BPAI: “Programmed Computer Method” Not Patentable Subject Matter

Ex parte Halligan (BPAI 2008)

Halligan's patent application claims a "programmed computer method" that operates to identify trade secret information. (Claim 119). In essence, the computer program has the common law rules of trade secrets hardcoded, and those rules are applied to determine whether particular information is a "trade secret." Applying the machine-or-transformation test of Bilski, the Board of Patent Appeals and Interferences (BPAI) rejected Halligan's claims as lacking patentable subject matter under 35 USC § 101.

Under Bilski, "[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." To avoid preemption the Federal Circuit emphasized that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility;" that "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity;" and that the transformation "must be central to the purpose of the claimed process."

Transformation: As in Bilski, the transformation here involves legal rights and "does not represent physical and tangible objects." Therefore, it fails the transformation prong of the test.

Machine: Claim 119's only tie to a machine is the preamble statement that the method is a "programmed computer method." The BPAI listed several reasons why that recitation is insufficient to satisfy the machine prong of Bilski:

"This recitation fails to impose any meaningful limits on the claim's scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. Were the recitation of a "programmed computer" in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a "programmed computer." Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible."

Means-Plus-Function language: A second set of claims were directed to the "programmed computer." Functional elements of the software were described as "means for ___." The structure of a means plus function element is presumably particular enough to constitute a "particular machine." However, the BPAI expressly did not reach that issue – rather, the Board rejected those claims under 35 USC § 112 as indefinite for lacking any description of particular structure in the specification. Following Aristocrat, the opinion noted that software-type means should include a disclosure of an algorithm. "The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the recited functions of claims 1 and 121 so as to render the claims definite."

Notes:

• Read the decision
• Open Government: Not yet. The BPAI opinions are stored on the site http://des.uspto.gov. Unfortunately that site is not crawled by web indexes such as Google or Yahoo. The problem is that the site includes a "robots.txt" file that excludes such activity. See http://des.uspto.gov/robots.txt. Robots are also blocked from crawling the USPTO patent database (http://patft.uspto.gov/robots.txt) and the PAIR site (http://portal.uspto.gov/robots.txt). Also blocked from crawling is this site: http://www.uspto.gov/web/gifs/ - what is that?
• The inventor Mark Halligan is a Trade Secret expert and partner at Lovells and adjunct professor (teaching trade secret law) at John Marshall Law School in Chicago.

   

Comments

[Malcolm Mooney]

David " At most, I've contributed a teeny, tiny bit to the infringement of your patent by this end user. He's the one who combined my software with his own machine to perform your patented method - sue him!" And the court will agree. Congratulations - your patent is useless."

I don't know about useless. In most cases, if it's software-based, it's still a bogus patent because the underlying subject matter is obvious crap.

But useless? A patent is now "useless" because you it's "difficult" to get a lot of money from a deep pocketed folks? That's an interesting admission.

I seem to recall that big copyright owners have found it useful to go after "little guys" who are engaging in excessive file sharing on university campuses and the like.

Perhaps the real issue is not that the patent is useless but that the invention is not worth the money it costs to protect it.

The same hypocritical position is often adopted by biotech companies. "Oh no, if you limit the claim that way now I have to sue dcotors or patients."

Tough beans. If sueing people who infringe your invention makes you sad, then don't sue. Clearly your invention must not be that valuable if it bothers you so much to enforce it.

[JTS]

pds wrote:

"I just want somebody to give us some clear guidance as to how to claim the inventions so I (and the examiners) can focus on the more important stuff -- like prior art."

Craft claims in language where the most operative words are in terminology well known in the art. This allows relating the invention to the prior art. Who is that good for?

[confused SCOTUS]

David,

It is the BPAI that conflated the two inquiries. In a nutshell, the BPAI went through a couple of paragraphs following a seemingly correct analysis of the “tying-in of a machine” prong 1 analysis and concluded that the machine in Halligan’s claim 119 does not impose meaningful limits on the preemptive scope of the fundamental principle, i.e. the machine is there only in form not substance, and the claim thus failed prong 1. But then immediately after this analysis and conclusion the BPAI says “Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible.” Wait a second. How on Earth does adding a computer constitute a field-of-use limitation? David, don’t you think the BPAI conflated the issues by this statement? If not, then so kindly explain where in Bilski’s 30 pages there is any “clue” that adding a computer amounts to a “field-of-use” limitation. And if you could even conjure up one example, David, I would appreciate you posting it.. In my humble opinion, adding a computer does not constitute a field-of-use limitation, at least within the meaning of Bilski.

And of course, there is a way that adding a computer could constitute a field-of-use limitation, but it is far apart from the circumstances in Halligan and the BPAI’s leap of logic. For example, in a claim for cleaning displays the method steps preempt all uses of a fundamental principle, and the draftsperson adds a limitation that the cleaning is in the field of computers, i.e. computer displays. This is a field-of-use limitation because the draftsperson is simply attempting to limit use of the fundamental principle to the field of computer displays. This would fail the “transformation” prong 2 because the addition of the computer is merely a "field-of-use" limitation.

