It is time for Judge Mayer to Step Down from the Federal Circuit

By Gene Quinn
October 6, 2016

Judge Haldane Robert Mayer

Photograph of the official United States Court of Appeals for the Federal Circuit court portrait of Judge Haldane Robert Mayer. CC BY-SA 4.0.

It has been obvious for some time now to any objective observer, but recent events make it such that it is time for someone to say it openly. Judge Haldane Robert Mayer, former Chief Judge of the United States Court of Appeals for the Federal Circuit, should step down and move quietly into retirement.

For years Judge Mayer has had his own – shall we say “unique” – view of patent law. He has made a habit out of writing his own rather eccentric anti-patent views into dissents and concurring opinions and then later citing to himself in those dissents and concurring opinions as if they were somehow authoritative. If an attorney were to do something like that they would wind up being sanctioned, as ultimately happened when the Federal Circuit rebuked attorney James Hicks for mischaracterizing prior holdings and rulings in a brief submitted to the Court. But when a Federal Circuit Judge does such things we all just shake our head and sigh.

Recently, however, Judge Mayer took another step toward the absurd in a concurring opinion filed in Intellectual Ventures I LLC v. Symantec Corp. In his concurring opinion Mayer wrote:

Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents. The claims at issue in Alice were directed to a computer-implemented system for mitigating settlement risk. 134 S. Ct. at 2352–53. Although the petitioners argued that their claims were patent eligible because they were tied to a computer and a computer is a tangible object, the Supreme Court unanimously and emphatically rejected this argument. Id. at 2358–60. The Court explained that the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. Accordingly, “[t]he fact that a computer necessarily exist[s] in the physical, rather than purely conceptual, realm is beside the point” in the section 101 calculus. Id. (citations and internal quotation marks omitted).

Software is a form of language—in essence, a set of instructions. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 447 (2007) (explaining that “software” is “the set of instructions, known as code, that directs a computer to perform specified functions or operations” (citations and internal quotation marks omitted)); see also 17 U.S.C. § 101 (defining a “‘computer program,’” for purposes of the Copyright Act, as “a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result”). It is inherently abstract because it is merely “an idea without physical embodiment,” Microsoft, 550 U.S. at 449 (emphasis added). Given that an “idea” is not patentable, see, e.g., Benson, 409 U.S. at 67, and a generic computer is “beside the point” in the eligibility analysis, Alice, 134 S. Ct. at 2358, all software implemented on a standard computer should be deemed categorically outside the bounds of section 101.

These two paragraphs may be the most disingenuous paragraphs ever written by a Judge of the Federal Circuit.

First, say what you will about the Supreme Court’s decision in Alice v. CLS Bank, but the Supreme Court did not kill software patents. Many patent examiners, administrative judges on the Patent Trial and Appeal Board, and Judge Mayer himself have done just about everything they can to misinterpret Alice, employ circular reasoning, and ignore truths in order to kill software patents. The Supreme Court did not, however, kill software patents.

The Alice/Mayo framework adopted by the United States Supreme Court requires reviewing courts to ask and answer a series of questions before determining whether a patent claim constitutes patent eligible subject matter. The first question is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in 35 U.S.C. §101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter). If the answer to this question is no then the patent claim is patent ineligible. If the answer is yes, move on to the next inquiry.

The second question asks whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. Although there is absolutely no textual support for the creation of any judicial exceptions to patent eligibility, the Supreme Court has long legislated from the bench and ignored the clear language of the statute. The three identified judicial exceptions are: laws of nature, physical phenomena and abstract ideas. If the claim does NOT seek to protect one of those judicial exception then the claim is patent eligible. If the claim does relate to one of the three judicial exceptions then you must move on to the final inquiry.

Where the patent claim seeks to cover a judicial exception to patent eligibility, the final question asks whether the inventive concept covered in the claimed invention was “significantly more” than merely the judicial exception. For example, when dealing with an abstract idea, the question becomes whether the claim merely covers an abstract idea or whether the claim language adds significantly more so that the claim does not merely cover an abstract idea.

Whether you like Alice, or Mayo v. Prometheus, or the so-called Alice/Mayo framework, the above description of the framework is objectively correct and unassailable. Notice, if you will, that nowhere does it say that software patent claims, or claims to computer-implemented processes, cannot be patented under any and all circumstances. That is because the Supreme Court has always gone to great lengths to not adopt such a bright line rule. Despite what Judge Mayer clearly wants to believe, a ruling by any court or decision maker saying software is per se patent ineligible would be in direct opposition to the Supreme Court’s ruling in Bilski v. Kappas. While the Supreme Court did not give us any usable test in Bilski, the Court clearly said at least some business methods are patent eligible and overruled any bright-line patent eligibility test. So Judge Mayer is clearly and unambiguously wrong. Everyone knows he is wrong. If he doesn’t know he is wrong there is a much bigger problem that needs to be addressed.

But wait, there is more!

Judge Mayer also wrote that software is inherently abstract because it is just an idea without physical embodiment. For support, he cited the United States Supreme Court from Microsoft v. AT&T. Once again, however, we see that Judge Mayer is not afraid to grossly exaggerate, if not expressly misrepresent, what the Supreme Court said. If an attorney did this, based on how the Federal Circuit called out James Hicks, which lead to a disciplinary proceeding, I’d expect a disciplinary investigation forthwith.

So what did the Supreme Court really say? The Court, per Justice Ginsburg, wrote:

Until it is expressed as a computer-readable “copy,” e.g., on a CD-ROM, Windows software—indeed any software detached from an activating medium—remains uncombinable. It cannot be inserted into a CD-ROM drive or downloaded from the Internet; it cannot be installed or executed on a computer. Abstract software code is an idea without physical embodiment, and as such, it does not match §271(f)’s categorization: “components” amenable to “combination.” Windows abstracted from a tangible copy no doubt is information—a detailed set of instructions— and thus might be compared to a blueprint (or anything containing design information, e.g., a schematic, template, or prototype). A blueprint may contain precise instructions for the construction and combination of the components of a patented device, but it is not itself a combinable component of that device.

So that is the full context and the complete quote, of which Mayer had to intentionally only use part, is: “Abstract software code is an idea without physical embodiment…”

Judge Mayer deceptively, and almost certainly with intent, purposefully left out that the Supreme Court was talking about software code. This is critically important because software code is NOT patentable now, and software code has never been patentable, period. You simply do not patent software code. Software code is copyrightable. Yet in an enormously disingenuous manner Judge Mayer twists what the Supreme Court says about software code not yet expressed as computer-readable, into being somehow relevant when talking about patent eligibility of a computer-implemented invention. Either Judge Mayer doesn’t understand the issues or he is intentionally attempting to mislead while incorrectly wrapping himself with the authority of the Supreme Court. Whatever the case, this is egregious, and beneath the dignity of any intellectual discussion of the topic. It is also beneath the dignity of the Federal Circuit and downright embarrassing.

But wait, there is even more!

Judge Mayer said in his concurring opinion that the Supreme Court in Alice said that the presence of a generic computer is “beside the point.” But, once again, if you actually take the time to look at the full statement made by the Supreme Court you realize Judge Mayer is exaggerating to the point of misrepresentation.

In Alice, writing for the Supreme Court, Justice Thomas wrote:

The fact that a computer “necessarily exist[s] in the physical, rather than purely conceptual, realm,” Brief for Petitioner 39, is beside the point. There is no dispute that a computer is a tangible system (in §101 terms, a “machine”), or that many computer-implemented claims are formally addressed to patent-eligible subject matter. But if that were the end of the §101 inquiry, an applicant could claim any principle of the physical or social sciences by reciting a computer system configured to implement the relevant concept. Such a result would make the determination of patent eligibility “depend simply on the draftsman’s art,” Flook, supra, at 593, thereby eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract ideas are not patentable,’ ” Myriad, 569 U. S., at ___ (slip op., at 11).

Clearly, once again, when you read the entire quote and its context it does not mean what Judge Mayer attempts to stretch it to mean. Remember, Judge Mayer used the quote – “beside the point” – to support his preferred per se bright line rule that “all software implemented on a standard computer should be deemed categorically outside the bounds of section 101.” The problem is that is not what the Supreme Court said, or even suggested. The Supreme Court merely said that the presence of a computer is not enough. In other words, you cannot merely recite “a computer system configured to implement the relevant concept.” You need more than just a naked statement that the method runs on a computer otherwise you are just allowing draftsmen to add meaningless language that is not tethered to any concrete, tangible or technical manifestation. Of course, there is also the problem with anything being “categorically” patent ineligible being one of those pesky bright line rules that clearly and unambiguously violate the direct rulings of the Supreme Court.

The Supreme Court did NOT say that software that runs on a computer is per se patent ineligible. In fact, the Supreme Court has NEVER said that software or computer implemented innovations are patent ineligible. To the contrary, the Supreme Court has specifically recognized that these inventions can be patent eligible. This together with everything we know about how the Supreme Court has complete disdain for bright line rules mandated by the Federal Circuit means that we can say with great certainty that the Supreme Court would hold a very dim view of Mayer’s blanket patent ineligibility approach.

Conclusion

Judge Mayer desperately wants claims to computer-implemented inventions to be patent ineligible per se and he seems willing to go to whatever lengths necessary in an attempt to force his views into the mainstream. The problem is the Supreme Court has repeatedly chastised the Federal Circuit for adopting such bright line rules. So it is ironic, if not downright pathetic, that Judge Mayer would pontificate in favor of a bright line rule that says Alice killed software patents, period. Likewise, a rule that says software that runs on a computer is categorically ineligible is a bridge too far for the same reason. But Judge Mayer knows this, or should.

