Guest Commentary by Robert Stoll
In the wake of the Supreme Court’s decision in Alice Corp v. CLS Bank (2014), there have been dozens of decisions in federal district courts and at the Federal Circuit that have applied Alice and Section 101 to a wide variety of business method and software related patents. And in the vast majority of these cases, the courts have invalidated the patents.
This trend line has led to rampant speculation about the end of software patents. But a review of the patents in those cases indicates that the claims at issue in most of the district court cases (and arguably all the Federal Circuit decisions) were directed to business methods that would have likely been held invalid under Bilski and other pre-Alice decisions. What we have seen far less is how courts will apply Alice to patent claims directed to software technology (as opposed to business methods).
Arguably the first of those cases is on its way through the Federal Circuit. The McRO (Planet Blue) v. Activision Blizzard, et al. (C.D. Cal. 2014) (“Planet Blue”) appeal pending at the Federal Circuit may be an important indicator of how software patents will be evaluated by the courts going forward.
Unlike many of the other Section 101 cases that have largely involved simple financial/business practices or similar non-technical “inventions,” the patents in Planet Blue are directed to what appear to be actual technological challenges. The patents utilize complex and seemingly specific computer-implemented techniques.
And yet the Planet Blue patents were found invalid under Section 101 in the district court. In deciding the case, Judge Wu did a thorough analysis of the patent claims, starting with the observation that “[f]acially, these claims do not seem directed to an abstract idea” and appear to be directed to a “specific technological process.” However, interpreting Mayo to require him to disregard any aspect of the claims found in the prior art, he conducted a further analysis to determine what feature of the claims were novel. Wu found that the only aspect of the claims that added to the prior art was an abstract idea: “the use of rules, rather than artists, to set the morph weights and transitions between phonemes.”
Planet Blue has now appealed to the Federal Circuit, and opening merits briefs were recently filed. These and the subsequent briefs, arguments and decision in this case will be important for practitioners and patent holders for several reasons:
The Federal Circuit will evaluate a patent claim that is technology-based.
An initial read of the claims in the Planet Blue patents seem to be a far cry from basic method claims. The Planet Blue patents are used in animation; the technology helps automate the process of adapting an animated image to mouth words without having to draw or manually program the animated character’s movements. Its’ claims are drawn to the use of three-dimensional synchronization for certain applications in animation.
The district court initially acknowledged that the claims, in isolation, appeared tangible and specific and did not seem directed to an abstract idea: “considered standing alone, the asserted claims do not seem to cover any and all use of rules for three-dimensional synchronization.” In deciding this case, the Federal Circuit will be making an important decision on how to evaluate technology and software claims in a post-Alice environment.
The decision should provide additional guidance on how to apply the ‘significantly more’ test.
In the Alice decision, the Court recognized that patents – even those that are directed to an abstract idea or other ineligible concept – can be made patent eligible if the patent ‘transforms’ the abstract idea, or does ‘something’ or ‘significantly more’ than a patent on the concept itself. This is the second step of the Alice/Mayo test, which the Court refers to as the search for an inventive concept. Unfortunately, both the Supreme Court and Federal Circuit have provided scant guidance on what is necessary to satisfy this “significantly more” test.
In this case, the district court found that the claims covered a well-known concept of lip synchronization and weren’t sufficient to meet the ‘significantly more’ test. The Federal Circuit will review the claims, and assess whether the district court’s analysis and conclusion were correct. The Federal Circuit’s decision should provide some insight as to how ‘significantly more’ test should be performed and how claims should be read moving forward.
Lower courts will be paying close attention to the Federal Circuit’s ruling in this case in their 101 assessments.
Just six weeks after the Planet Blue decision, another Section 101 decision came out from the Central District of California, this one authored by Judge Pfaelzer, in California Institute of Technology v. Hughes Communications, Inc. (C.D. Cal. 2014). In that case, the court denied Hughes’ motion for summary judgment on Section 101 ineligibility. Judge Pfaelzer also undertook a lengthy analysis of Section 101 case law. In applying the Mayo/Alice framework, the court found that the Caltech claims were directed to abstract ideas, but that the claims were patentable since they contain inventive concepts.
Interestingly, Judge Pfaelzer also made a point of discussing the Planet Blue decision. While respectfully acknowledging that Planet Blue offers valuable contributions to the Section 101 discussion, Judge Pfaelzer noted that Planet Blue ultimately reached the wrong conclusion since courts should not, in her view, apply the point-of-novelty approach in the Section 101 inquiry, citing the Supreme Court’s Diamond v. Diehr decision.