Also, perhaps you misunderstood, but I did not say or suggest that “the added ‘machine elements’ must be the non-‘preempting’ part of the claim.” A claim can surely pass the “tying-in of a machine” prong 1 if the tied-in machine imposes some meaningful limits on the amount the claim preempts the fundamental principle (i.e. the added machine “meaningfully limits” the claim). But if the tied-in machine does not limit the pre-emptive footprint, then the claim is going to have to pass the “transformation” prong 2 of the “machine-or-transformation” test, and transform some article or data into a different state or thing. And of course, the claim can pass prong 2 and fail prong 1, and still pass muster under the test.

David, I do not see where you are going with this: “The claim can have some machine elements that meaningfully limit (i.e., embody) the method, and also OTHER elements that limit the claimed invention to avoid preemption (and more than just a field-of-use characterization.)” If the tied-in machine does not impose limits on the method steps’ use of the fundamental principle, then of course you are going to have to resort to prong 2 and transform something, although you can not just add a limitation that says “oh, these method steps are limited to the field of commodities trading.” Do you disagree?

Again, I do not see the relationship in Halligan between the inquiry of whether the added computer imposes meaningful limits on the scope of preemption, and the inquiry of whether the claim merely recites a “field-of-use” of use limitation. Perhaps you can shed some light on this David, but frankly, I think the BPAI should have put its pen down and thought a little deeper.

[AllSeeingEye]

Mooney, you are about the only one around here who is impressed with you. Most of the rest of us have pretty much figured out that you don't know what you're talking about. You do have one thing right though. I have kind of made you my pet project. Call it a public service. As long as you continue to post your snarky garbage I will be here ~ seeing.

I know you are trying really, REALLY hard to influence the direction of the entire world of patent law with your intense bloggery, but I have to tell ya; I think there are more important things going on in the world and in patent law than you. In fact, just about everything going on in the world and in patent law is more important than you.

sorry.

[AllSeeingEye]

I can see the headline now in Mooney's world of grandiose delusions, "Judge vacates $11.8M patent damages award, USPTO dismantled because Malcolm Mooney a poster on Patently-O thinks people who make money from patents are greed grubbers and provides some really snarky posts ~ just read 'em"

[Bill]

Ummm, yeeah. Mooney, I'm gonna have to ask you to just, go ahead and move your desk into Storage B. And here's a can of insecticide, just go ahead and spray because we have a little bit of a c0ckr0ach problem down here... umm yeeah.

[Pot calling Kettle, Pot calling Kettle, come in]

Imagine, Mooney talking about whiners and complainers!!!

[Neil Young]

Stop quoting me Mooney... and stop calling me.

[former ip analyst]

>> So the fact that law relating to means-plus-fxn patents is crappy is not a bug at all if you're not in the business of protecting something you've worked hard to invent. On the contrary, it's a feature! It makes your piece of paper with all those difficult-to-interpret words on it that much more valuable because it will cost someone who lacks confidence and understanding a lot of money to write an opinion explaining why that piece of paper is a bunch of crap. <<

Right on. I have spent a couple of years trying to explain this approach to patent valuation, and very few normal people get it. Those who did get it, chuckled and hired me to assess their portfolios for the most incomprehensible and most broadly worded "assets".

[smashmouth football]

Malcolm Mooney said:
"But useless? A patent is now 'useless' because you it's 'difficult' to get a lot of money from a deep pocketed folks? That's an interesting admission.

I seem to recall that big copyright owners have found it useful to go after 'little guys' who are engaging in excessive file sharing on university campuses and the like."

I don't think this is a valid comparison. As David Stein pointed out previously on this thread, Big Copyright has cajoled Congress into enacting a draconian penalty scheme for copyright infringers, even including criminal penalties. And even more importantly, a copyright holder doesn't even have to prove damages. In fact, the RIAA cases involve STATUTORY damages. Compare that to 35 U.S.C. 284 as it's been interpreted since the Aro case (SCOTUS 1964) and you'll find there's no comparison.

[Malcolm Mooney]

"I don't think this is a valid comparison. As David Stein pointed out previously on this thread, Big Copyright has cajoled Congress into enacting a draconian penalty scheme for copyright infringers, even including criminal penalties."

The reason that companies deem "useless" a patent whose claims are infringed only by doctors or consumers has nothing to do with the alleged lack of a "draconian penalty scheme." The copyright owners aren't taking file sharers to jail. They are just threatening them.

You think doctors and consumers won't feel threatened by subpoenas and life-ruining lawsuits filed against them by companies whose patents they infringe? Think again.

All it takes is just a change in the way of thinking about these things on the behalf of patent owners.

Of course, there is the possibility that as soon as the companies start asserting their patents in this manner, there will be a consumer and legislative blowback that is far, far worse than not receiving the broad claims that one desires.

But these are all business decisions.

[David Stein]

former ip analyst wrote:

"I have spent a couple of years trying to explain this approach to patent valuation, and very few normal people get it. Those who did get it, chuckled and hired me to assess their portfolios for the most incomprehensible and most broadly worded 'assets'."