It is also interesting to note that Judge Mayer, who seems to love citing himself and claiming the Supreme Court agrees with him, ignores that the Supreme Court has not overruled Bilski, and they also haven’t overruled Diamond v. Diehr. In Diehr the Supreme Court first recognized that a computer program may deserve patent protection. In Diehr the patent claimed a method of operating a molding press during the production of rubber articles. In Diehr, the Supreme Court explained: “[A] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program or digital computer.” In fact, the Diehr decision opened the door for the possibility that some computer programs, even programs that relied on mathematical equations for core calculations, were entitled to patent protection. Importantly, the Supreme Court continues to say that Diehr remains good law, including in Alice. This must absolutely and undeniably mean that at least some computer-implemented methods are patent eligible in the eyes of the Supreme Court, despite what Judge Mayer says (and hopes) to the contrary.

Simply stated, the industry and the public deserve better than Judge Mayer. His anti-patent views seem to have matured into an irrational hatred that so cloud his judgment that he twists, exaggerates and misrepresents in order to attempt to impose his radical views into the law. There is no place for a judge like that. It is time for him to leave the Court. If he chooses not to step down it would seem appropriate for the Court to do what they would with an attorney who grossly exaggerates and mischaracterizes cases and rulings to the point of misrepresentation.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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

Discuss this

There are currently 113 Comments comments.

  1. EG October 6, 2016 10:14 am

    Hey Gene,

    Completely agree that Judge Mayer should step down IMMEDIATELY from the Federal Circuit bench. His concurring opinion in Intellectual Ventures, as well as in other cases articulating the same legally erroneous views on patent-eligibility are an embarrassment to the Federal Circuit specifically, and to the patent bar generally.

  2. Night Writer October 6, 2016 10:22 am

    Also, there is understanding of how this would relate to electrical circuits. Without question, any functions performed by an electric circuit (except very few related to actual current changes) could be performed with A/D converts and a general purpose computer.

    Everyone that works in this field knows that deals with it daily. The fact that Mayer does not even mention this or try to reconcile his views with the reality of the equivalency of software and hardware illustrates that he does not have command of the material.

    Consider that any claimed circuit could have a portion of it changed to A/D converters and a GPS, which would mean under Mayer that you do not infringe, which would mean that virtual no electrical circuit would be protectable. So, we are talking about at least half of all innovation (software/firmware/hardware) becoming ineligible for patentability.

    Just outrageous. Thanks Obama for appointing a bunch more people like Mayer.

  3. A Rational Person October 6, 2016 10:45 am

    Gene, Another reason Judge Mayer should step down is the ludicrous arguments in his concurring opinion relating to claims not being patent eligible under 35 USC 101 if they restrict free speech, allegedly in violation of the 1st Amendment. By Mayer’s reasoning, claims relating to publishing, printing, telecommunication, electronic communications, letters, etc. including such things as: smartphones, telephones, fax machines, WiFi, modems, typewriters, mail boxes, etc., would not be patent eligible subject matter because they in some way “suppress” free speech.

    From Mayer’s concurring opinion:

    “I agree that all claims on appeal fall outside of 35 U.S.C. § 101. I write separately, however, to make two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment.”

    “Patents, which function as government-sanctioned monopolies, invade core First Amendment rights when they are allowed to obstruct the essential channels of scientific, economic, and political discourse.”

    “Suppression of free speech is no less pernicious because it occurs in the digital, rather than the physical, realm. “[W]hatever the challenges of applying the Constitution to ever-advancing technology, the basic principles of freedom of speech and the press, like the First Amendment’s command, do not vary when a new and different medium for communication appears.” Brown v. Entm’t
    Merchs. Ass’n, 564 U.S. 786, 790 (2011) (citations and internal quotation marks omitted). Essential First Amendment freedoms are abridged when the Patent and Trademark Office (“PTO”) is permitted to balkanize the Internet, granting patent owners the right to exact heavy taxes on widely-used conduits for online expression.”

    “Most of the First Amendment concerns associated with patent protection could be avoided if this court were willing to acknowledge that Alice sounded the death knell for software patents.”

    I should also mention that the last sentence from Mayer’s concurring opinion I’ve quoted is also internally inconsistent with his 1st Amendment “arguments”. If the reason, by his logic, that claims allegedly run afoul of the 1st Amendment because they allegedly suppress free speech, why does it matter that the suppression is being implemented by software instead of hardware? Isn’t the suppression the same in either case?

  4. Curious October 6, 2016 11:28 am

    Just outrageous. Thanks Obama for appointing a bunch more people like Mayer.
    DDR Holdings: Chen (Obama), Wallach (Obama)
    Enfish: Hughes (Obama), Taranto (Obama), Moore (G. W. Bush)
    McRo: Reyna (Obama), Taranto (Obama), Stoll (Obama)
    Bascom: Chen (Obama), O’Malley (Obama), Newman (Reagan)

    Mayer was appointed by Reagan
    Dyk was appointed by Clinton

    Whatever your personal opinions about Obama (obviously very negative), his appointees are not the sole reason why 35 USC 101 has been used to drastically reduce the availability of patent protection. You need to direct your ire to a Supreme Court that has rewritten 35 USC 101 (starting with Benson back in 1972) and has continued to do so culminating with the abomination of a decision of CLS Bank in which they refused to give guidance as to what is meant by invention “directed to” an “abstract idea.” Granted, the Federal Circuit has taken that lack of guidance and created an environment in which the patent eligibility of one’s patent is based — not upon the merits — but upon the composition of the Federal Circuit panel that hears the appeal.

    If the ‘Obama appointees’ were as bad as you have long continued to make them out to be, we wouldn’t have had DDR Holdings, Enfish, McRo, and Bascom. Also, Mayer wouldn’t be writing a concurrence — he would be writing the majority opinion.

  5. Patent Prophet October 6, 2016 11:38 am

    I was thinking the same thing when I read his concurrence. Complete garbage.

    I’ve been following him since his participation in the judicial hit job in the Vringo/IP-Engine v. Google case. Any patent owner with a patent that even remotely implicates software or the internet that is involved in an appeal with Mayer on the panel should ask for his recusal. I know this is hyperbolic; however, he will not give patent owners a fair chance given his now-fully-exposed ideology.

  6. zoobab October 6, 2016 11:51 am

    I think he just follows the majority opinion among programmers, who sit all day long behind a keyboard, and wonder why the hell there are some characters they can’t align in their programs.

    Phil Salin debunked it long time ago: http://philsalin.com/patents.html

    This issue needs to be addressed sooner or later by CAFC or even better by the SCOTUS.

  7. JNG October 6, 2016 12:04 pm

    What is most telling about Mayer is that he is apparently too chicken sh** to float his nonsense in oral arguments to vet his “opinion” with the lawyers there in front of him arguing the dispute. He knows they would shoot him down in a heartbeat, so he hides behind his robe and sandbags them and the public with random subjective musings of his personal dislike for certain kinds of technology. Because, at its core, this is what it is: technologism, meaning, the notion that there are some technologies that are patentable, and some that are not, based on vague, arbitrary distinctions. Well, not entirely arbitrary because know how beholden the EFF is to Google, and it was their amicus brief that Mayer was quoting. So, in this respect, he’s merely acting as the puppet of the puppets, and his motivations are as clear as Saran-wrap.

  8. Anon October 6, 2016 12:15 pm

    zoobab,

    the single largest problem in that article is the false equivalence of software and writings.

    Software is not a literary work**.

    All else in the article breaks down at that point.

    **The hybrid nature of software can be seen in other typical anti-software patent mantras such as “software is math” and “software is logic.”

    What software is, is a manufacture and machine component as understood by how those terms are understood within the law in general and within patent (and copyright) law in particular.

    Software has multiple facets which is why the mantras each fail. One can obtain copyright on literary works, but logic and math are outside the bounds of copyrights. Literary works belong in the Fine Arts, but software does not.

    When one understands that software is more than just any one “mantra” then one can appreciate why different aspects of software can earn different protections under the different IP laws.

    Those aspects expressive in nature can earn copyright protection.
    Those aspects utilitarian (functional) in nature can earn patent protection.

    Like the Five blindfolded wise man game, each blindfolded wise man holding a different “aspect” of an elephant cannot tell you what the elephant is (if if they did, they would be wrong). So too with software. Software is a utilitarian manufacture created by the hand of man to be a machine component that also has an expressive nature, or aspect.

    There is little wonder why software is at the heart of the modern age, and little wonder that is deserves the different protections that each of the different IP laws provide.

  9. Curious October 6, 2016 12:16 pm

    @3 — all good points. Mayer’s discussion on software patents and the First Amendment evidences a fundamental misunderstanding of patent law and/or the First Amendment. Patents do not grant one the right to perform/manufacture what is patented. Instead, patents only grant the ability to prevent someone from practicing the patent. As such, if Mayer believes that the claims of the patents at issue “have the potential to disrupt, or even derail, large swaths of online communication,” invalidating the patents on this technology means that ANYBODY can now practice these inventions. Mayer also seems to forget that the First Amendment applies government restriction on the freedom of speech. As far as I am aware of, the First Amendment does not apply to a private entity (e.g., a company) restricting speech.

    As for the software shouldn’t be patent eligible aspect of his decision, Mayer cites to the Electronic Frontier Foundation (EFF) Amicus Brief and to articles by Mark Lemley (who happens to be on the Advisory Board of EFF and is an extremely well-known anti-patent writer). For those who are unaware, the EFF is an anti-software patent group — and can hardly be considered objective. Citing them for facts would be like someone citing an article by Greenpeace to support a finding that human-instituted climate change is a global problem or citing an article by Exxon-Mobil to support a finding that climate change isn’t a problem. Neither could be considered neutral sources of information.