This is the first step in the journey, not the destination. Planet Blue may turn out to be a bellwether case on software patentability, as these patents seem quite similar to so many of the software patents held by companies across the IT industry and beyond. But the outcome is likely to be highly panel dependent, and it would not be surprising to see a request for en banc consideration at some point down the line. The case is sure to be closely watched, and it will be fascinating to see whether the Federal Circuit follows the lead of Ultramercial (and upholds the lower court decision on patent ineligibility), or whether the reasoning of DDR Holdings will prevail (and the Section 101 decision reversed).
Bob Stoll is a partner at Drinker Biddle and Reath and Co-Chair of the IP Group and a previous Commissioner for Patents at the USPTO. The views expressed above are his own and do not necessarily represent the views of his firm or its clients.
Seems to me that the subject matter of these claims is, at least potentially, allowable by EPO standards for “technical effect”. The real question is how broad a claim the patentee is entitled to, having regard to what has been disclosed in the patent (assuming novelty and non-obviousness). That looks like a 112 question but, at the same time, an overly-broad claim could be said to be claiming an “abstract idea”. Is “a first set of rules that defines a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” sufficiently specific and meaningful to properly reflect what the patentee has actually contributed to the art? Looks like a good test case, if the court is up to the task.
“if the court is up to the task” unlikely given prior performance in this area.
“However, interpreting Mayo to require him to disregard any aspect of the claims found in the prior art…”
There is no such holding in Mayo per se. And any such analysis amounts to dissection/disintegration of the claims. Which is exact opposite of what Mayo actually stood for. Here is Mayo in three easy steps
1. If your invention is a known idea/concept it’s considered abstract, and non statutory subject matter.
2. If you apply the known idea/concept, e.g. reduce it to a series of steps, and the claim “Preempts” the idea/concept itself, it’s a Court created exception to statutory subject matter. According to the Court, such an application would take away an idea or concept that was previously known and available for all mankind to use and find future applications for.
3. However, if the claims are “integrated” to the point the claim itself does not “Preempt” the known concept it’s statutory subject matter. The Court relied on Diehr for its authority, for what myself, and others refer to as, Integration Analysis.
Unfortunately, it is a slow catching up process for many lower court judges. But nonetheless Integration Analysis is the law of the land and the standard we should all be using for determining 101 statutory subject matter.
BTW, “Integration” is the answer to the so called “significantly more” test.
It’s interesting to compare the reasoning in the Planet Blue decision with the reasoning in California Institute of Technology. It’s too bad these both can’t reach the CAFC at the same time. They provide an interesting counterpoint to each other.
I like this opening salvo from CIT:
“The Supreme Court decisions on § 101 often confuse more than they clarify.
The cases appear to contradict each other on important issues, such as the role of
prior art in § 101 analysis. Although these cases provide some clues to applying
§ 101, they leave open the question of when, if ever, computer software is
patentable.”
The first two lines are incredible understatements. Read Benson. That case is garba ge. And it doesn’t get a lot clearer since then.
“The Supreme Court decisions on § 101 often confuse more than they clarify. “
There is nothing so dense as a mind unwilling to understand.
Accuse Others Of That Which Malcolm Does
link to youtube.com
I think this video could be about Lemley and Stanford.
The discussion in Diehr about novelty was dicta.
Benson has been followed.
When the computer is old and generic and the math is not used to improve the old and generic computer, the claim as a whole is not patentable.
What we learn is that the non statutory subject matter must be applied to the statutory to produce an improvement in the statutory. We can assume there is no invention in the statutory if it is presented in the claim as something old and generic.
Alice and Mayo are both consistent.
Egads.
Can one believe it? Can one? Are we STILL going to fight the Supreme Court?
Mixed subject matter claims have posed a problem for a long time. Hotel Security provided the framework that is still followed in the Federal Circuit — but limited to printed matter cases: Invention must be in the statutory subject matter, not the nonstatutory. Alice and Prometheus are echoes of Hotel Security.
For 101 purposes, if the patentee admits that everything statutory is old, the only question then becomes whether the non statutory subject matter is applied in a sufficiently non abstract way to provide something improved in the statutory.
If Planet Blue is reversed, all Hades will break loose again.
And, it is appalling that so many intelligent people absolutely refuse to get it.
Ned, I recall you agreed with the DDR decision. How do you distinguish that one from Planet Blue?
Ned had only three extremely innocuous comments out of a total of 110 at link to patentlyo.com
It was Malcolm and the Slashdot Echos that ran rampant there.