Oh, I get that. I know there's some strategic value to having patents that are difficult to interpret... it's a "fog of war" approach, right?

But that particular flavor of Kool-Ade is not my drink of choice. That "unknown" is just as likely to bite your client:

* The claim might be interpreted not cover a competitor's action or product where a clearly written claim might have, or it might simply be considered vague.

* The enabling disclosure of the means-plus-function claim is usually very broad ("the 'fastening means' could include a screw, or duct tape, or super glue, or a pair of magnets..."), which can raise yellow flags in prosecution if, to the examiner, it seems like overreaching.

* Drafting and arguing for the vaguely drafted claim (112p6 or otherwise) costs more time and money to draft, raises more obstacles during prosecution, and costs more to litigate (for your client as well as his competitor.)

I'm a diehard fan of clearly drafted claims. I've just read too many bad claims with really basic issues - antecedent basis, enablement, term consistency - that might be passed off as "tactically vague," but that smell more like poor workmanship.

Of course, you get 3/20 claims for your filing fee, and a 112p6 claim can coexist alongside more clearly drafted claims. Fair enough. But I've rarely run across a case where I couldn't draft 3/20 clearly written claims (and more, if the budget allows) that each have specific, explainable value over the other 2/19.

- David Stein

[smashmouth football]

"The reason that companies deem 'useless' a patent whose claims are infringed only by doctors or consumers has nothing to do with the alleged lack of a 'draconian penalty scheme.' The copyright owners aren't taking file sharers to jail. They are just threatening them."

The copyright owners can elect to collect statutory damages even without proof of any actual damages. That's a huge distinction from patent law. It's also a huge punishment to peons who share a couple of mp3's. (And no, I'm not advocating that 35 U.S.C. 284 be amended to allow statutory damages. Actually it's copyright law that is really an abomination against the public interest.)

[David Stein]

confused SCOTUS wrote:

"How on Earth does adding a computer constitute a field-of-use limitation?"

Oh, I see your line of thinking here - and I agree with it. Field-of-use limitations usually involve "use this well-known formula in this particular scenario" logic... but that's logically very different from: "take this well-known formula and program it into a computer." Neither tactic will buy you any novelty value, but they're not at all the same.

===

"in a claim for cleaning displays the method steps preempt all uses of a fundamental principle, and the draftsperson adds a limitation that the cleaning is in the field of computers, i.e. computer displays. This is a field-of-use limitation because the draftsperson is simply attempting to limit use of the fundamental principle to the field of computer displays."

Sure, but the computer is involved in the claim in a different way, right? The invention isn't performed BY the computer; it's performed ON the computer. I agree with you that it's hard to imagine how a claim limitation reading "implementing this step on a computer" could constitute a field-of-use limitation.

And, of course, this field-of-use limitation probably doesn't present novelty value. If compressed air is known to be useful for blowing dust off of all kinds of LCDs, recommending its use (in the same, routine way) on a particular type of LCD is completely unhelpful for establishing novelty and non-obviousness.

===

"If the tied-in machine does not impose limits on the method steps’ use of the fundamental principle, then of course you are going to have to resort to prong 2 and transform something..."

Not necessarily. The machine elements must impose "limits," yes. But those "limits" need not be the "limits" that avoid the principle of preemption.

Let me step back a few paces. The CAFC's analysis in Bilski actually invokes two specific but separate requirements:

1) The claimed method must be non-abstract. This can be achieved by claiming the method as transforming a physical article, or by tying the method to a machine (where the tying imposes reasonable limitations - i.e., simply reciting "computer-implemented" won't cut it; the claim has to explain HOW the machine is used in the claimed method.)

2) The claimed method must not preempt every possible use of the method. This can be achieved by claiming the method as applying to a particular problem - such as may arise (in a distinctive way) in a particular field, which is where the field-of-use limitation becomes helpful.

These requirements might seem overlapping at first, but I think they're two distinct sides of the "patentable method" coin. An "abstract" claim (such as Bilski's) presents a problem and solution, but lacks an implementation. A "preemptive" claim (such as Benson's) presents an implementation, but lacks a problem and solution.

My point is that non-preemption CAN be satisfied by the machine elements, but can also be satisfied by other claim elements. The more important use of the machine elements is to avoid abstractness - and to satisfy this requirement, the machine elements must "meaningfully" limit the claim to an implementation (or a set of implementations having some commonalities.)

What do you think of this analysis?

- David Stein

[Malcolm Mooney]

"The copyright owners can elect to collect statutory damages even without proof of any actual damages. That's a huge distinction from patent law."

Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not.

[pds]

"2) The claimed method must not preempt every possible use of the method. This can be achieved by claiming the method as applying to a particular problem - such as may arise (in a distinctive way) in a particular field, which is where the field-of-use limitation becomes helpful."

This isn't precisely correct, what the Fed. Cir. in Bilski stated was:
"Diehr can be understood to suggest that whether a claim is drawn only to a fundamental principle is essentially an inquiry into the scope of that exclusion; i.e., whether the effect of allowing the claim would be to allow the patentee to pre-empt substantially all uses of that fundamental principle. If so, the claim is not drawn to patent-eligible subject matter."