    He also cites to articles by Wendy Seltzer (formerly of EFF), Arti Rai (collaborator with Mark Lemley and frequent anti-patent writer), Shawn P Miller (described in his Stanford bio as “[u]nder the supervision of Mark A. Lemley”), and Peter Menell (another collaborator of Mark Lemley).

    It is telling that much of the evidence to support Mayer’s position that software shouldn’t be patentable is gleaned from an organization and closely-related individuals whose intent is to eliminate software patents.

  10. A Rational Person October 6, 2016 12:48 pm

    Anon@8

    Further to your point, one logical inconsistency I have never seen addressed by the anti-software side is the following and illustrates why software is not “just writing”:

    If machine performs a real world function, such as displaying an image due to a set of gears, a set of switches, electronic circuits, transistors, and/or IC chips, none of the software patent critics have ever said that such a machine should not be patent eligible. But, if the software is used to implement the exact same series of operations implemented by the set of gears, a set of switches, electronic circuits, transistors, and/or IC chips, the software patent critics argue that the machine becomes patent ineligible. How is that a logically consistent position? The answer is, it is not a logically consistent position and illustrates that the software patent critics have not fully addressed the problems with their arguments.

    Also, by the “logic” of Salin’s article, software that is stored in a magnetic storage medium, on an optical storage medium, or any other medium where the software is not visible as “writing” would be patent eligible, since the software is no longer “writing.”

  11. ART October 6, 2016 1:15 pm

    Your self-serving opinions about matters of law aside, I wonder why you talk ad hominem, against a particular judge. Libel laws may be underdeveloped in the US jurisdictions on purpose, still, are these good manners that reflect well on an argument? I do not think so.

  12. Curious October 6, 2016 1:18 pm

    the software patent critics have not fully addressed the problems with their arguments
    In order to fully address the problems with their arguments, the software patent critics need to want to engage in a fair debate about the issue. However, a fair debate is not want they want. They have an end-goal in mind: abolishing all software patents, and answering criticism of their positions merely brings an unwanted spotlight to the flaws in their position. As such, most choose to ignore the criticism.

    Unlike many of the ivory-tower critics (i.e., of the type cited in Mayer’s concurrence), those that have been practicing in this area recognize there is little difference between a patent directed to a 20th century machine and a patent directed to 21st century software. As such, the criticisms leveled against software apply equally to machines yet most (but not all) of the critics are also NOT calling for the abolition of all patents. This is because their end-goal is driving their analysis instead of having their end-goal being a result of their (objective) analysis.

    illustrates why software is not “just writing”
    As an engineer (in a past life) we were responsible for preparing/editing process sheets, which were essentially written instructions as to how to make parts (e.g., what steps to be performed on what manufacturing machines). These written instructions, however, are not the parts to be manufactured. Similarly, what a programmer does in creating written executable code is not the final product. Instead, what a programmer creates is written instructions as to how a processor (i.e., a machine) is to be configured. The end product is a machine configured in a particular way. When one claims “software” in a patent, they are not claiming the written executable code. Instead, they are claiming the configured machine itself, the configured machine executing (i.e., a process), or a machine component that is used to configure the processor.

  13. ART October 6, 2016 1:54 pm

    Curios, your line of argument is very typical for people in the patent business. But it is a bit like: I hit nails with a hammer, why shouldn’t I smash your head with it.

    If you apply a patent law to a new field, such as software, you have to provide evidence that it is actually beneficial, and the benefits outweight the costs. This is a simple rationale. Professionals in the field of software are not convinced that their field is better off with patents or there was a protection gap left by software copyright laws. In fact why should patent law step in to protect what software copyright explicitly did not cover?

  14. Gene Quinn October 6, 2016 2:53 pm

    Art @11-

    There are no ad hominem attacks on Judge Mayer in the article. The word “ad hominem” has a specific meaning. You should have looked it up before you inappropriately used it.

    Ad hominem is an adjective that means: “1. appealing to one’s prejudices, emotions, or special interests rather than to one’s intellect or reason. 2. attacking an opponent’s character rather than answering his argument.”

    See: http://www.dictionary.com/browse/ad-hominem

    Nothing in this article appeals to emotion or special interest. I lay out the argument line by line explaining exactly why Judge Mayer is wrong. I also point out how his careful use of only partial quotes is extraordinarily misleading. That coupled with citation to the Supreme Court to supposedly support his position, when in fact the Supreme Court precedent would not support his radical views, is perfectly accurate and appeals to intellect. Further, nothing in this article attached Judge Mayer’s character. Instead, this article attacks Judge’s Mayer’s reasoning and points out that he manipulates legal precedent to suit his predetermined views. All of that is perfectly factual.

    As for whether Judge Mayer would be able to sue me… not in the U.S. He is a public figure and would have to prove actual malice. The article is not written with malice. Instead, the article merely points out Judge Mayer’s egregiously faulty legal reasoning. If Judge Mayer would like to sue me that would be a lawsuit I would be VERY happy to defend though.

    -Gene

  15. Prizzi's Glory October 6, 2016 2:54 pm

    A Rational Person@10

    If Congress wishes to legislate that a certain class of software is ineligible, it could qualify that an eligible method cannot be equivalent to function that is computable by a Turing machine.

    If a function is expressible as a term in the ?-calculus (straightforward to show), the function is ?-computable and therefore Turing-computable.

    The method of Diehr 4344142 simply does not correspond to a function expressible as a term in the ?-calculus.

    Benson defined the metes and bounds of a method that corresponded to a function expressible as a term in the ?-calculus. The independent method of Flook can likewise be so described.

    Alappat explains that an eligible device may be implementible by means of hardware components or by means of software components and that the metes and bounds of an allowable claim my encompass both hardware and also software components.

    One aspect of clarifying § 101-eligibility may be modification to specify that Turing computability may (or may not) be a bar to eligibility.

  16. Kevin Rieffel October 6, 2016 3:03 pm

    Eliminating patent-eligibility for software will not help the public. It would:
    a) encourage trade secrets and non-disclosure agreements
    b) discourage company contribution to standards and open source solutions
    c) discourage inter-device compatibility, APIs/extensions
    d) increase resources spent on reverse engineering
    e) allow larger developers to “borrow” solutions from smaller companies
    f) widen the gap between large developers and startups
    g) keep prices down for simpler apps, but discourage new entrants
    h) increase prices for business and enterprise-sized software

    J. Mayer’s premise–i.e., that eliminating software patents is good for the public–is deeply flawed. The software-patent-free world where everyone can code, everything is open source, and solo developers build Windows in a garage is a fiction. The reality is that smaller developers are ripped off by big companies every day and, without patents, there will be even less protection for startups. Eliminating software patents would not be a win for free speech or free enterprise.

  17. Prizzi's Glory October 6, 2016 3:06 pm

    Gene@14

    To expand on the issue of ad hominem.

    I have yet to meet a lawyer incapable of understanding the issue of effective computability, which was conceptualized before the development of electronic computers. Logical analysis is a major part of legal practice. Unfortunately, some lawyers or judges are reluctant to apply certain types of logical reasoning to certain issues like the patent-eligibility of devices, systems, or methods that have software components.

  18. Prizzi's Glory October 6, 2016 3:09 pm

    BTW, ?-calculus is LAMBDA-calculus. The necessary Greek characters are not always available to depict the hyphenated word correctly.

  19. John White October 6, 2016 3:20 pm

    I think the frustration results from software and software implemented methods being subject to overlapping IP protection. The code per se is copyrightable but not patentable, the implemented method is patentable, but not copyrightable. The respective protections are quite distinct, but seem to provide a similar benefit. I think the Judge would like to see one gotten rid of; the problem being that without patents, copyright is quite inadequate to cover what is being done by the method itself.

  20. Gene Quinn October 6, 2016 3:22 pm

    Art @13-

    You say: “If you apply a patent law to a new field, such as software, you have to provide evidence that it is actually beneficial, and the benefits outweight the costs.”

    That statement is false. Please inform yourself about the purpose of patent laws. The patent laws are to encourage innovation. Patent laws do not need to be justified in their application every time a new field of innovation is developed. That never has been the law and never will be the law.

    You say: “Professionals in the field of software are not convinced that their field is better off with patents or there was a protection gap left by software copyright laws.”

    First, it doesn’t matter what programmers think. The law applies to everyone, not just those who approve of the law.

    Second, the only people who think copyright law is sufficient are the ones who haven’t independently created an innovation. Over the years I’ve spoke with numerous programmers dedicated to “open source” who wanted to patent what they came up with to prevent others from using it because it is extremely valuable. Talk about hypocritical!

    Third, copyright law prevents cutting and pasting code. It costs about $30 to file a copyright application on your own. In a world where you get what you pay for, you might as well have a copyright on your software code, but to pretend that a copyright is a substitute for a patent is utterly asinine.

    -Gene

  21. ART October 6, 2016 3:28 pm

    Dear Gene,
    (argumentum) “ad hominem” is Latin and means (argument directed) “at the man”.

    Dear Kevin,
    “J. Mayer’s premise–i.e., that eliminating software patents is good for the public–is deeply flawed. The software-patent-free world where everyone can code, everything is open source, and solo developers build Windows in a garage is a fiction.”
    Not applying patents to software is unrelated to the open source model. Ironically there are people who are building windows in a garage. http://www.reactos.org
    The software business relies on copyright protection.

    Other example to expand on the hammer/nail argument:
    I learned an anecdote that former US President Ronald Reagan used astrological advise to select his ties. That is worrying because there is no rational base whatsoever for astrology but it is also harmless because presidential ties really don’t matter much. But you should be deeply worried if your President decides to bomb nations based on astrological analysis.