Patent Leather, indeed I thought the overall business utility was a red herring.
The DDR Court observed:
“In this way, rather than instantly losing visitors to the third-party’s website, the host website can instead send its visitors to a web page on the outsource provider’s server that 1) incorporates “look and feel” elements from the host website, and 2) provides visitors with the opportunity to purchase products from the third-party merchant without actually entering that merchant’s website.”
If item 1 is sufficient by itself under 101 then it passes, in the presence of number 2 does not change the result.
I think a claim that calls for taking visually perceptible elements from one website and transposing them to another website is probably within the ambit of 101. Two different computers are involved. The visually perceptible elements are not simply numbers, but code that represents physical things.
The only potential problem might be is with claims that may not actually require a display of the modified look and feel website. In may end just short of that and suffer the same difficulty as did Flook and Mayo.
But the claims in DDR Holdings did require that display.
Code that “represents” physical things? What does that mean?
A legal argument (a process) may “represent” physical things, since language uses abstract symbols to invoke (“represent”) physical things. Should novel, useful arguments be patent eligible?
Should the concept if Ladies Night down at the local pub be patent eligible (assuming novelty)? If generically implemented on a computer with basic code skills?
There will be no peace or justice in patent land until either per se software or software that can’t pass the MoT are found ineligible or a new statue written.
Software cannot be fairly adjudicated under the patent laws and established doctrine; all of which is explicitly designed for physical processes or material objects. Ideas blow it up, as they should, because the human mind can “represent” the world in myriad ways at will, and express those representations via language, including software code, which is ALWAYS executed via some language.
Martin, consider Planet Blue’s code like a recipe. Both represents physical things.
Using a recipe to make improved bread certainly is patentable. But not the recipe.
Using Planet Blue’s code to improve the display of a website on a screen in terms of its look and feel, seems very much like using a recipe. The result is something physical that one can actually see.
Ned, look and feel is essentially artistic expression. You can eat bread. Can you touch look and “feel” of a moving image?
Its more like looking at a pretty image of another recipe.
A monitor and the associated video hardware are, and should always be patent eligible. Anything displayed in that monitor cannot be eligible by virtue of any differences with other images displayed. I cannot see how anyone could reason otherwise.
Martin, how would you feel about a claim to a system of traffic signs comprising shapes and colors?
I’d feel that copyright would be the proper way to protect that IP.
How do you think the current Supreme Court would think about it?
Martin, the problem is the Supreme Court has already held that a system of signs comprising marks and spaces is patentable subject matter. See, Morse’s fifth claim in the reissue.
O’Reilly v. Morse
link to law.resource.org
A system of traffic signs comprising shapes and colors is not different in kind.
A display of a web page comprising look and feel elements that associate the displayed web page with another is substantially the same as Morse’s systems of marks and signs for numbers, words, etc. for telegraphic purposes .
I do not see the Supreme Court any time soon overturning O’Reilly v. Morse, do you?
The telegraph claims depended on a novel apparatus to code and decode the signs- do you think standalone claims, today, to a system of colors and markings on a conventional physical sign would pass 101 muster?
Would that finding be an overturning of the Morse case? mmmmmm
Ned, I think we all understand, at least to some extent, the Alice and Mayo decisions. The problem we are having is with their reasoning and so disagree with the basis of these decisions and reliance upon them as precedent. We do not necessarily disagree with their determinations of unpatentability but disagree with their determinations of subject matter ineligibility of the claim as a whole.
The query as to whether some part of an invention is “old” is a 102/103 analysis and should not be part of a 101 analysis. Any analysis that acknowledges the existence of one or more tangible elements in a claim should conclude that the claimed invention is subject matter eligible. A claim directed to software installed on hardware should be considered subject matter eligible. That is not to say the claim is patentable when subsequently considered under 102/103. There is a high likelihood that such claimed invention would indeed be at least obvious.
The analysis of subject matter eligibility should only consider the claim as a whole. A claim “directed to” a tangible invention “as a whole” should be considered subject matter eligible. The analysis should not dissect the claim in an attempt to identify a single potentially subject matter ineligible element and then delve into a query of how new or old that individual element is. In Mayo, the Court simply missed the boat. It should have acknowledged subject matter eligibility of the invention as a whole and should have instead concluded the invention was unpatentable under 102/103.
Consider the claim, “A hammer comprising “tangible elements A and B” and memory comprising software.” Such a hammer would unfortunately likely be considered subject matter ineligible under the current decisions.