Thus, the question isn't whether you preempt every possible use of the method, it is whether you preempt "substantially" all uses of the "fundamental principal."

Talk about gobblygook -- the Fed. Cir. will spend the next 10 years describing how to interpret "substantially all uses" and "fundamental principal."

What SCOTUS in Diehr actually wrote was:
"A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." Le Roy v. Tatham, 14 How. 156, 175 (1853).

[former ip analyst]

David points out the many problems with enforcement of vague claims. That's a legal take on the issue, and a very valid take.

From a business perspective, hiring a lawyer to assess those broad claims (as required by fiduciary duties to stockholders when confronted with a c&d letter listing several patents) costs $X k.

If the c&d letter offers settlement / licensing for $(X-y) k, then the business judgment rule kicks in and it is economically reasonable for the lettered party to acquiesce.

This is the game that has been played for years. When I got the point, I decided to find a job that looked less like abetting extortion.

[pds]

"Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not."

Step away from the cliff chicken-little.

On second thought .... get closer -- you can fly!!! .... trust me.

At least we've narrowed down MM's practice area a little further. He defends small (maybe startups) biotech companies that are infringing the patents of much larger biotech companies.

No wonder he is always so surly -- he's got to put up with small clients (who probably don't pay well, or on time, or at all) and he's usually on the short-end of the stick when it comes to legal firepower.

[6]

"Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not."

Why does any of it matter to them? The accused undergrad wants to take matters seriously, then he should simply kill off the attorneys, the CEO of the record company, and any internal people who had a hand in his accusation coming about. Then he should politely suggest to the company representative that his name should come off the list. After bringing up the company representative's home address. So much cleaner, quicker, and probabaly less expensive. And, it would probably help out his fellow undergrads. I'm surprised we haven't seen this on the news already following all those stories of lawsuits filed and the undergrad spending thousands on defense/payments. Kids these days, they lack initiative.

[David Stein]

pds:

Thanks for the quote - you're correct, of course. And to be honest, that's what I meant ("preempting every substantial use of the fundamental principle")...

That quote really sums it up well - claiming the "fundamental principle," divorced from any particular use of that principle. If the Arrhenius equation had been actually invented by Diehr, and if Diehr had tried to patent "a computer-implemented method of measuring the curing of a synthetic compound comprising: programming a computer to apply the formula...", it probably would have run afoul of preemption.

- David Stein

[pds]

"Kids these days, they lack initiative."

The Washington Post ran an interesting story about kids these days ... you can find the story under the headline "Survey Finds Growing Deceit Among Teens: 64 Percent Admit Cheating on Test In High School."

Personally, I think the whole culture of cheating has been aided and encouraged by the internet. Gen Ys have grown up in a world were their music and their video were not paid for, but downloaded from the internet. Instead of slogging to the library to do a report, they head to Google.

Mind you, I have no problem with the free flow of information. However, some of that information is copyrighted "content," which was created by somebody in order to make a profit. However, many from Gen Y have this aversion of paying for anything. Of course, as a teenager or in your early twenties, most don't have the money and a fine-tuned sense of right and wrong.

It is quite obvious from his maturity level and station in life that 6K is a Gen Y and it reflects in his attitude.

IP is just another form of content (i.e., a useful and implementable idea). There are some who believe that for those who protect those ideas properly, they shouldn't be stolen. However, there are a growing number of those that have no problems with stealing content.

Fortunately, although the numbers of growing, they get converted quickly as they grow up and realize the errors of their way when the fruit of their own labor (i.e., their own content) gets stolen by others.

There will always be communists in the world who believe that everything should be free, and perhaps they'll eventually win out. However, I will likely be long-retired before that happens.

[Lionel Hutz]

I disagre withe Court's conclusion. These claims should be perfectly acceptable under 101. However, I agree they should fail under 102 or 103.

[David Stein]

former ip analyst wrote:

"If the c&d letter offers settlement / licensing for $(X-y) k, then the business judgment rule kicks in and it is economically reasonable for the lettered party to acquiesce."

You didn't happen to represent NTP, did you? ;)

This is certainly one way of doing business.

Another way is to draft a clear patent claim that covers your client's invention well, and that definitely applies to your competitor's product. You might even apply for a patent reissue, with broadened claims that literally cover your competitor's product (if the original spec supported it, and there's no estoppel-triggering amendment as per Festo, etc.)

The result is a patent that might be faster and cheaper to litigate - simply because it definitely covers the accused infringer's product. Licensing is likelier to be quicker and at a higher value.

- David Stein

[6]

I'm afraid I don't see the relevance of your story PDS. I can ask every last classmate of mine, and come up with a number of around probably 95%-100% who admit they did something you would consider "cheating". Though perhaps not on a test. But what makes the test percentage of your grade of greater importance than the HW percentage in HS? Nothing. What is the significance of your finding? When considered with the fact that 65%+ of students in reality probably cheated on a test in HS in 1960, the significance boils down to nothing more than: Gen Y is significantly more truthful about cheating than Gen X and other predecessors.