    Now: patent law is like astrology. A tool where economics finds no evidence that it is overall beneficial, but where we accept patent law for the domain of engineering as it is mostly harmless and accepted in engineering. It is a field of law where it is very difficult for professionals to define what does not constitute an invention. The existence of patents for classical technical inventions does not mean that we should apply it to other fields such as abstract matter.

  22. zoobab October 6, 2016 3:58 pm

    Dear Kevin,

    “Eliminating patent-eligibility for software will not help the public. It would:
    a) encourage trade secrets and non-disclosure agreements”

    It won’t be any different from now. Trade secrets are already there for binary applications. NDAs as well.

    “b) discourage company contribution to standards and open source solutions”

    This is the IBM’s lawyers excuse for their contribution to OSS.

    “c) discourage inter-device compatibility, APIs/extensions”

    Patents has always been a problem for interoperability.

    “d) increase resources spent on reverse engineering”

    Patents don’t disclose any meaningfull running code. So from the reverse engineering perspective, people are left with binaries to reverse.

    “e) allow larger developers to “borrow” solutions from smaller companies”

    Copyright licensing has solved that problem long time ago.

    “f) widen the gap between large developers and startups”

    Until the startup got a patent threat from the large developers.

    “g) keep prices down for simpler apps, but discourage new entrants”

    Microsoft Android tax levy shows otherwise.

    “h) increase prices for business and enterprise-sized software”

    Microsoft Android tax levy shows otherwise.

  23. Curious October 6, 2016 4:00 pm

    If you apply a patent law to a new field, such as software, you have to provide evidence that it is actually beneficial, and the benefits outweight the costs. This is a simple rationale.
    Let’s see. The Supreme Court held that software was patentable in 1981. There were software patents issued before then as well. In the last 35 years or so (since software-related patents have been patentable), would you say that the software industry has fared poorly in the United States? I purchased my first computer right around 1981 and I programmed quite a bit on it myself. I would say that the computer/software/internet industry of today is light-years better than it was in 1981. What is YOUR evidence that patents have harmed the software field in the United States?

    “[Some] Professionals in the field of software are not convinced that their field is better off with patents or there was a protection gap left by software copyright laws
    There — I fixed it for you. Let’s not make it out like EVERYBODY thinks software shouldn’t be patentable. Moreover, being an expert is software does not necessarily one is well equipped to evaluate the policy considerations associated with the benefits/negatives of a patent system. Every modern country in the world has a functioning patent system. Do you know why? Moreover, the country that has the strongest patent rights for software (i.e., the United States) also dominates in terms of the number/size of software and internet related companies. Coincidence? Following your logic, one would expect the opposite.

    BTW — if you are going to argue that software should be patentable on this blog, you better bring your A-game.

  24. Also Curious October 6, 2016 4:11 pm

    Gene Quinn: ” it doesn’t matter what programmers think.”

    This is comedy gold. Let’s paraphrase:

    “It doesn’t matter what the people most affected by the law think.”

    Setting aside the high probability that most non-programmers probably can also see that Mayer has the far better arguments here, the fact is that it does matter what programmers think. Of course it matters. It’s absurd to suggest otherwise and, frankly, coming from an alleged attorney, it’s worse than absurd.

    “the only people who think copyright law is sufficient are the ones who haven’t independently created an innovation”

    Well, that’s plainly false. Are you drunk, Gene? You sure sound like you are. And you always look like you are.

  25. Curious October 6, 2016 4:11 pm

    The software-patent-free world where everyone can code, everything is open source, and solo developers build Windows in a garage is a fiction.
    I call this notion “patent communism.” It is a fantasy land of Marx and Engler where everybody contributes their work to the ‘commune’ and everybody shares the bounty of everybody else’s labor. As it applies to patents, it is the notion that inventors will happily give their inventions away for free so that society will benefit from them. In a perfect, altruistic world this might not be a bad idea. However, it is an extremely poor mechanism by which to promote innovation. What happens is that people figure out that those that contribute the least (to the commune) get the most return for their contribution, and those that contribute the most (to the commune) get the least return for their contribution. Instead of motivating people to contribute more, this system cause a race to the bottom — to see who can contribute the least.

    In a world without patents, the innovators are punished and the copyists are rewarded. Why innovate a new product when some poor sucker will do it for you and all you need to do is copy it, which saves you the expense of developing the product.

  26. Gene Quinn October 6, 2016 4:17 pm

    Also Curious-

    Only someone who is completely ignorant would think that computer programmers are most affected by the law.

    Why would anyone care what a bunch of people who just want to rip off the creations of others think? Of course those who don’t create anything original would prefer there not to be any laws against stealing the intellectual creations of those who actually innovate.

    So… I’m sorry to have to tell you… what is absurd is that you don’t understand why the “feelings” of programmers is completely irrelevant. Patent law is not there to protect lazy copyists. Patent law is there to protect innovators and encourage investors to fund creation, which leads to benefits for society.

    Now, I don’t expect you to understand any of this really. But if you are going to want to continue to comment here you will be expected to at least try and keep up and educate yourself on the issues. Mocking those that are correct because you don’t understand enough to have an informed opinion elsewhere may be fine, but that is not acceptable here.

    -Gene

  27. Also Curious October 6, 2016 4:21 pm

    ” if you are going to argue that software should be patentable on this blog, you better bring your A-game”

    As everyone knows, if you bring the A-game here, then Gene will ban you. Because if the game isn’t rigged, then you guys lose. See, e.g., the lengthening string of Supreme Court cases chipping steadily away at your sandcastle.

    By the way, Curious, why do you believe that a government created handout in the form of a patent that restrict’s everyone’s ability to communicate information is a “private action” falling outside the First Amendment? That seems like a very odd assertion to me. I’m sure Gene knows the answer. Surely it doesn’t make a difference to the analysis that the communication in question is being made on a prior art device.

  28. Gene Quinn October 6, 2016 4:23 pm

    Art-

    I know what the word “ad hominem” means. I defined it for you because you used it improperly, which would suggest you are unfamiliar with the meaning.

    As for your attempt to define “ad hominem” to save face, this article is directly squarely at Judge Mayer’s clearly erroneous legal statements. What has done violates everything lawyers are taught and would in many courtrooms in America lead to the lawyer being forcefully rebuked in open court, if not more. Out of context use of quotes that do not support the position for which they are used is a tactic lawyers try to use, and one that ultimately got attorney James Hicks sanctioned. All I am doing here is pointing out that this type of unacceptable behavior; behavior that clearly and unambiguously violates at least the spirit of the rules and decorum expected within proceedings.

    I go line by line and address Judge Mayer’s statements and arguments. I do not engage in name calling. Therefore, there is nothing in this article that is an ad hominem attack on Judge Mayer. That is true whether you choose to recognize the reality or not.

    -Gene

  29. Gene Quinn October 6, 2016 4:28 pm

    Also Curious-

    You say: “As everyone knows, if you bring the A-game here, then Gene will ban you.”

    Not entirely true. Generally speaking people get banned for getting in the way of an honest discussion of the issues. For example, people get banned for lying, or making statements of fact without regard to truth. They also get banned for offensive language, promoting conspiracy theories without any evidence, and for juvenile, school-yard name calling.

    For example, you asked if I was drunk and then said that I always look drunk. Frankly, when one has to resort to that level of argument that is just proof that they have lost the battle because they cannot intellectually stand up to the rigor of making a clear, concise and persuasive argument. Still, I allow a little more when it comes to me because I realize people like you hate me so much because I am right so often. Of course, if that type of thing continues you will be banned. If you engage in that kind of asinine commentary with anyone else a single offense will get you banned.

    So, if you want to stay you will grow up and discuss the issues and not pretend that making sense gets someone banned.

    -Gene

  30. Also Curious October 6, 2016 4:36 pm

    ” what is absurd is that you don’t understand why the “feelings” of programmers is completely irrelevant.”

    I didn’t say anything about programmer’s “feelings”, Gene. Programmers do *think*, you know. They can use logic like everyone else. Probably better than most people. Is this your “A-game”, Gene? It can’t be your A-game. Let’s see the “A-game.”

    Gene: “Patent law is not there to protect lazy copyists”

    Surely this is not your “A-game” Gene. Nobody is saying that “patent law exists to protect lazy copyists.” The issue is whether patents should be granted that protect the writing of instructions for programmable computers. Most people who write those instructions think the answer is “no”, and many of those hard-working people have articulated reasons supporting that view. The reasons are similar if not identical to the reasons listed by Judge Mayer. The other issue is whether patents that functionally claim the communication of certain type of information over pre-existing communication lines implicate the First Amendment. This also seems to be a straightforward and it’s surprising to see such resistance to it. Maybe it’s less surprising if the resistance is more emotional than rational. It’s not as if the people who are dismayed by the diminishing respect for software patents need yet another legal hurdle to overcome.

    “Mocking those that are correct”

    You’re assuming that you’re correct, Gene, but you’re hardly infallible. I’ve already pointed out some obvious mistakes you’ve made here. Is that also not permitted?

  31. A Rational Person October 6, 2016 4:42 pm

    Gene@20

    Further to you point that copyright does not provide adequate protection, if copyright protection was so adequate, I challenge anyone to provide a list of even 5 cases where a party won a multi-million dollar judgment or verdict in a copyright infringement lawsuit against a company that stole their software.

    The idea that copyright provides adequate protection for software is delusional.

  32. Gene Quinn October 6, 2016 4:53 pm

    Also Curious-

    You say: “The issue is whether patents should be granted that protect the writing of instructions for programmable computers.”