Also, the Court’s decisions include an inferential interchangeable use of the terms “patentable” and “subject matter eligible”, even though the latter is a single requirement for the former. It is when the Court uses the broader terms “unpatentable” or “patentable” in its reasoning that it intermingles 102/103 with 101 and so obfuscates what has been otherwise clear and simple statute applicable to all existing technologies.
Your description of “101 purposes” is reflective of the problem inherent in the decisions. I am not saying that you are wrong in your interpretation or description of the case law. In fact, I think you are summarizing their analyses well. I am only saying the case law is wrong and pointing out where I believe it is wrong and needs to be changed.
Your statement, which I think reflects key aspects of the current state of the Court’s decisions, recognizes the existence of statutory elements in the claim (“everything statutory”). Their existence should be sufficient to render the claim as a whole subject matter eligible. That is where the 101 analysis should end and a finding of subject matter eligibility should be held.
Unfortunately, the Court’s eligibility analysis then requires that statutory subject matter be completely ignored (because it is old) and the merits of the non-statutory subject matter be determined. At the end of the day, the Court mistakenly concludes the invention as a whole is unpatentable as being subject matter ineligible rather than unpatentable as being anticipated or obvious over the prior art. The final conclusions are the same but the paths are completely different. The end does not justify the means.
The Court’s analysis is akin to determining the subject matter eligibility of a radio based upon software installed on the radio. The radio is statutorily subject matter eligible, but the Court might find it unpatentable as being ineligible instead of unpatentable as being obvious or anticipated.
So, I think we will continue to fight the Sup. Crt. and I believe the best way to do that is through aggressive action in the legislative branch. GO USPTO!! GO CONGRESS!!
Rick, with respect, I urge you to read, in order in In re Russell, 48 F.2d 668 (C.C.P.A. 1931), Guthrie v. Currlett, 10 F.2d 725 (2d Cir. 1926) and then Hotel Security Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908), each case relying on the next.
What you will find that the law prior to ’52 was well developed when dealing with claims that mixed the ineligible with the eligible. Where do you think the invention had to lie? Yeah that’s right. You got it.
And when the subject matter that is otherwise eligible is old and conventional, and admittedly so, can we not deal with such a claim under 101?
There is nothing surprising at all that the Supreme Court has finally discovered the formula so long ago laid down by the Second Circuit in Hotel Security. Congress legislated in ’52 with Hotel Security being widely recognized as established law. There is no hint whatsoever that Congress intended to overturn Hotel Security. There is no need to rewrite the anything.
The problem all along was that certain people got into power in the C.C.P.A. and in the Federal Circuit who had a different view. You know these people were. They wanted the channel everything into 103, but in a way that would allow the patenting of unpatentable subject matter. I give you State Street Bank.
Just another bizzarro mixing up of 101 with 102, 103, and 112 by a science illiterate judge that shames our nation.
And to boot, an attempt not to interpret the claims in light of the specification and how a person of ordinary skill would construe the claims. Thanks Lemley and Stern.
Night, put your thinking cap on.
Claim: A + B. A is non statutory. B is statutory. B is old. A is new. A does not modify B to produced an improved B.
Is this claim patentable under 101/102/103?
Ned –
B is a glass cup with a handle.
A is printed matter.
A+B is a statutory measuring cup.
B is a glass cup with a handle. A is printed matter. A+B is a statutory measuring cup.
Correct me if I’m wrong but the court who reached that conclusion is the same court that was smacked down 9-0 repeatedly and deservedly for failing to understand the basics.
I humbly suggest that your “statutory measuring cup” case law has as much weight in 2015 as a feather on the moon.
That said, I think we can all agree that progress in the measuring cup arts has been extraordinary in the wake of that decision.
LOL
Rich wrote the opinion he was referencing.
His thinking, fleshed out in Bergey, cited in Diehr, still haunts us.
Rich’s thinking on 101 has been totally demolished.
His thinking on functional claims needs to be demolished.
I agree, however, with his views on 271(c) and (b).
You mean, in other words, continue the judicial activism that has re-written the 1952 Patent Act via the SCOTUS deciding that their common law prior to 1952 supersedes the 1952 Patent Act because they are the 9.
Night, Rich’s views on the restructure of 101 would have and did lead to the patenting of non statutory subject matter.
This is an unmistakable and acknowledged fact!
This is not a question of the 52 act overruling some prior case law of the Supreme Court. This is Rich’s attempt to overthrow the constitutional provision itself. The man had a bias when I came to the 52 act that acted like blinders. He simply could not see the big picture.