Whoptie do.

I should also note that I've "trudged" to the library to do a report more than once and I never found it particularly difficult. I probably rode my bike, with no handlebars. Why? Because I can ride my bike with no handlebars, no handlebars...

http://www.youtube.com/watch?v=AuK2A1ZqoWs

amirite?

[pds]

"I'm afraid I don't see the relevance of your story PDS."

... and that doesn't surprise me in the slightest ... it is much harder to see the failings of a culture when one is immersed in it.

[David Stein]

"Mind you, I have no problem with the free flow of information. However, some of that information is copyrighted "content," which was created by somebody in order to make a profit. However, many from Gen Y have this aversion of paying for anything. Of course, as a teenager or in your early twenties, most don't have the money and a fine-tuned sense of right and wrong."

Hmm - not that we should be discussing copyright theory here ;) ... but I'll take a stab at it.

It's not just "U.S. teens" - it's pretty much people (kids and adults) in the entire rest of the world. ESPECIALLY Asia, the idea of paying for music is an absurdity. It's not that people "know" it's wrong but choose not to do it; it's that they view the law and pricing as unrealistic.

Practically every driver in America frequently exceeds the speed limit. Are these people being immature or immoral? No - there's a perception that the posted limit is overly restrictive of a safe driving speed.

The actual problems with copyright, as I see it, are -

(1) Many copyright owners (including the entire music industry) refuse to acknowledge the realities of supply and demand - that their product, from a consumer's viewpoint, is vastly overpriced. If every music track were readily available at high quality for $0.25, music piracy would simply END. The music industry would reap huge profits, and could even forgo DRM snake-oil nonsense and paranoia.

(2) The law of copyright is hugely out of step with the popular viewpoint of morality. A small - and diminishing - share of Americans view copying music as "theft" of any kind - yet the legal penalties for small violations remain outrageously high... and are escalating into criminality! This situation is terrible for everyone - the population, copyright owners, and especially our government (which simply looks like a thug squad) - and the RIAA's "educational" propagandizing is absolutely useless.

- David Stein

[Erez Gur]

Malcolm, I hope you know the answer to your question.

The problem is not whether or not a Patentee has the intestinal fortitude to sue a doctor, but one of encouraging technological development.

Where would you rather invest:
a) a restaurant where you get a 5% annual return; or
b) a life-saving diagnosis where, after 5 years of research and validation, you might be able to gain the right to sue doctors who use your invention, but never the right to sue Pharma companies that steal the invention.

[David Stein]

Funny we're talking about suing "doctors" for patent infringement.

Y'all are aware of 35 USC 287(c), right?

"With respect to a medical practitioner's performance of a medical activity that constitutes an infringement under section 271(a) or (b) of this title, the provisions of sections 281, 283, 284, and 285 of this title shall not apply against the medical practitioner or against a related health care entity with respect to such medical activity."

Essentially, physicians and hospitals are immunized from infringement for performing a patented medical procedure. An inventor can still patent the procedure, but it can't be enforced against a medical practitioner or institution.

This exemption may not apply to non-"activity" statutory classes - medical devices, drugs, etc. But in those cases, although the physician may be a direct infringer of the patent, the real target is the supplier.

Medical practitioners are virtually never involved in patent litigation. In fact, the only noteworthy case involving a medical invention was between suppliers of healthcare products (LabCorp v. Metabolite), not practitioners.

- David Stein

[AllSeeingEye]

"Does any of this matter to an undergraduate or a practicing physician who is suddenly forced to hire a lawyer and watch his studies/career come to standstill while he deals with some jacked up patent attorneys? I think not."

Does this post contain any logic or mean anything whatsoever? I think not.

Breathless rhetoric...

[Malcolm Mooney]

Meanwhile, the EPO has refused WARF's patent on a method for generating human stem cells from embryos on grounds that the method requires destroying human embryos which is "bad."

http://managingip.com/Article/2059365/EPO-rejects-WARF-stem-cell-patent.html

[confused SCOTUS]

David said:
“Let me step back a few paces. The CAFC's analysis in Bilski actually invokes two specific but separate requirements:
1) The claimed method must be non-abstract. This can be achieved by claiming the method as transforming a physical article, or by tying the method to a machine (where the tying imposes reasonable limitations - i.e., simply reciting "computer-implemented" won't cut it; the claim has to explain HOW the machine is used in the claimed method.)
2) The claimed method must not preempt every possible use of the method. This can be achieved by claiming the method as applying to a particular problem - such as may arise (in a distinctive way) in a particular field, which is where the field-of-use limitation becomes helpful.”

===

David,

I am not sure I am following the bouncing ball on your Bilski take. I see your requirement 1 in Bilski but I do not see your requirement 2 in Bilski. I think with your requirement 2 saying “the claimed method must not preempt every possible use of the method” creates a circular reasoning problem. The method is being claimed; it cannot preempt itself. Perhaps what you meant was “the claimed method must not preempt every possible use of the FUNDAMENTAL PRINCIPLE.” This of course blurs the distinction between your requirement 2 and your requirement 1), because a fundamental principle is an abstract idea, and an abstract idea of course is not patent-eligible, and the machine-or-transformation test (your requirement 1) is of course what Bilski dictates is the “sole” test.