    It is hard to argue with what you say because you say it so casually and without any precision, but it is clear to me that your understanding of patents is completely wrong. Patents do not protect “the writing instructions for programmable computers.” What does that even mean? Are you talking about the code? Well patents don’t protect code. If you are going to engage in a legal discussion you need to be precise. Your lack of precision demonstrates just how little you know of the topic.

    You say: “Most people who write those instructions think the answer is no…”

    Again, who cares what people who write code think? Does anyone care what the person speeding thinks about the speed limit? No! Why? Because the law says you can only go X miles per hour. So whether computer programmers think software should be patented is completely irrelevant. The law says it can be patented, period. So go ahead and make fun of me if you want, but it is you who are being stupid here. That a group doesn’t like the law doesn’t mean that isn’t the law. Grow up!

    As for computer programmers not thinking code should be patented, only someone who is completely unfamiliar with the patent laws would ever say something so stupid. Code is not protected by patents.

    You say: “The other issue is whether patents that functionally claim the communication of certain type of information over pre-existing communication lines implicate the First Amendment.”

    That is not an issue at all. The First Amendment protects individuals from government suppression of expression. Innovations are not a form of expression. I realize Judge Mayer gets this wrong, and the fact that you get it wrong is predictable given you don’t understand that code is not patentable. Code is expressive and protected by copyrights. Code is not protected by patents, period. Please do some basic research to inform yourself of this very basic point. Until you understand what is and what is not covered by a patent your opinion on what should and shouldn’t be is really nothing short of hopelessly meaningless.

    You say: “You’re assuming that you’re correct, Gene…”

    No. I know I am correct. When it comes to patent law I know this stuff inside and out. You would do well to learn from what I say. If you and people like you actually listened and learned patent law you might actually be more formidable adversaries. But as long as you are too lazy to inform yourself and keep saying that code shouldn’t be patentable there is nothing for anyone in the patent industry to worry about. You don’t know the first thing about the subject and you think that your hatred of software patents somehow means your misinformed opinions should be taken seriously. Uninformed opinions, as well as those formed in reliance on incorrect data, are simply meaningless.

    You say: “I’ve already pointed out some obvious mistakes…”

    You think you have, but instead what you have done is conclusively prove you don’t know the first thing about what you are talking about.

    Seriously, take the time to inform yourself before you continue to proof your opinions are irrelevant because they are based on an erroneous foundation.

    -Gene

  33. Gene Quinn October 6, 2016 4:56 pm

    A Rational Person-

    The thought that copyright provides adequate protection for software is clearly delusional! Why people don’t understand that is a real mystery.

    Red Hat has a substantial patent portfolio. If copyrights were adequate why does a company so closely associated with the open source movement have so many hundreds of patents?

    The problem is there are a bunch of first level thinkers who don’t know the first thing about patent law, copyright law or business. They are lazy computer programmers who think that being a computer programmer makes them an expert on all things. They feel like they have a right to have an opinion on the matter and because they don’t like patents they shouldn’t be allowed. What they really want is the right to copy and paste so they can steal the work of others with impunity. Of course, that is what they want right up until they create something truly original themselves. Then they wonder why those open source agreements they are members to are being used to stop them from protecting their own proprietary work. Hilarious really!

    -Gene

  34. Curious October 6, 2016 5:18 pm

    the fact is that it does matter what programmers think. Of course it matters. It’s absurd to suggest otherwise and, frankly, coming from an alleged attorney, it’s worse than absurd
    Are programmers macro-economists? Do they understand the reasoning why the Founding Fathers inserted the Patent Clause into the U.S. Constitution? The fact that a programmer is impacted by the law doesn’t necessarily mean that a programmer’s opinion as to the law should be given a lot of weight. Should we be giving the opinion of automobile mechanics or car salesmen a lot of weight when discussing whether we should change the law to increase required car mileage or safety features? While they may have something valuable to add to the discussion, it isn’t a given.

    Most people who write those instructions think the answer is “no”, and many of those hard-working people have articulated reasons supporting that view.
    Maybe in your echo chamber they have — but most people I know are quite offended when someone takes something they created and passes it off as their own without compensating the original creator.

    The other issue is whether patents that functionally claim the communication of certain type of information over pre-existing communication lines implicate the First Amendment. This also seems to be a straightforward and it’s surprising to see such resistance to it.
    it seems straightforward since you apparently have little clue as to what the First Amendment does and does not protect. If Mayer’s treatment of the law had any viability, it would be argued by defendants all the time and it would get far more attention by other Federal Judges — the fact that it hasn’t should be a big clue.

    Let me clue you into something else. While some people (perhaps the same people you hang with) are perfectly fine writing software just for fun, there are a LOT of people who write software for a living. For those people, being able to profit from their work product is important. However, it is extremely difficult to profit from their work product if it can be easily copied, which is the end result of a regime in which software patents do not exist.

    If the software industry in the United States was so harmed by patents over the past 35 years, why haven’t countries (with far less patent protection for software) grown into software powerhouses? Other countries have overtaken the US in many other industries, why hasn’t software development moved elsewhere?

  35. Also Curious October 6, 2016 6:12 pm

    Gene Quinn: ” who cares what people who write code think? Does anyone care what the person speeding thinks about the speed limit? No! ”

    Code writers are like speeders who break the law? Please, Gene, don’t continue to embarass yourself.

    “Well patents don’t protect code.”

    What’s “configuring” those “configured” configurable computers if it’s not code? I think you’re being pedantic here and avoiding the issue. Software patents protect software and they do so at a very high level, i.e., at the level of functionality. If I write code that imparts to my computer the function recited in your “computer with this function” claim, then I am infringing your claim. Saying that your claim “doesn’t protect code” seems to be an attempt to divert attention from the issue being discussed.

    By the way, to the extent that the patent system doesn’t “protect code”, would you like to explain why that is the case? What’s the legal and policy reasoning behind that omission? Code is useful, isn’t it? And what happens when the code is printed on a medium? I can protect it then, right? Why does printing the code on a medium make such a big difference?

    “When it comes to patent law I know this stuff inside and out. You would do well to learn from what I say.”

    Moving right along ….

    “The First Amendment protects individuals from government suppression of expression. Innovations are not a form of expression.”

    Whether a claimed “innovation” is a “form of expression” depends on details of the innovation being claimed. But first it’s important to recognize that the First Amendment exists not just to protect “freedom of expression” (e.g., my political opinions) but the freedom to communicate any kind of information or idea, whether that information is “expressive” or not. This is why copyright law early on ran into the First Amendment with results that are well documented.

    Now, returning to your earlier statement that “innovations are not a form of expression”, you are badly mischaracterizing Mayer’s position (which I share). The issue is, first, **whether certain types of patent claims raise First Amendment problems.** It seems impossible to argue against this proposition. Consider a claim: “A method, comprising telling a person how to solve a problem” or “A method, comprising determining that a legal position is incorrect and informing another person of said incorrectness.” Of course there’s a First Amendment issue there! Then consider the claims that are closer to the context of Mayer’s argument, where the claims again related to communication of or evaluation of information but differ only in the recitation of the use of a computer. Computers are well-known tools for communicating, after all. Why would their recitation remove the First Amendment problem?

  36. Also Curious October 6, 2016 6:24 pm

    Curious: ” If Mayer’s treatment of the law had any viability, it would be argued by defendants all the time and it would get far more attention by other Federal Judges”

    That is not an argument against the viability of a legal theory. I think we’re seeing Judge Mayer’s concurrence getting plenty of attention already. Also, the recognition that the patent system can’t (or shouldn’t) be used to restrict the flow of information and knowledge in prior art contexts (e.g., contexts such as “over a network” or “in a hospital”) is not new.

    Also, you need to remember that this huge surge in the desire to grab patent rights related to information processing using existing technology (programmable computers; the Internet; smart phones) is a relatively recent phenomenon. The first signs that the patent legal system was ready to address the serious problems it was facing was Metabolite Labs. That wasn’t very long ago. I can certainly remember the First Amendment coming up in discussions of that case, even if they didn’t make it into the legal briefs or resulting opinions.

  37. ART October 6, 2016 6:26 pm

    >>If you apply a patent law to a new field, such as software, you have to provide evidence that it is actually beneficial, and the benefits outweight the costs. This is a simple rationale.
    >Let’s see. The Supreme Court held that software was patentable in 1981.

    As far as I know Courts do not take decisions based on economical effects of law, scope of patent law is a matter for the legislator as courts cannot consider an economic rationale. Machlup 58 has compiled everything that still reflects the state of the art in economics. As the judicial profession is unable to define what does not constitute an invention it is an easy scheme to expand patentable subject matter by equivalence arguments in courts. Very much like Grimm’s Sweet porridge tale it leads to gradual expansion and reversal of the burden of proof. I would argue that the scope of patentability should be strictly based on what the legislator intended when the law was made. In the case of doubt don’t make it patentable. It is questionable to expand patentable subject matter without legislative decision taking because Courts are not competent to apply economical rationales for the use of an incentive system.

  38. Curious October 6, 2016 6:28 pm

    Of course there’s a First Amendment issue there!
    Methinks you really don’t know what the First Amendment protects against. Let me give you a hint — if Gene chose to delete all of your posts, you wouldn’t have a First Amendment claim against Gene. Gene, as a private entity, is well within his rights to censor you on this blog for any basis whatsoever.

    Also, your straw man hypothetical claim would never be (and has never been) patentable. You need to make a better analogy.

    Software patents protect software and they do so at a very high level, i.e., at the level of functionality.
    No. Patents related to software protect configured machines, machines performing functions, and machine components. A claim to an new type of clock doesn’t protect the blueprint or the operation sheets used to manufacture the clock. You are confusing what many people consider to be software (i.e., the written instructions), which is not patentable, with the actual manifestation of the software in a machine, which is patentable. While one could be considered an abstract idea, the other is certainly not.

