2006) (“A court of appeals `is not generally empowered to conduct a de novo inquiry into the matter being reviewed and to reach its own conclusions based on such an inquiry’”).

While Federal Circuit quislings might cite In re Comiskey, which interprets Chenery as meaning that the “Supreme Court made clear that a reviewing court can (and should) affirm an agency decision on a legal ground not relied on by the agency if there is no issue of fact, policy, or agency expertise,” Berkheimer, Alice Corp., Mayo and Bilski all recognize that whether something is “well-known, routine, and conventional” under step one of Alice/Mayo is an issue of fact. Further, Comiskey cannot be reconciled with the “de novo inquiry” language of Gonzalez and as well as Title 5 U.S.C. § 706(2)(A), which requires the Federal Circuit to “hold unlawful and set aside agency action, findings, and conclusions found to be . . . arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” Further, the Comiskey rule does not allow an aggrieved party an opportunity to be heard on the Federal Circuit’s new grounds of rejection no matter how speculative the new grounds are, no matter how removed from the factual record the new grounds are, or even how distantly removed from the laws of physics and common sense the new grounds are. The Comiskey rule stands for nothing but an opportunity to commit injustice under color of law. See Singleton v. Wulff, 428 U.S. 106, 121 (1976), where the Supreme Court cautioned that injustice is “more likely to be caused than avoided by deciding the issue without petitioner’s having had an opportunity to be heard.”

Hanging On at All Costs

The lesson of Smith is as follows: At least half of Federal Circuit judges have no interest in clarifying patent eligibility and will evoke the most impossible of fictions and scatterbrained legal theories to hang on to the capricious judicial veto that is Alice/Mayo.

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Author: Elnur_

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18 comments so far. Add my comment.

  • [Avatar for B]
    B
    October 13, 2022 01:30 pm

    @ Curious “ How did they back off of it? Page 8 of the slip opinion referred to operations being performed in the human mind are . . . .”

    Read ALL of the slip opinion instead of cherry picking dicta that you think serves your arguments. Chen expressly admits that not all of the limitations can be performed by mental steps, and afterward created a new rejection based on comprehending networks.

    Why do you insist on believing every iota of b.s. written by the CAFC?

    “You do realize that in Bilski and Alice the determination was that the claims were patent ineligible?”

    Of course, but not on any mental steps theory, and while overruling the CAFC’s mental steps rejections.

    Stop acting like a CAFC judge and start reading all of an opinion. You realize it was years after Alice Corp. that a single judge realized Alice, Mayo, and Bilski are evidence based decisions. What you may not realize is they had to learn about such from me during oral argument, and refused to initially believe me. It’s all recorded for posterity.

    Now if I can only get a CAFC judge to read Diehr.

  • [Avatar for Curious]
    Curious
    October 13, 2022 11:24 am

    Heck, even the Killian panel had to back off mental steps (perhaps; Chen’s writing is incomprehensible) in favor of their latest fiction of comprehending lawn furniture.
    How did they back off of it? Page 8 of the slip opinion referred to operations being performed in the human mind are patent ineligible 3 separate times. This is from page 13:
    In the context of mental processes, such as that claimed by the ’042 application, we have explained that if a claim’s steps “can be performed in the human mind, or by a human using a pen and paper,” and the elements in the claim do not contain a sufficient inventive concept under Alice/Mayo step two, the claim is for a patent-ineligible abstract idea.
    How is that backing off?

    Diehr, Bilski, and Alice Corp. are all you need to read to know that S/W is patent eligible and no longer under the nonsense of “mental steps.”
    You do realize that in Bilski and Alice the determination was that the claims were patent ineligible?

    The panel avoided every issue before them and responded with nonsense.
    If they responded with nonsense it was because your arguments were nonsense.

    the counsel for American Axle got nowhere
    The counsel for American Axle got a revision of the original decision along with a written response to their Request for Rehearing en banc. They also got the Supreme Court to request the solicitor general for their input. That is hardly “nowhere.”

    Why you think this is somehow proper befuddles me.
    Killian lost because “the ‘042 application does not present [] a close case.” I wrote similar a long time ago.

    Apparently, the only people who don’t know Diehr modified Benson are you, a certain unnamed Aussie, and Taranto
    You forgot the rest of the Federal Circuit and the Supreme Court. But that’s OK. I think it would be far easier (and a much shorter list) for you to identify the people that agree with you.