You remain ever wrong and ever blinded by your Beliebs Ned.
Shall I quote you back to you the very words you used for software and utility (the aspect designed to be protected under patent law) from your posts on the copyright thread?
Which face do you wear today, oh deceiver?
(Psssst Ned – which branch did that constitutional provision mention, an which FOR which branch did Rich gain his intimate knowledge of the law and then CONTRAST that with which branch YOU are attempting to raise above the law and above the constitution itself…
You sir, are the villain to the constitution here.
Les, Les, Les.
What are we to do with you?
The “mere” recital in a claim of old and conventional but statutory subject matter is not enough per Benson, Flook, Bilski, Mayo, Alice, all printed matter cases …
But, I agree with you, in the mind of Judge Rich, as argued by him in Bergey, if the claim contains any statutory subject matter, then inquiry moves beyond 101.
I hope you can see why Judge Rich never really got it. But his thinking still permeates the patent bar it seems.
Ned still believes that the guy who helped WRITE the patent law does not “get” the patent law while wanting to look the other way when the Royal Nine want to reclaim their lost authority to write law by way of common law evolution….
Cheered on by Malcolm and the Echoes, it is easy to see who has the better position (hint: it is not Ned or Malcolm).
“Hi, I’d like to patent the phrase ‘i before e except after c and in long sounding a’s like neighbor and weigh,’ can I do that?”
“No, are you daft?”
“Okay, well if a computer animator knows how to spell words visually, can I claim ‘i before e except after c and in long sounding a’s like neighbor and weigh’ while doing computer animation?”
“Oh, well certainly, that’s clearly a technological issue.”
Admitted Prior Art (from patent): Animators could make resting faces. Animators could make faces of character making a sound (like “oo”). Animators could, for any given frame, define how much of the mouth was weighted toward each animation (i.e. 30% resting, 70% oo). Animators ACTUALLY DID cause animations to move their mouths to sync with sound.
Teaching: One can define rules, for example, “to say ‘hi’ run this pattern: 0% resting, 100% ‘h’ followed by 0% resting 100% ‘eye'”
The claims are not limited to any particular rule, just that rules can be used. Nor could one even really argue that rules weren’t used before, because the animators had to get the picture to sync with the spoken word – the rule has been and always will be the english language. One can also plausibly think of basic rules that would always exist – If you say “hi” a second time, the mouth animation would likely be the same as saying “hi” the first time. Well that’s a rule isn’t it?
So is it novel? Probably not. Is it non-obvious? Definitely not. But is it statutory? Only if you believe that the rule generation that previously HAD to occur but occurred in one’s head becomes an invention when you write it in the form of computer code rather than pen-and-paper notes.
The consequences of this are extremely interesting. It means that when the Supreme Court generates a rule interpreting a statute, what they are really doing is priming someone to invent by taking their pen-and-paper decision and allowing translation into computer code. “Well sure Miranda existed on paper, but had anyone written a computer program that asks if you informed the arrestee that they had the right to silence, that what they said could be used against them, and that they had a right to counsel?” invention please!
Translation into code has never really been considered, in and of itself, to be an inventive act. This is why “The Claims Must Be Evaluated In the Context of Prior Art” is correct logic.
The key question is in this case: Plaintiff’s expert opines that a central part of the patents is “using morph weight set representations of the facial shape coupled with rules, including explicit and distinct timing rules, to generate keyframes.” Everyone appears to agree with that characterization, except that Defendants point out that no particular “explicit and distinct” rules are required by the claims. The question is therefore whether the inclusion of that concept in the claims satisfies § 101 given (1) the prior art, and (2) the fact that the claims do not require any particular rules.
The district court came out correctly on both counts.
Nor could one even really argue that rules weren’t used before
In fact, RandomGuy, you can read on the previous threads where one of the regular software patent lovers here argued that previously animators used “their guts” to animate images, not “rules”.
That’s the kind of deep thinkers we’re dealing with here. But they’re very serious people! Bob Stoll worked at the patent office and he’s a highly paid partner. Somehow he can’t figure out Prometheus v. Mayo but we must all pay attention to him anyway.
So, you two would then like to put together a 103 argument, but feel it is too taxing and would rather invoke the witch use of 101.
So, you two would then like to put together a 103 argument, but feel it is too taxing and would rather invoke the witch use of 101.
Sure, if “too taxing” means “spend millions of dollars in court costs.” I’m just lazy that way.
Would software that interpreted these cases be patentable subject matter?