  39. Also Curious October 6, 2016 6:36 pm

    Curious: “Are programmers macro-economists?”

    Some of them surely are. Are you a macro-economist?

    “Do they understand the reasoning why the Founding Fathers inserted the Patent Clause into the U.S. Constitution?”

    Well, the clause says “promoting progress in the useful arts.” But it doesn’t say that Congress has to hand out a patent to everyone who can run to the patent office with a sentence describing a “new” context in which to communicate or “process” data “with a computer.”

    The “Founding Fathers” argument doesn’t really get you anywhere because neither Mayer nor most of the programmers who oppose software patents are opposed to patents on everything. The issues are more nuanced than “patents for everything” versus “patents for nothing.”

  40. Curious October 6, 2016 6:36 pm

    It is questionable to expand patentable subject matter without legislative decision taking because Courts are not competent to apply economical rationales for the use of an incentive system.
    In 1972, the Supreme Court stated the following in Diamond v. Chakrabarty:
    Congress replaced the word “art” with “process,” but otherwise left Jefferson’s language intact. The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to “include anything under the sun that is made by man.” S Rep. No 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1979, 82d Cong., 2d Sess., 6 (1952)

    I would argue that the scope of patentability should be strictly based on what the legislator intended when the law was made.
    You do realize that patents, by definition, are directed to NEW subject matter. Do we need Congressional approval for every patent? Congress (and nobody for that matter) has perfect foresight to predict the technologies of the future.

    Moreover, the arguments for a strong patent system are technology-independent.

  41. Curious October 6, 2016 6:40 pm

    Some of them surely are. Are you a macro-economist?
    Is that relevant? Are the ones that are making these anti-patent statements macro-economists? Thanks for the non-sequitur.

    The issues are more nuanced than “patents for everything” versus “patents for nothing.”
    The arguments against patents for software equally apply to patents for anything. Unfortunately, the software-exceptionalists don’t realize this because of their software focus.

  42. ART October 6, 2016 6:47 pm

    “If the software industry in the United States was so harmed by patents over the past 35 years, why haven’t countries (with far less patent protection for software) grown into software powerhouses? Other countries have overtaken the US in many other industries, why hasn’t software development moved elsewhere?”

    a) Patents are per market/jurisdiction. As a European software developer you also want to ship your software to the US where a non-practising entity will take away your business, take you to the scandalous forum shopping courts of Texas. The key argument may be, there can only be a patent/invention if it is not new, new being de facto no pre-existing invention. Well, patenting and sw development are completely distinct spheres of business operations. Patents get awarded to the most trivial aspect of software development, not to the rocket science. No software developer reads patents and if so patents describe exactly what we know in more creative wording. This is why we “reinvent” inventions by actual implementations only to learn that someone patented previously the most laughable challenge of the software development task, where no software developer – unlike this unjust anti-free market instrument: patent law and the lawyers and bureaucrats who benefit from the system – cares who invented it first. Priority of “software inventions” is unimportant to developers as software inventions are ubiquitous, not scarce in their profession. And you know how software companies double their patents, by hiring more lawyers. As “software inventions” are ubiquitous in the software developer profession it does not make sense to apply an incentive system (=patent law) to award them and generate more than under laissez-faire.
    b) Software industries are huge outside the US.

  43. Also Curious October 6, 2016 7:02 pm

    Curious: “Gene, as a private entity, is well within his rights to censor you on this blog for any basis whatsoever.”

    This is completely non-responsive to the point I made. We’re not talking about “censorship”. We’re talking about the government giving exclusive rights to individuals or corporations (or even itself!) that have the effect of restricting the ability of the public — everyone! — to freely use existing communications technology for its intended purpose.

    ” your straw man hypothetical claim would never be (and has never been) patentable”

    The claims I presented are not “strawman”. They are simple hypotheticals designed to illustrate the point — which is unrebutted — that patents can absolutely raise First Amendment issues. Moreover, close watchers of the system will recognize that “display” claims indistinguishable from those I described have in fact been granted. Can applicants make their claims more “complicated” by using more words? They can and will. Can applicants make the “content” of the communicated knowledge more detailed? Yes, but the First Amendment doesn’t care about that detail (neither does 101, by the way). The First Amendment is focused on the fact that the information is being prevented from flowing from one citizen to another.

    “Patents related to software protect configured machines”

    Just to be clear, there are two related issues that we should be careful to keep separate. The First Amendment arguments stand or fall on their own. In other words, when the dust settles, we can have some software patents but some others may be ineligible because of the First.

    With respect to “software-configured machines”, you admit that software “could be considered abstract.” Given that fact, then those “configured” machines of yours could easily be considered ineligible for patenting and Mayer has set forth some great reasons for doing so. The most straightforward reason is that we shouldn’t be allowing the re-panting of configurable prior art machines that are claimed in terms of “new functions” that are imparted by the ineligible subject matter. That’s effectively allowing the ineligible subject matter to be protected. You can feel argue that this shouldn’t apply to computers (it definitely applies to just about every other communication device) but the logic is baked into the US patent system and every other patent system in the world.

  44. Also Curious October 6, 2016 7:12 pm

    Curious: “The arguments against patents for software equally apply to patents for anything”

    Is this what you consider an “A-game” argument? Arguments against software patents are arguments against software patents. The arguments Mayer is presenting don’t apply to every other “thing” that’s out there. I could just as easily say that your arguments in defense of software patents equally apply to arguments arguments in defense of patents on new methods of raping children.

    If you don’t want to discuss the issues with software patents, then just say so. Just tell everyone that they’re wrong, you’re the smartest person in the room and people should pay attention to you. That appears to be what qualifies as “A-game” around here.

  45. Also Curious October 6, 2016 7:20 pm

    ART: “I would argue that the scope of patentability should be strictly based on what the legislator intended when the law was made. In the case of doubt don’t make it patentable. It is questionable to expand patentable subject matter without legislative decision taking because Courts are not competent to apply economical rationales for the use of an incentive system.”

    I would say that courts should at least be extremely cautious when issuing holdings that can reasonably be expected to greatly expand the playing field. The reason why is obvious: patents can be obtained quickly, particularly when examination strategies and systems aren’t well-prepared. The granted patents then have fairly lengthy terms and if the gates are opened wide, the ensuing flood will be forceful (leading to hundreds of thousands of questionable patents) and the clean up will be difficult.

  46. Gene Quinn October 6, 2016 7:23 pm

    Also curious-

    You said: “Code writers are like speeders who break the law? Please, Gene, don’t continue to embarass yourself.”

    It should be self evident, but “please, Gene, don’t continue to embarrass yourself” is not a substantive response. If you want to continue to comment her you will substantively respond or you won’t comment, period. That brand of asinine, juvenile banter is beneath this forum. You either keep up substantively or leave.

    Of course, I am correct. What a coder thinks about the law is irrelevant. It is the law. Why you cannot understand a simple topic is a mystery and suggests you are not interested in a serious discussion.

    -Gene

  47. Gene Quinn October 6, 2016 7:32 pm

    Curious @43-

    Please provide a citation (or quote) to the language of the First Amendment that guarantees individuals the right to infringe on patented technology.

    Your problem is you don’t understand the patent laws. If a patent were issued that prevented the free use of existing technology that was already in the public domain or was already previously patented but not yet in the public domain there are plenty of vehicles to bring that to the attention of the USPTO or courts. IPR, PGR, CBM, ex parte reexamination, and patent litigation. So there would NEVER be a First Amendment problem for what you are upset about. There is recourse built into the system to address what you SAY you are upset about.

    Of course, we all know that you are upset about the patenting of software, period. You seem to operate under the ridiculous notion that all software is freely available to be used by anyone. That is legally incorrect and it doesn’t matter what coders think. The law is the law.

    If you want to continue to discuss the law on this LEGAL forum please do something to become more informed. Your comments demonstrate an acute lack of understanding. In fact, your comments really support my position and the position of the regulars in this thread. You just don’t know enough to appreciate that.

    -Gene

  48. Curious October 6, 2016 8:25 pm

    As a European software developer you also want to ship your software to the US where a non-practising entity will take away your business, take you to the scandalous forum shopping courts of Texas.
    Many European software companies get US Patents. Your comment about “non-practising entity will take away your business” doesn’t make sense. NPEs don’t take away business. Actually, it is in their best interests for the companies they sue/license to be very successful.

    Patents get awarded to the most trivial aspect of software development, not to the rocket science.
    Patents get awarded to incremental improvements in ALL fields. BTW — “rocket science” is overrated. Moreover, the improvements in that field are directed to things one likely wouldn’t associate with rocket science.

    Can applicants make their claims more “complicated” by using more words? They can and will.
    Good claims are short — not long.

    The First Amendment arguments stand or fall on their own. In other words, when the dust settles, we can have some software patents but some others may be ineligible because of the First.
    They’ll fall for reasons I already discussed above.

    Given that fact, then those “configured” machines of yours could easily be considered ineligible for patenting and Mayer has set forth some great reasons for doing so.
    Big difference between a configured machine and an abstract idea. BTW — Mayer was just parroting the positions of the EFF, which is hardly a neutral party.

    Arguments against software patents are arguments against software patents
    I know their arguments. Do you? I also know why their arguments apply to technology other than software.

    If you don’t want to discuss the issues with software patents, then just say so.
    I’m still here, and I’ve been here shutting up people like you (on this blog) for years. I doubt you’ll be able to articulate your side’s positions any better than those that preceded you. However, you are welcome to try.