Also, I am not following your “claiming the method as applying to a particular problem” logic. Maybe it is just too late in the day, but I thought Bilski held that a method that applies a fundamental principle (e.g. a human identifying particular transactions) to a particular problem (e.g. hedging risk) is not eligible for a patent. Perhaps you can give a simple example of your requirement 2? Very simple, as it is getting late...

[confused SCOTUS]

David,

$0.25 is extremely expensive for a teenager or even an adult in China. But I see where you're going with this. Would you take a 75% decrease in pay though?

Here also is a twist: for many years the recording industry and CD makers were secretly engaging in price-fixing scams to the tune of about $3 per CD. A federal court ruled that the companies must pay $3 to any person that presents a receipt for a CD they purchased between something like 1988 to 2001, or so. For X-Gen's that did not sit too well. And how many people really saved their receipts for their CD purchases?

Also, I think Copyright law's problems arose sharply after Disney's rewrite of the law.

[AllSeeingEye]

"Meanwhile, the EPO has refused WARF's patent on a method for generating human stem cells..."

And nobody cares...

[David Stein]

confused SCOTUS wrote:

"This of course blurs the distinction between your requirement 2 and your requirement 1), because a fundamental principle is an abstract idea..."

OK - on reading Bilski (yet again!), I'll concede defeat on this. :) The Bilski majority defines "fundamental principle" as "abstract ideas, laws of nature, etc."

I'd like to amend my analysis - using different terminology, but the same general point.

The Bilski majority (re-)construed Diehr for the following principle: "a distinction between those claims that 'seek to preempt the use of' a fundamental principle, on the one hand, and claims that seek only to foreclose others from using a particular 'application' of that fundamental principle, on the other."

I'd like to assert that this "application," for methods, must have two elements: (1) a well-defined problem and solution (a non-"preemptive" use), and (2) a well-defined implementation (as may be satisfied by the two prongs of Diehr.)

I base this conclusion on the Bilski majority's reconciliation of Diehr with Benson:

"A canvas of earlier Supreme Court cases reveals that the results of those decisions were also consistent with the machine-or-transformation test later articulated in Benson and reaffirmed in Diehr. ... Interestingly, Benson presents a difficult case under its own test in that the claimed process operated on a machine, a digital computer, but was still held to be ineligible subject matter. However, in Benson, the limitations tying the process to a computer were not actually limiting because the fundamental principle at issue, a particular algorithm, had no utility other than operating on a digital computer. Thus, the claim's tie to a digital computer did not reduce the preemptive footprint of the claim since all uses of the algorithm were still covered by the claim."

In plain English: "OK, we'll admit that under the test that we articulate today for non-abstractness, Benson's invention should have passed. But it failed the OTHER test of 101 patentability, which is a non-preemptive use - because even though it's tied to a computer, it doesn't solve any particular problem."

Also, I don't read this quote as requiring that the particular machine limitation included for non-abstractness MUST be the limitation that introduces a non-preemptive use. The court simply noted that the limitation failed to establish the non-preemptive use that the claim might OTHERWISE have had.

Yes, I admit that the court nowhere sets forth two separate requirements. But I find it impossible to interpret the CAFC's reconciliation of Diehr with Benson in any other way...

===

"$0.25 is extremely expensive for a teenager or even an adult in China."

In China, they wouldn't even consider this a reasonable price. The idea of paying for music is an absurdity, like paying for air or sunshine.

===

"But I see where you're going with this. Would you take a 75% decrease in pay though?"

If the marketplace law of demand required it, what else could I do? The whole point of supply and demand curves is that the intersection establishes an optimal profit for the seller. Demanding more money (in view of the same supply curve) only moves my business away from the intersection point - and results in fewer profits.

Of course, my options are different from the RIAA's for at least two reasons:

(1) I don't have near-total oligopolistic control of the entire market of patent prosecution, and

(2) I don't have enough money or lobbyists to buy congressmen to legislately prop up my desired business model.

- David Stein

[confused SCOTUS]

David,

I think I am beginning to understand what you are getting at. Bilski struggled to reconcile Benson, as is apparent in the “A canvas of…” passage you quoted above. I think in order to reconcile Benson, the Federal Circuit tacked on the “meaningfully limit” inquiry onto the "machine-or-transformation" test. Benson’s method claim passed the “machine-or-transformation” test but failed the “meaningfully limit” inquiry because the tying in of a computer did not impose any meaningful limit on the claim’s preemption of all uses of a fundamental principle—the application of the fundamental principle was only useful on a computer in the first place. Correct me if I am wrong, but I think your requirement “(1) a well-defined problem and solution (a non-‘preemptive’ use))” attempts to address the Benson quagmire by saying that if Benson could have more specifically identified the problem/solution in the claim, then this would have necessarily “meaningfully limited” the scope of preemption. In this sense, your proposed “(1) a well-defined problem and solution” may very well be a better approach than “meaningfully limits,” since from an objective standpoint it is much easier to ascertain whether the claim identifies the problem/solution than whether the claim “meaningfully limits” the scope of preemption. Is this the train of logic you are getting at? Or am I still at the station?