I mean, a legal argument is a process, right? You start somewhere, apply and branch test conditions, and arrive at a useful result. Find a novel argument and a computer readable medium and a CPU to process the bits, and why should you not be able to patent it?
Computerized patent lawyers would be very innovative and some would say, useful. That’s the logic of the software patent lovers; and that’s why we are where we are today.
You could probably make a small fortune by simply putting boilerplate computer language on the front and tail end of Supreme Court decisions and claiming software that enacts the decision. You’d be able to capture all of the compliance software for the next 20 years.
RG: You could probably make a small fortune by simply putting boilerplate computer language on the front and tail end of Supreme Court decisions and claiming software that enacts the decision. You’d be able to capture all of the compliance software for the next 20 years.
This is the kind of thing that really gets the software patent lovers and their true-believing attorneys most excited. That’s exactly the wonderful shiny world where Judge Rich and his disciples were hoping to take us with State Street Bank. After all, if “patents promote progress” is accepted unquestionably then, hey, let’s patent everything and watch “progress” in everything take off like a space shuttle packed with atomic bombs. What could possibly go wrong? Besides, patent lawyers are really nice people. You can trust them to keep their worst instincts reigned in. Sure you can.
Yeah right MM. All people involved in software are nothing but cro0ks. Sure.
What I see is people working very hard to innovate and working very hard to come up with ideas that would work in the marketplace and are deserving of a patent. That is what I see working with 100’s of engineers across the world at the top tech companies.
What I see is an industry that has grown-up with patents. I see an industry where patents enable the workers to disclose what they have done and easily switch jobs. I see an industry where start-ups have some protection from the giant companies.
Etc….
Nice you pick out a few bottom feeders (like every system in the US has) and try to characterize all people like them.
Really, Dennis, having this paid blogger blast us day in and day out with this stuff is intolerable.
As someone outside of this technology space, your explanation seems like a great basis for an obviousness rejection.
If you want to say this is ineligible under 101, though, what’s the precedent for finding that the general concept of the claims is an “abstract idea”? The claims do not appear to be directed to a qualifying mathematical algorithm. Discounting the life sciences reasons, the only other basis I’m aware of for finding a concept to be an “abstract idea” is the “fundamental economic practice” line of reasoning in Bilski and Alice that converts some economic practices into “abstract ideas” (as the Supreme Court has used that term). I don’t see you go through that analysis here, though, so I assume you’re not trying to use it.
If you think the concept is an “abstract idea” (but not because it invokes a mathematical algorithm or comprises a fundamental economic practice), can you explain why you think so?
To me, a claim that is directed toward any means of achieving a desired result is a claim directed to an abstract idea. Consequently functional language tends to trigger abstract ideas very often. If I claim software that results in X, my claim is directed to X itself unless I limit my claim to a particular way of achievement of X.
Patent law does not protect ends, it protects means. You can’t use functional language to avoid means claiming.
Easwaran; If you think the concept is an “abstract idea”
Your question itself sort of begs the answer, doesn’t it?
The “concept” is “abstract”. The “concept” of a “machine that achieves this function when you program it to achieve the function” is “abstract.”
The actual working object is non-abstract.
But the actual working object is never described in structural terms in these computer-implemented inventions. That’s because (surprise!) a claim limited to the object that actually works is “worthless.” Or so we’ve been told. Meanwhile, many of the same people who insist on functional claiming in software patents spent years and millions of dolalrs convincing Congress to rewrite copyright law especially for them so they could protect all their “worthless” software that actually works (except when it doesn’t, which is quite often).
Go figure.
Go figure indeed as Malcolm once again displays his butchery and lack of understanding of both patents and copyrights and to the different aspects of an item that hear laws protect.
Still the chump.
(autocorrect, change “hear” to “each”)
“Your question itself sort of begs the answer, doesn’t it?”
I don’t think so. My reading of Alice is that the Supreme Court uses “abstract idea” as a defined term not amenable to a simple dictionary definition. The Alice opinion says the following:
“It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.”
The totality of the opinion doesn’t seem to square with an interpretation in which every concept is an “abstract idea.” Consider that if every concept of a claim is an “abstract idea,” then there is no first step in the inquiry, because every claim can be distilled down to a gist. In contrast, the Alice opinion says several times that there are two steps to the framework, not just one. More importantly, though, if the Supreme Court really thought that identifying a core concept in the claim is the only thing necessary to determine that the claim is directed to an abstract idea, then why would it waste words demonstrating that intermediated settlement is a fundamental economic practice long prevalent in our system of commerce? Why bother analogizing to Bilski if the Supreme Court thought they could simply say: “this claim is drawn to the concept of X” and then turn to the “significantly more” (or “inventive concept”) inquiry?