    I would say that courts should at least be extremely cautious when issuing holdings that can reasonably be expected to greatly expand the playing field.
    Oh yes — when a new technology reaches the Courts, they should err on the side of not protecting that technology. That is the best way to protect and encourage innovation. /sarcasm off

    The reason why is obvious: patents can be obtained quickly, particularly when examination strategies and systems aren’t well-prepared.
    Never attempted to get a patent, have you? Getting a patent in the computer arts is considerably more difficult than other fields. Getting a business method patent is even harder (and has been for at least a decade). However, you have no clue about this.

    One difference between you all and me is that I get my facts first hand or from sophisticated people with considerable knowledge about the issues, while you get your information fifth or sixth hand from people with little experience or knowledge about what they are opining about. It is akin to a practicing evolutionary biologist discussing The Origin of Species with a preacher (sorry, you don’t get to be the evolutionary biologist).

  49. Also Curious October 6, 2016 8:33 pm

    “It should be self evident, but “please, Gene, don’t continue to embarrass yourself” is not a substantive response.”

    With all due respect, Gene, in response to my correct observation that it certainly does (and should) matter what skilled artisans (i.e., coders) think about the merits of patenting software, you compared coders to “speeders”. Perhaps you didn’t understand what was being discussed but I note that you didn’t compare “infringing coders” to speeders. You chose instead to smear all coders. If you made a mistake, you can apologize and retract or not. It’s up to you.

    “What a coder thinks about the law is irrelevant. It is the law.”

    Again, the views of coders are not irrelevant at all because this “law” you’re referring to is deeply in flux and it goes without saying that the views of the targeted field are going to be taken into consideration. Believe it or not, the views of “drivers” have informed the laws regarding speed limits, as well as how those limits are enforced.

    “Please provide a citation (or quote) to the language of the First Amendment that guarantees individuals the right to infringe on patented technology.”

    The First Amendment puts a limit on the scope of Federal patent laws, Gene. This isn’t a difficult concept and I find it odd that you would try to make it difficult. Nobody needs to find a “cite” for every specific act that the First Amendment prohibits or protects to make a reasonable argument about whether or not the Amendment applies to that specific act. That’s not how our legal system works. We’re both very experienced patent attorneys. This “find the cite” nonsense doesn’t fool anybody. Either you can address the straightforward arguments and hypotheticals I presented to you directly, or you can avoid them and hurl insults at me instead. It’s your choice.

    “There is recourse built into the system to address what you SAY you are upset about.”

    Again, you are avoiding the issue. The First Amendment problems with the claims being discussed don’t disappear cause “there are ways to get rid of the claims.” If my city passes a law that says black people can’t talk about cats, the First Amendment problem doesn’t cease to exist because I have an equal rights challenge available to me, or because the law was passed in disregard of some city legislative rule.

    By the way, I made a mistake up thread when I characterized you as “drunk.” You’re not “drunk”. I apologize for that. My mistake.

  50. Also Curious October 6, 2016 8:53 pm

    Curious: “I’ve been here shutting up people like you (on this blog) for years.”

    People like me? What’s that supposed to mean?

    “Good claims are short — not long.”

    That depends on what’s being claimed and what the obstacles are that need to be overcome. As many courts have observed, a long overly written claim can, for example, obscure obviousness problems and make something un-innovative appear complicated.

    “One difference between you all and me is that I get my facts first hand or from sophisticated people with considerable knowledge about the issues”

    You have no idea where I get my facts from so how can you make this insulting assertion? Is this an “A-game” argument? I’m a patent attorney. I’ve worked with the best patent attorneys in the biz and with plenty of incredibly sophisticated clients. Heck, I’ve taught them.

    “Getting a patent in the computer arts is considerably more difficult than other fields. Getting a business method patent is even harder (and has been for at least a decade). ”

    That may be true in some instances but it hasn’t always been true. It’s more true now because measures have been put in place to fix the exact PTO-flooding problems that ART and I were discussing.

    “I also know why their arguments apply to technology other than software.”

    That’s a very different assertion from they one you originally made. Nobody doubts that some of the arguments made against software patents can apply to “other technology.” In some cases, the anti-software patent arguments were first made in the context of “other technology.”

    But you said “The arguments against patents for software equally apply to patents for anything”. And that’s just a ridiculous statement (unless the argument you have in mind is equally ridiculous). Take the First Amendment issue that we’re discussing, for instance. Certainly the First Amendment doesn’t apply to “patents for anything”, unless you want to get extremely … creative. But that’s really avoiding the issue, isn’t it?

  51. Curious October 6, 2016 9:04 pm

    We’re both very experienced patent attorneys.
    LOL

    This “find the cite” nonsense doesn’t fool anybody.
    Keep saying that over and over again if you find comfort in it. Patent laws and the First Amendment have been around for over two hundred years in the United States. If you cannot find a cite, then I think your argument has problems.

    The First Amendment problems with the claims being discussed don’t disappear cause “there are ways to get rid of the claims.”
    LOL — anytime you hang your hat on the First Amendment, your credibility takes yet another hit. It is a bad argument that only a semi-retired judge with little to lose and an obvious anti-patent bent would give the time of day to. It says a lot when Judge Dyk, who never met a patent he didn’t think was invalid, wouldn’t sign onto Mayer’s opinion.

  52. Also Curious October 6, 2016 9:10 pm

    Gene: “You seem to operate under the ridiculous notion that all software is freely available to be used by anyone.”

    What is it called when, instead of addressing the issues, you create a fictional version of your adversary and attack that instead? Is there a word for that?

    I never said “all software is freely available to be used by anyone”. Mayer didn’t say that either. What I did say is written upthread.

    The issue under discussion is whether *the patent system* is the appropriate system for protecting software. People disagree about the answer. People who disagree with you, Gene, are not necessarily “uninformed”. Underestimating your opponent is a real rookie move.

  53. Also Curious October 6, 2016 9:25 pm

    Curious: “Patent laws and the First Amendment have been around for over two hundred years in the United States.”

    No doubt about that. But the types of claims that are regularly being granted and asserted today were never the norm until recently. This is what led Scalia to question why the PTO hadn’t become clogged with horse whisperer method claims if the patentee’s expansive view of eligible subject matter were correct.

    More importantly (and again): the absence of a legal argument in the case law doesn’t mean that the argument isn’t a good one or a winning one. Every attorney should know this! The best attorneys certainly do.

  54. Curious October 6, 2016 9:30 pm

    People like me? What’s that supposed to mean?
    Figure it out.

    That depends on what’s being claimed and what the obstacles are that need to be overcome. As many courts have observed, a long overly written claim can, for example, obscure obviousness problems and make something un-innovative appear complicated.
    A long overly written claim is much easier to get around. Every word one adds to a claim is an issue to be raised with regarding to indefiniteness, claim construction, and infringement. Ask any patent litigator (who is asserting a patent) whether they want to assert a claim that is short or long. Long claims create much more problems than they solve.

    you have no idea where I get my facts from so how can you make this insulting assertion?
    Thin skinned, aren’t we? You can clear up the issue, by explaining what facts you are relying upon and where you’ve obtained those facts.

    I’m a patent attorney. I’ve worked with the best patent attorneys in the biz and with plenty of incredibly sophisticated clients. Heck, I’ve taught them.
    You could have fooled me — seriously.

    That may be true in some instances but it hasn’t always been true.
    When was that?

    Take the First Amendment issue that we’re discussing, for instance.
    It also doesn’t apply to the argument that software engineers are earth’s new gods and anything that hinders software engineers is an affront to the heavens. However, I tend to ignore crackpot arguments when I make my comments.

    unless you want to get extremely … creative
    Extremely creative — that’s a good way of describing the First Amendment argument.

    But that’s really avoiding the issue, isn’t it?
    If you want to talk about the anti-software patent arguments, then start presenting them.

    By the way, Curious, why do you believe that a government created handout in the form of a patent that restrict’s everyone’s ability to communicate information is a “private action” falling outside the First Amendment?
    I missed this one. Limitations directed to information useful and intelligible only to the human mind will likely not be given patentable weight under the “printed matter” line of cases. If all one is doing is communicating information from one person to another, it isn’t going to be patentable so this First Amendment argument falls flat on its face.

  55. Curious October 6, 2016 9:48 pm

    More importantly (and again): the absence of a legal argument in the case law doesn’t mean that the argument isn’t a good one or a winning one. Every attorney should know this! The best attorneys certainly do.
    There is probably a good reason why arguments that could have been presented for decades (or even much longer) haven’t been. I’ve seen the types of arguments presented by the attorneys for patent defendants, and they aren’t afraid to argue anything and everything. If the First Amendment arguments were even marginally viable, they would have been made many times before and already addressed (one way or another) by the Federal Circuit.

    But the types of claims that are regularly being granted and asserted today were never the norm until recently.
    Martin Goetz is attributed (at least by Gene) for obtaining the first software patent (US Patent No. 3,380,029), which was filed on April 9, 1965 (issued 3 years later). Diamond v. Diehr was 35 years ago. Even State Street Bank was 18 years ago. Amazon’s infamous (to some) “1-click patent” will expire in less than a year. I’m not sure what you mean by “recently.”

  56. John M White October 6, 2016 10:36 pm

    No section of the “Bill of Rights” has anything to do with or limits patent rights. That fundamental truth isn’t altered by judge babble, regardless of the court or the judge. Really – “A game” – hardly. Also, Latin has to do with the origin of a word nowadays; meaning is rarely carried forward, and only indirectly at that, if at all. Hence, a modern dictionary wins. Everytime.

  57. Also Curious October 6, 2016 11:28 pm

    “Thin skinned, aren’t we”

    If I was thin-skinned, I don’t think I’d be having this increasingly strange discussion with you about the First Amendment. I’ve lost track of the insults, frankly. Maybe Gene gives you a long leash because of your alleged “shutting people up” skills?