    If an attorney was consistently beating s101 issues, that attorney would be a household name and he would have a law firm with 200 names on the letterhead, and 199 of them running for governor.
    It isn’t easy, but it happens. I’ve done it many, many times. I’ve also had clients abandon good applications because they are tired of the BS at the USPTO. I will tell you that it starts with a good specification and good claims are a necessary part as well. I’ve advised you before that I think your claims are C R A P. They were NEVER going to get allowed in their current form. Moreover, even if they were allowed, they are still C R A P because it would be trivial to design around them (aside from the multiple actor issue). An attorney, when faced with a wall, will try to knock it down. A good attorney will do the same but will eventually look to go around the wall if knocking it down doesn’t work. As best as I can tell, you (and your attorney(s)) are still trying to knock the wall down. Better attorneys with more resources and better claims have tried and failed to knock down that wall. When will you learn?

    Just on my one little patent, the rejection reasons changed twice
    You think you are the only one? When it comes to 101 rejections, they change ALL THE TIME. They change for inventors who have a single patent application. They change for companies that have tens of thousands of issued patents. The difference between you and the companies that get thousands of patents issued every year is that don’t go banging their head against the wall.

  • [Avatar for B]
    B
    October 10, 2022 02:57 pm

    @ primary examiner “Weak…very weak argument (I’m assuming it’s an argument). You can do better.”

    Your arguments are that of a third grader; name-calling without an iota of substance. Why don’t you use some grey matter and state exactly what is weak? I welcome substantive arguments.

    Have you ever read Diehr? Bilski? Alice Corp.? Three cases that could have been addressed under mental steps but were not – and indeed even Justice Stevens threw a hissy in his Diehr dissent.

    “As Curious pointed out several times now, focusing on weak (dare I call it a loser argument) arguments will not get you anywhere.”

    Really? My arguments are such that the CAFC chickened on the mental steps theory of rejection and invented a new one about comprehending computer networks.

    My arguments are such that the CAFC outright lied about the record (even inventing a totally fake quote (which would get me sanctioned if I did such)) while refusing to address a single issue before him. Just b/c a judge lies, violates due process, and ignores the statutory language of the APA doesn’t mean Curious is right.

    FYI, Just Chen in his Killian decision stated that Diehr never even commented upon Benson’s mental steps doctrine. He even claims to have performed an independent review. Now go read Diehr and see who you believe: Judge Chen or your own eyes. Then ask yourself: why would a CAFC judge make such a brazen and idiotic misrepresentation like that?

    Chen’s remarks are for the intellectually lazy who will never dig into an appellate record.

    One last: about 20 years ago Solicitor Chen got his head handed to him by Judge Newman in In re Sang-Su Lee for doing exactly what Chen did to Killian and another panel did to Smith. The CAFC isn’t allowed to affirm a rejection from an administrative agency based on new grounds.

  • [Avatar for sarah mcpherson]
    sarah mcpherson
    October 10, 2022 01:56 pm

    If new mailing, Idea driven,, and delivery companies can compete with the established norm ..lol norm. As a business,why can’t you start your own consumer driven Honest Inventions Co. Who would have ever thought UPS and FED EX would be competeing with the USPS. Why was the USPS allowed to splinter? Maybe that decision was a terrible one for the whole dynamic. I think that was the single biggest mistake evahhhhh. Just look at how much mayhem they caused. They spread their mayhem so thin they are beholding to all the forces..who then control everything involved in patents they want, marketing, and control manufacturing, so the small inventor and the little guy including the little unconnected lawyer doesn’t give them another thought because like the outer limits, as in Perimeter. They control the horizontal, the vertical, and the rules they can change
    IF YOU CAN THINK IT YOU CAN DO IT.

  • [Avatar for concerned]
    concerned
    October 10, 2022 07:19 am

    I do not think anyone is getting anywhere consistently on s101 issues based on the articles and posters on this forum. Big tech that magically gets thousands of patents a year seem to just be feeding the system with upfront fees to support the machine just to see their patents destroyed later in the process.

    If an attorney was consistently beating s101 issues, that attorney would be a household name and he would have a law firm with 200 names on the letterhead, and 199 of them running for governor.

    I am sure many of the posters who do not reveal their real name on this forum would have the criticisms that are directed to B, redirected to their work upon inspection.

    Nobody is going to be the patent GOAT as nobody knows what the rules are from day to day. Just on my one little patent, the rejection reasons changed twice and the weasel words also changed from analyze to comprehend.

    The preceding changing of “this” to “that” suggests the patent system is as inept as the critics think of B.

  • [Avatar for primary examiner]
    primary examiner
    October 10, 2022 05:49 am

    “Please, show me a single Supreme Court 101 decision in the last 40 years based on “mental steps”

    Weak…very weak argument (I’m assuming it’s an argument).
    You can do better. As Curious pointed out several times now, focusing on weak (dare I call it a loser argument) arguments will not get you anywhere.

  • [Avatar for B]
    B
    October 10, 2022 01:22 am

    @ Curious “Why don’t you tell me why I should care what a DISSENT says.”