I’d be genuinely interested to read an opposing interpretation of the Alice opinion. I actually haven’t read any (most people with opposing view seem to assume that the dictionary definition of “abstract idea” is appropriate (it makes intuitive sense only if you haven’t studied the Alice opinion), but don’t provide a holistic interpretation of Alice that would justify the resulting “all concepts are abstract ideas” takeaway).
The totality of the opinion doesn’t seem to square with an interpretation in which every concept is an “abstract idea.”
Great strawman arguments! Love the use of the term “holistic”. Very impressive!
if the Supreme Court really thought that identifying a core concept in the claim is the only thing necessary to determine that the claim is directed to an abstract idea
Nobody is suggesting that doing that is the correct approach to determining eligibility. Maybe you should invite your two strawmen to battle each other?
Here’s a little experiment for you: try to obtain and enforce a claim to “A new concept, wherein said concept comprises ….” and let me know what happens. Be sure to include a bunch of dependent claims with lots of different “conceptual” limitations.
Then come back here and give us all a lecture on whether “every concept is or isn’t an abstract idea”.
At the same time, look under your couch cushions for 1,000 innovators who actually made new machines and then claim each of those machines in objective structural terms that distinguish those machine from the machines in the prior art. See how many 101 objections you get and let us know what they look like.
“anon” meeting the machine aspect of 101 was stipulated by both parties
That’s nice. I never suggested that recitation of “a machine” was sufficient to pass 101.
More importantly, two people with vested interests can stipulate to all kinds of nutty things. I could really care less what the attorneys in Alice “stipulated” to. And in the long run (which will be shorter than you expect) nobody else will care either.
In pieces for the filter…
LOL – are you them making an issue (again) of your incorrect view of the law and the option of using “objective structural terms” as somehow being more than an option?
Besides, my point is on point directly to the question you so smug1y put to Easwaran – the 101 rejection was written by the Supremes to a category-passing claim wherein the Supremes waved away that passing of the part of 101 that your little “pet” option is geared to.
Even if I spot you the use of the option, the Supremes still wrec ked your m@ntra.
It is hi1arious that you either don’t understand this or that you simply pretend not to understand this.
Section 101 requires a claimed invention to be “new and useful.” In Benson, the Court held that “abstract ideas” do not satisfy 101 but that application of an abstract idea may satisfy 101 if the claimed invention is new and useful. Mayo and Alice address whether an abstract idea has been “transformed” into patent eligible subject matter by asking whether the claimed application of an abstract idea adds “something more” (i.e. new and useful). While the Court has not yet defined “new,” it has been applying 102 and 103 implicitly in its decisions.
Planet Blue appears to confuse “abstract idea” with claim dissection and seems to focus on claim elements that were admittedly in the prior art without analyzing the claimed combination as a whole. If so, it would be more a case of claim construction than 101 eligibility.
Planet Blue appears to confuse “abstract idea” with claim dissection and seems to focus on claim elements that were admittedly in the prior art without analyzing the claimed combination as a whole.
Didn’t the Supreme Court throw out the processor and computer system terms in Alice because they were known? How is that different from throwing out the conventional method steps or the conventional parts of animation?
Certainly the computer itself was once statutory-conferring. As was the now-standard animation procedure. Whether you’re dissecting or doing claim as a whole and ignoring the conventional aspects, you’re achieving the same result – something is not “new and useful” when the only “new” part is something that patent law doesn’t recognize.
In Alice, the Court did not “throw out” computer related claim elements. If followed established law in Diehr, Benson, etc. that merely adding computer related elements does not satisfy 101. Because the intermediated settlement elements were found to claim an abstract idea, merely adding computer related claim elements could not save them. The claims failed, as a whole, to recite a patent eligible invention because there was no properly recited application of an abstract idea that was new and useful.
In Alice, the Court did not “throw out” computer related claim elements.
It’s not clear what you mean by “throwing out” elements, nor is it clear what aspect of RG’s comment you are responding to with this statement.
If followed established law in Diehr, Benson, etc. that merely adding computer related elements does not satisfy 101.
Right. That’s because the use of computers for processing information — which is otherwise ineligible for patenting — is very, very old. For the same reason, the use of a “pen and paper” also will not rescue otherwise ineligible information processing steps.
The question is: what otherwise ineligible information processing steps are eligible when carried out by old computers?