Also, David, it might help if you explain what you mean by “non-‘preemptive’ use,” as it seems in plain English “non-preemptive use” suggests no preemption at all, but I do not think this is what you mean by “non-preemptive use.” Do you mean the claim “does not preempt use of the fundamental principle at all” or do you mean the claim “does not preempt all uses of the fundamental principle”?

[MaxDrei]

Readers, what's all this about "problem/solution"? Has the court been infected by European thinking? Too many fact-finding trips to Europe, perhaps, by members like Randall Rader (who seems to be here quite a lot of the time). What is the world coming to? Somebody has a good idea, somewhere in the world, and before you know it everybody starts borrowing it. For the EPO, it is a sine qua noin that the claimed subject matter must correspond to the solution to an objective technical problem. Visions of knives slicing through warm butter come to mind but perhaps only in Europe.

[MaxDrei]

....I know, I know. The EPO should have been clever enough to patent its PSA invention, back in the 1980's. By now it would have come off-patent, and therefore generic. Sigh.

[Mark Nowotarski]

I’m a little confused by the point the BPAI is trying to make regarding “purely functional recitations of method steps where the functions are implemented using an unspecified algorithm”.

Isn’t each line in a piece of source code a purely functional recitation of a method step where the function is implemented using an unspecified algorithm? As far as I know, all higher order computer languages label underlying algorithms with names that recite the function of the algorithm (e.g. “add”, “subtract”).

Perhaps some of the software gurus can help me out. Have I missed something?

[step back]

Mark,

Here is an example of a not purely functional claim:

1. A machine-implemented method comprising:
(a) converting a BCD-expressed value stored in a first register into a binary value by using a shift register formed in an ALU and using the method of Claim 8 of Benson;
(b) ...

Here is an example of a purely functional claim:

2. A method comprising:
(a) converting a BCD-expressed value into a binary value;
(b) ...

[Mark Nowotarski]

Ah, but the method steps of claim 8 of Benson state purely functional recitations of method steps where the functions are implemented using unspecified algorithms.

For example, step 1 says "STORING the binary coded decimal signals in a reentrant shift register" (emphasis added). But the claim (and presumably the specification) does not specify the algorithm for "storing".

Why this claim would cover any and all algorithms of storing!

[Noise above Law]

and a pair of tweezers and a great big "claims must be read as a whole"....

[step back]

Mark,

It is not my intention to defend everything the court does. If you want to point out the "reentrant" folly of their logic, go ahead. You asked what was a purely functional claim. I gave you an example. Above claim 2 could arguably be carried out entirely in a person's mind (as abstract ideas) because the method claim does not require the method to be machine-implemented (by a particular machine that inherently can implement the method) and the converting step (a) can also arguably be carried out entirely in a person's mind.

As for "storing", there are some nuts and bolts details that are understood to be well within the artisan's capabilities.

[Mark Nowotarski]

"Above claim 2 could arguably be carried out entirely in a person's mind "

In this case I would agree, but has anyone ever explored method claims for calculations that could not be carried out in a person's mind, even theoretically?

For example, suppose the step read:

"converting a BCD-expressed value into a binary value in one microsecond or less"

[Mark Nowotarski]

"If you want to point out the "reentrant" folly of their logic, go ahead. "

No, what I actually want to do is defend against it.

[pds]

Got another call today.

Examiner proposing some amendments -- and lo and behold, the examiner proposed adding some "magic words" related to 101 to my method and system claims.

Naturally, I agreed, since these terms aren't limiting in any meaningful sense. I should get a notice of allowance within a week or so.

Just another day at the office ...

[step back]

"in 1 usec or less"

Mark,
Funny that you should propose this now. I was just reading the other night Judge Rich's CCAP decision in In re Benson 441 F.2d 682 and this is pretty much what he said about Benson Claim 13, that for all practical purposes it can only be performed by apparatus. The Supreme Court, of course, had a 180 degree opinion, including that for all practical purposes Benson Claim 8 wholly preempts the algorithm.

[Mark Nowotarski]

"I was just reading the other night Judge Rich's CCAP decision in In re Benson 441 F.2d 682 and this is pretty much what he said about Benson "

I always heard he was a pretty smart guy! :-)

[San Diego IP Attorney]

Regarding the means-plus-function aspect to this case:

"Following Aristocrat, the opinion noted that software-type means should include a disclosure of an algorithm. 'The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the recited functions of claims 1 and 121 so as to render the claims definite.'"

This is basically requiring the disclosure of the algorithm (if one is used) to avoid the 112 rejection for a software-based computer method. The problem with this is that most companies would elect the "best of both worlds" protection: trade secret for the algorithm and business method for the software processing. However, this case (as well as Aristocrat) leaves one with the impression that you will not be able to keep the algorithm as a trade secret if you want patent protection for the method.