    Because Stevens, the creator of “inventive concept,” recognized that Diehr was a departure from Benson’s mental steps b.s. Apparently, the only people who don’t know Diehr modified Benson are you, a certain unnamed Aussie, and Taranto – although I think Taranto already knows he stepped in it but is too dishonest to admit it.

  • [Avatar for B]
    B
    October 9, 2022 06:14 pm

    @Curious “ I don’t recall the question or answer. Regardless, the answer got you nowhere with your panel.”

    Sure I did. The panel avoided every issue before them and responded with nonsense. They had no honest answer, so they lied.

    Hey, also remember that the counsel for American Axle got nowhere either despite a hundred amici and perfect arguments against Taranto’s nonsense.

    Anyway, the panel had to violate Killian’s due process rights, repeated lie about the record, and fabricate some bizarre stuff to maintain a rejection. Why you think this is somehow proper befuddles me.

  • [Avatar for B]
    B
    October 9, 2022 06:04 pm

    @Curious “ How many 101 decisions have there been in the last 40 years?”

    There is no “point” of yours

    Diehr, Bilski, and Alice Corp. are all you need to read to know that S/W is patent eligible and no longer under the nonsense of “mental steps.”

    Heck, even the Killian panel had to back off mental steps (perhaps; Chen’s writing is incomprehensible) in favor of their latest fiction of comprehending lawn furniture.

  • [Avatar for Curious]
    Curious
    October 9, 2022 02:37 pm

    Please, show me a single Supreme Court 101 decision in the last 40 years based on “mental steps”
    How many 101 decisions have there been in the last 40 years? The point is that there have been 101 decisions based upon determinations that the invention was directed to an abstract idea, and the Supreme Court has unambiguously said that mental processes are akin to abstract ideas. I don’t care how you twist and turn it, any argument that the Supreme Court has turned its back on mental processes being non-statutory subject matter is destined to fail.

    read Stevens’ dissent in Diehr
    Why don’t you tell me why I should care what a DISSENT says.

    “Expand upon” is a kind term for wholesale manufacture of fiction. This is the number one reason never to argue CAFC law before the CAFC.
    That’s the #1 reason why you’ll ALWAYS lose at the CAFC. Arguing against CAFC precedent will always being a losing proposition.

    I was well prepared for this stupid question
    I don’t recall the question or answer. Regardless, the answer got you nowhere with your panel.

  • [Avatar for B]
    B
    October 9, 2022 12:52 am

    @ Curious “ Welcome to how the Federal Circuit expands upon its own law. In Electric Power, it was about the “the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that . . . .”

    “Expand upon” is a kind term for wholesale manufacture of fiction. This is the number one reason never to argue CAFC law before the CAFC.

    FYI, Judge Hughes once asked me if the CAFC ever held a claim patent eligible that did nothing but take data, process data, and display data. I was well prepared for this stupid question; just didn’t expect it from the guy who penned Enfish.

  • [Avatar for B]
    B
    October 9, 2022 12:42 am

    @Curious “ SMH. We’ve gone over this before. This is from Mayo v. Prometheus, 566 US 66, 71 (2012): “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic.”

    Please, show me a single Supreme Court 101 decision in the last 40 years based on “mental steps”

    I’ll wait.

    Also, read Stevens’ dissent in Diehr.

  • [Avatar for Curious]
    Curious
    October 8, 2022 01:02 pm

    As to mental steps and your b>misalignment of the Supreme Court case, you should know that the mental steps doctrine is just not the same as what those Justices were attempting to say.
    What came before essentially doesn’t matter. SCOTUS said mental steps are not patentable eligible. We can debate how they got there and whether or not they got there correctly. However, there is no debate that the Supreme Court has lumped “mental processes” with abstract ideas. That is my point. Any argument that refers to the patent ineligibility of “mental steps” (or some variation thereof) as not being consistent with Supreme Court law is a bad argument.

    There is much that B and I have in common with regard to our beliefs about the law regarding 35 USC 101. However, I don’t feel he is helping our shared cause by misrepresenting the law. There are enough good arguments to make without resorting to fringe arguments (e.g., APA, due process, etc.).

  • [Avatar for Anon]
    Anon
    October 7, 2022 06:37 pm

    Curious,

    As to mental steps and your b>misalignment of the Supreme Court case, you should know that the mental steps doctrine is just not the same as what those Justices were attempting to say.

    The mental Steps doctrine traces back (and differently so) to merely a PART OF a claim (and knowing that eligibility must take the claim as a whole, the fit that you want is not there).