I think the answer is crystal clear already. Also crystal clear is why certain people refuse to come to terms with the obvious answer to that question.
Also crystal clear that the answer isn’t “synching cartoon character lips to sound and stuff like that.”
In Alice, the Court did not “throw out” computer related claim elements. If followed established law in Diehr, Benson, etc. that merely adding computer related elements does not satisfy 101.
Doesn’t that dispose of this case then? The animator used to just make up the rules themselves (i.e. followed their guts), this just requires the rules be explicitly written out beforehand in the form of software coding.
Planet Blue appears to confuse “abstract idea” with claim dissection and seems to focus on claim elements that were admittedly in the prior art without analyzing the claimed combination as a whole. If so, it would be more a case of claim construction than 101 eligibility.
Also could you expand on this please – my understanding of Diehr is that, yes it used a formula, but it had a ton of non-conventional steps – continuously measuring the temperature and recalculating the mold time. Diehr was eligible because it there were old steps (putting rubber into the mold) and invalid steps (the equation) and new steps (continuous measurement, continuous recalculation of the timing). This case has old steps and invalid steps, it doesn’t have new steps. Why can’t this case be seen as amenable to Diehr?
In Diehr, the combination of steps was found to be new and useful.
In Diehr, the combination of steps was found to be new and useful.
But isn’t that just saying that Diehr stands for the fact that containing an abstract idea doesn’t automatically invalidate the claim (i.e. there was “substantially more” under the Alice framework)? There were other new limitations that saved the claim.
Here there are no other limitations to save the claim.
>>containing an abstract idea
The entire notion that “abstract idea” is used casually now as if it has any meaning is outrageous.
“Abstract idea” has no meaning in the context of Alice. It is a word for the witch trials. The SCOTUS should be disbanded. At the very least the dishonorable 9 should define “abstract idea” in terms of the ladders of abstraction. Without this definition “abstract idea” has no meaning within the context of patent law. Shameless are the 9 scientifically illiterate treasonous bums.
steve: Mayo and Alice address whether an abstract idea has been “transformed” into patent eligible subject matter by asking whether the claimed application of an abstract idea adds “something more” (i.e. new and useful). While the Court has not yet defined “new,” it has been applying 102 and 103 implicitly in its decisions.
At the very least, we can be quite certain that non-obvious, objectively-defined structure that distinguishes the claimed “innovation” from similar structures in the prior art is going to fit the bill for “something more”. And we also know that such structure is completely absent from PlanetBlue’s junky claims.
Planet Blue appears to confuse “abstract idea” with claim dissection
No, it doesn’t. Not even close.
[PlanetBlue] seems to focus on claim elements that were admittedly in the prior art
This is an essential part of any 101 analysis where the claim recites both ineligible subject matter and subject matter that was once eligible but is now in the prior art. That’s what Prometheus v. Mayo was about. Get used to it.
without analyzing the claimed combination as a whole.
The combination “as a whole” was certainly analyzed by Wu. You seem to be laboring under the misunderstanding that simply because a claim purports to achieve a new function that it somehow automatically become eligible. That’s not how eligibility works.
The focus — as always — remains: with respect to the prior art and practitioners of that prior art, what subject matter does the claim protect? Is all of that that subject matter eligible for patenting? If yes, then the claim is eligible. If no, then the claim is ineligible.
The problem faced with EVERY invention that implicates information processing is that information and logic are ineligible for patenting. The Federal Circuit has yet to deal with this fundamental issue. Instead they keep dancing around it and clinging to the bizarre idea that “the computer” was invented yesterday. It wasn’t invented yesterday. Computers are old. Not quite as old as ball point pens and slide rules but still really, really, really old. You know what else is old? The Internet and lawyers trying to make money off it, anyway, anyhow.
Steve:
Claim: A + B. A is non statutory. B is statutory. B is old. A is new. A does not modify B to produced an improved B.
Is this claim patentable under 101/102/103?
Ned,
ALL your beloved hard goods categories come down to electrons, protons, and neutrons which are not statutory in and of themselves.
Your theory dies of its own logic.
Let it rest in peace.
ALL your beloved hard goods categories come down to electrons, protons, and neutrons which are not statutory in and of themselves.
My imaginary version of your theory dies of my own incomprehensible logic.
Fixed.
What exactly do you think that I have stated is imaginary?
Go ahead and use those short declarative sentences you are always on about.
Correction to my previous comment at 4.5: Simply because a claim purports to achieve a “new function” doesn’t mean it automatically becomes eligible