While this is really just another reason why means language is limiting and generally the last option for use in claim recitations, it is an important factor to consider when algorithms are the particular asset in question. For example, a bioinformatics company would be forced to make a difficult decision if a novel algorithm is used to, say, screen an array of genes for certain markers. If the company wishes a patent around the method, it may be required to disclosre the algorithm behind the software, which means they could not protect said algorithm by trade secret. Tough decisions all around.

[AllSeeingEye]

An algorithm is not explicitly "required" under Aristocrat. Any detailed description of the claimed process would suffice.

[David Kohn]

AllSeeingEye,
OK, that would seem to make more sense. I was just worried that the following language from Aristocrat ("The Appellant has failed to disclose any algorithm, and thus has failed to adequately describe sufficient structure, for performing the recited functions of claims 1 and 121 so as to render the claims definite.") necessarily meant the only way to enable claims directed to an algorithm-based method would be to explicitly disclose the algorithm itself. In fact, the decision alludes to adequately describing sufficient structure for performing the recited claimed function, but how do you do this without disclosing the algorithm itself?

Put another way, is it enough to merely describe what the algorithm does (or is capable of doing) for satisfying 112 under Aristocrat? The decision seems to state otherwise.

[step back]

DK,

The courts appear to have taken several steps back in their understanding of computers and computer-executed algorithms. I'm not sure why this is. It is probably a topic worthy of separate discussion onto itself. For example, there really is no such thing as a "general purpose" computer because no computer can be all things generally to all people. Moreover, once a computer is programmed to perform a particular task it inherently is a particular machine that has been transformed into a new state.

Answering your question about how much disclosure is enough is not possible because the state of the art and of skill of the ordinary artisan is constantly changing, and not always towards the better.

So for example, let's say your patent application calls for a speech understanding module where the computer is to hear speech from any random speaker and instantly understand what was said (akin to a Star Trek universal translator). Right now, there is no such thing. Maybe in the future it might be common place. So for now, if you're going to have such a module as an essential element of your claimed invention you better have detailed enabling disclosure (including best mode). In the future, who knows, maybe just a few words may suffice.

[confused SCOTUS]

MaxDrei,
Do you think adding a problem/solution statement to Benson's claim would have made Benson’s claim pass the “machine-or-transformation” test and the tacked-on “meaningful limits” inquiry, and thus patent-eligible? If so, what would your problem/solution statement have been? Also, do you think casting the claim in more of a problem/solution context is what the Federal Circuit is looking for in demanding that the machine-or-transformation impose “meaningful limits” on the footprint of preemption, as David appears to be suggesting?

[skevinp]

The BPAI appears to say that foreclosing others from using a "particular application" of a fundamental principle IS statutory subject matter, but limiting use of the formula to a "particular technological environment" is NOT.

Can someone explain the difference between these two concepts?

[Malcolm Mooney]

"The SPEs have been receptive to removing the 101 rejection as long as one of the significant steps of the method is tied to a computer. Some sort of data transformation step. In one case, for instance, I tied a data clustering algorithm to the computer, and that was enough."

You people crack me up.

As alluded to above: enough for WHAT? To get your claim past some clueless Examiner in the most clueless PTO art unit?

Nobody is impressed. Write a claim that will stand up in court before a competent district judge two years from now. It seems to me that Bilski suggests how you might do that. But oh wait: that claim is "worthless" because nobody with incredibly deep pockets infringes it.

[confused SCOTUS]

skevinp,
The concepts are different. A method claim can claim particular application of a fundamental principle (in which case it would not preempt the entire fundamental principle) and it would be patent-eligible, assuming it is tied to a machine and/or transforms an article into a different state or thing, and such particular application is a meaningful limit on the amount the claim preempts the fundamental principle. On the other hand, I think what the BPAI means with "technological environment" is that the claim cannot merely state "for use in such-n-such technologocial area," as a way of limiting the scope of preemption. This would amount to a mere field-of-use limitation. In other words, merely stating that the fundamental principle is only being used in a particular technological environment does not meaningfully limit the scope of preemption of the fundamental principle; it merely says "use it like this." This can be contradicted with actual application of the fundamental principle, which substantively limits the use of the fundamental principle in a particular way. That's my understanding at least. Others?

[MaxDrei]

Thanks confused SCOTUS, for asking me a question but, I regret, I can't think of an answer that would be useful to you. EPO obviousness involves extraction of an "objective technical problem" as expressing the "gap" between the content of the claim and the reference selected as the "starting point". The problem has to be "technical" however. The Mayer dissent in Bilski is relevant here. If the writer of the Bilski app had been able to claim the solution to a (subjective) technical problem, he/she might then have been able to make progress in the EPO. But whether progress could have been made in the USA, I don't know. That's why I read this blog.

[sharfaddini]

thanks you

[sharfaddini]

thanks you

[PatentBlogBlogger]

"adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims."

"where the functions are implemented using an unspecified algorithm"

How about a general purpose computer that is (1) programmed in a specified manner or (2) implemented using a specified algorithm?