    I hesitate with this link, due in no small part to the fact that Prof. Collins gets the concept so very wrong (I know, I know – leave it to an Academic), but at least multiple shades of meaning can be put on the table:

    https://patentlyo.com/patent/2018/05/printed-functional-relationships.html

  • [Avatar for Pro Say]
    Pro Say
    October 7, 2022 04:09 pm

    Heard on the street:

    “Why, we’ve gotten so darn good at shark jumping . . . that we’re applying for it to become the newest Olympic sport! Sharks sharks baby!”

    — The CAFC

  • [Avatar for Model 101]
    Model 101
    October 7, 2022 01:07 pm

    This is all crook stuff.

    More of the same.

    The crooks are just getting more crooked.

    Supreme crooks .

    Federal crooks.

    District crooks.

    Attorney crooks.

    Where will it go from here?

  • [Avatar for Curious]
    Curious
    October 7, 2022 11:46 am

    combined with the long defunct (at least by the Supreme Court) mental steps theory of patent eligibility
    SMH. We’ve gone over this before. This is from Mayo v. Prometheus, 566 US 66, 71 (2012): “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972). Like it or not, the Supreme Court has deemed mental processes (i.e., mental steps) to be patent ineligible.

    Every time you go down this path of saying there is no “mental steps theory,” you are wasting everyone’s time. This argument has no validity and the more time you spend on a bad argument is time taken away from better arguments that could be made.

    For example, the sentence the immediately followed the sentence I reproduced above from Mayo is: “And monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” This is a finding of fact made by the Supreme Court that is based upon ZERO evidence and is likely very wrong. The Supreme Court errs by making findings of fact that: (i) were not presented down below and (ii) were pulled out of thing air.

    However, the Killian claims have nothing to do with “comprehending” anything, and the term “comprehend” (or any variation or derivative) never appears in the PTAB decision or any brief before the Federal Circuit.
    Welcome to how the Federal Circuit expands upon its own law. In Electric Power, it was about the “the collection, analysis, and display of available information in a particular field, stating those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance over conventional computer and network technology.” There were additional limitations put on that analysis in the decision that have long been discarded by prior decisions citing Electric Power. Additionally, anything after “of available information …” has been ignored as well. Your “comprehending” is just the Federal Circuit’s new word for “analysis.”

    That being said, your claims (i.e., Killian) do comprehend something — they comprehend when someone without benefits should have benefits. Again, you are making a loser argument when better arguments are available.

    These decisions against Killian and Smith are back-to-back violations of both due process of law and the Administrative Procedure Act (APA), whereby the Federal Circuit spontaneously invented a new theory of “abstract” based on things that never happened in Killian, then applied this new theory to things that never happened in Smith to come to a conclusion of patent ineligibility having no basis in anything that ever happened at the USPTO or before the Federal Circuit.
    Talk about loser arguments, this one is a whopper. Chen already told you that the APA does not apply to decisions of the Federal Circuit. Also, the PTAB decision in Killian designated the rejection a new grounds of rejection, which means you can go back down and fight it anew. No one is going to take you seriously making arguments like this.

    forgetting that Killian and Smith have nothing to do with “comprehending” anything
    WRONG. See above, Both Killian and Smith are performing an analysis, and “comprehending” is just being used as an alternative to “analysis.” Yes, there is a difference between the two terms but that difference is not enough to get you anywhere.

    Further, the Comiskey rule does not allow an aggrieved party an opportunity to be heard on the Federal Circuit’s new grounds of rejection no matter how speculative the new grounds are, no matter how removed from the factual record the new grounds are, or even how distantly removed from the laws of physics and common sense the new grounds are.
    I suggest you read Comiskey again. This is from the last paragraph of the decision:
    If the Board had relied on the new §?101 ground for rejection in the first instance, Comiskey would have had the opportunity to amend his application under 37 C.F.R. §?41.50(b). ?We think that it is appropriate to afford Comiskey the same protections in this respect as he would have had before the Board. ? We remand the case to the PTO for these limited purposes.
    37 CFR 41.50(b) refers to a new ground of rejection, which means applicant now has the ability to amend/present evidence in response to a new ground of rejection — the same opportunity that Killian was provided.

    Berkheimer, Alice Corp., Mayo and Bilski all recognize that whether something is “well-known, routine, and conventional” under step one of Alice/Mayo is an issue of fact.
    Berkheimer did. The other cases didn’t.

  • [Avatar for concerned]
    concerned
    October 7, 2022 08:20 am

    Do you remember at recess in kindergarten how the rules kept changing on the game of “tag” to effect the desired outcome?

    My patent prosecution reasons for rejection keep changing and my attorneys keep on attacking the new reasons. Like Kindergarten tag, this “you never win” outcome can go on forever.

    All you need to know about patent jurisprudence was really learned in Kindergarten.

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