    “A long overly written claim is much easier to get around”

    Again: I’m a patent attorney. I’ve been on all sides of this. A lengthy claim does not mean “it’s much easier to get around”. In part, that’s because drafters are permitted to extensively describe the prior art, and in part it’s because a good lawyer (like any good writer) can manipulate the language to make simple things appear more complicated than they are at first glance.

    “Long claims create much more problems than they solve.”

    They can certainly create financial problems for accused infringers. And that’s an excellent problem to create if you haven’t solved a patentable problem. Like I said, I’ve been on all sides of this issue.

    “Extremely creative — that’s a good way of describing the First Amendment argument.”

    I dont find it particularly creative. It’s a natural response to the types of claims being asserted.

    “I’m not sure what you mean by “recently.”

    I mean exactly what I said. The patent system is old but the regular assertion of claims that limit the types of information that people can communicate over existing communication channels is a relatively recent phenomenon.

    “Amazon’s infamous (to some) “1-click patent” will expire in less than a year.”

    That was one of the first software patents that raised the alarm bells for a lot of people because it received a ton of media attention. There’s been a lot more close attention to the system since then.

    You asked me when in the past it was relatively easy to obtain a biz method patent. The answer (among many) is 10 years ago. That’s when the office was making few 101 rejections and rubber stamping all kinds “automated” method claims. I spent years looking at file histories of these claims for clients. The PTO was inept. This, again, is part of the reason for the intense focus on such claims now.

    ” If the First Amendment arguments were even marginally viable, they would have been made many times before ”

    You keep repeating this same “argument.” This isn’t how the law works. Great attorneys make powerful winning arguments that haven’t been explicitly addressed before all the time.

    “If all one is doing is communicating information from one person to another, it isn’t going to be patentable so this First Amendment argument falls flat on its face”

    Once again: the fact that a particular patent claim (or type of claim) presents a First Amendment issue isn’t changed by the fact that the claim might have some other additional defect. Furthermore, claims can restrict the communication of less than “all information” and still run afoul of the First. The First Amendment (like subject matter eligibility, in general) isn’t concerned about the breadth of the information content being restricted. It’s the fact that *any* information is being restricted from communication over an existing channel designed for information that triggers the First.

    “Limitations directed to information useful and intelligible only to the human mind will likely not be given patentable weight under the “printed matter” line of cases.”

    Can you explain why that is the case? It’s not in the statutes. Some judge must have made it up. In other contexts that would seem to be very troubling for you, but now you’re invoking it to avoid this First Amendment issue. Can you please explain why information (and it doesn’t have to be printed, by the way) is excluded from eligibility? If you can’t explain the origin of the doctrine, maybe Gene can explain it to everyone.

  58. Anon October 7, 2016 7:12 am

    I have not had a chance to read the string of comments above, but just scrolling quickly through them, I would hazard a guess that “Also Curious” is using a fake email address.

    Perhaps this weekend I will unwind the dialogue. Until then, enjoy the rhetorical flourishes, one and all.

  59. Night Writer October 7, 2016 8:41 am

    @4 Curious

    I voted for Obama twice. But, let’s not get into politics. Let’s look at the facts of who he appointed and their opinions. The fact is that the appointments after O’Malley form the core of the group that have invalidated so many patents. There was recently an article that looked at this.

    1) Obama’s stacking started based on Google selections started after O’Malley.
    2) Chen is an outlier. He appeared to be very anti-patent at the USPTO, but changed once he was appointed.
    3) Stoll is a very poor choice compared to what we could have gotten. Taranto has many outrageous opinions (e.g., anything that is merely automating the process of think is per se ineligible). Renya admitted he knew nothing of patents or science when appointed. Hughes is another person that was very anti-patent when appointed.

    Anyway have to wait for another day to finish this. Too many interviews today.

    Anyway, too busy this morning to finish this.

  60. Curious October 7, 2016 9:40 am

    You asked me when in the past it was relatively easy to obtain a biz method patent. The answer (among many) is 10 years ago. That’s when the office was making few 101 rejections and rubber stamping all kinds “automated” method claims.
    Rubber stamping 10 years ago?? LOL. I’ve been doing this for twice as long and handled much more than a thousand applications at the USPTO, and I’ve never come across the USPTO rubber stamping anything. However, I guess if you are getting your information from the likes of Mark Lemley (like judge Mayer), perhaps you might believe that.

    Once again: the fact that a particular patent claim (or type of claim) presents a First Amendment issue isn’t changed by the fact that the claim might have some other additional defect.
    Wrong. If the claim has defects, it doesn’t issue. If the patent application doesn’t mature into a patent, then the First Amendment issue is not ripe. You claim to be an attorney — you do understand what ripeness means? What other problems to we have with your First Amendment argument. Let’s see — hmm, is First Amendment listed as a defense under 35 USC 282(b)? Under 35 USC 261, a patent shall have the attributes of personal property. How does personal property violate the First Amendment? How does the legal use of one’s personal property violate the First Amendment?

    It’s the fact that *any* information is being restricted from communication over an existing channel designed for information that triggers the First.
    You do realize that private parties can restrict communication over existing channels? Really, you are a lawyer? Did you take Constitutional Law?

    Can you explain why that is the case? It’s not in the statutes. Some judge must have made it up.
    I think In re DiStefano has a discussion on the history of the printed matter doctrine. You should read it. As it is applied today, the printed matter doctrine serves to prevent patents from issuing on differences (e.g., printed matter) that is not functionally related to the rest of the invention. For example, slapping instructions on the front door of a refrigerator doesn’t allow you to patent the old refrigerator with new instructions. If all you are claiming is information consumed solely by humans, it isn’t going to be patented. As such, your hypothetical doesn’t hold water.

  61. Anon October 7, 2016 10:01 am

    Starting reading through the chain and the first “Also Curious” post is as offensive and overly-but-in-error-self-assured as any post by Malcolm Mooney had ever posted at “that other Blog.”

    His “argument by fiat, laced with wild and off-point ad hominem” is rather distinctive.

    I will be skipping over the rest of his posts on this thread.

  62. Gene Quinn October 7, 2016 11:33 am

    Also Curious-

    Impossible to believe you are a patent attorney. God help your clients if you are. You know absolutely nothing about patent law!

    You say: “A lengthy claim does not mean it’s much easier to get around.”

    REPLY: You are wrong. Of course a long claim is easier to get around. That is axiomatic. Long claims contain more words, more words contain more limitations. More limitations make it more difficult to prove literal infringement. If you were a patent attorney you’d know that.

    As for your insisting that the First Amendment applies to innovations, you are wrong. If you were a patent attorney you’d know that. The First Amendment protects expression. Patents do not protect expression, period. End of inquiry.

    Your comments demonstrate that you are entirely unfamiliar with the law. You are not an attorney and you know nothing about patents or patent law. You are just a huckster using a fake name and a fake e-mail who is trying to engage in a desperate attempt to bolster your own incorrect views by claiming some kind of familiarity with the law that you clearly do not possess.

    -Gene

  63. Anon October 7, 2016 11:52 am

    Gene,

    Over at PatentDocs, Dr. Noonan challenged this same** individual to a “battle of transperancies.”

    As this person gives a bad name to pseudo- and anonymous posters, perhaps you can buy some pizza for the guys and gals and the local university coffee shop over the weekend and automatically screen out the “non-transparent” “hucksters” who have to hide behind such false credentials.

    It is one thing to protect one’s identity (and by being anonymous, force the focus to the content of the post, as opposed to any imported and borrowed “name” authority), and quite another to snipe from such false credentials as fake email addresses.

    ** as I mentioned, the stench of this person’s “style” (and I use that term extremely loosely) is rather unmistakeable.

  64. Gene Quinn October 7, 2016 12:14 pm

    Anon-

    Clearly “Also Curious” is not an attorney. He is lying. We all know he is lying. His leash has been tightened. From this point he either plays it perfectly straight or he is gone.

    Up to this point, however, what he has done is played the part of the stooge very well. While he thinks he has demonstrated us wrong, what he has done is demonstrate that we are 100% correct.

    -Gene

  65. Eric Berend October 7, 2016 2:59 pm

    @ 13., “ART”:
    “If you apply a patent law to a new field, such as software, you have to provide evidence that it is actually beneficial, and the benefits outweight the costs. This is a simple rationale.”

    It is also, flat out wrong. You obfuscate almost as severely as has Judge Mayer. Gene’s criticisms are genuine, whether you disagree or not.

    As to the absurdity of your comment in a forum regularly read by some very bright legal minds, to the effect that the doctrine of ‘a balancing of the equities’ should somehow overcome the ‘plain meaning’ canon of construction; which has been settled at the Federal level for quite some time, to wit:

    Tennessee Valley Authority v. Hiram Hill et al., or TVA v. Hill, 437 U.S. 153 (1978).

  66. step back October 7, 2016 3:22 pm

    First came Clarence the Clown and the Alice storm.
    Now a new creepy clown lurks in the high courts.
    Obfuscating and confusinating until some people actually start believing him.
    This is scary.

    If you see something (creepy lurky clowns).
    Say something (call them out).

    These creeps don’t like a spotlight shining on the absurdity of their positions.

    http://patentu.blogspot.com/2016/10/creepy-clowns-lurking-in-fed.html

  67. JTS October 7, 2016 7:36 pm

    Mayer’s concurrence is irresponsible. Not because it is wrong; its just a solo concurrence and has no precedential significance. The irresponsibility is his failure, as a Federal Judge, to help shape or even discuss the law in any way that would help address some of the legitimate problems he raises. Given a rare and important opportunity, instead of participating in the evolution of the law in a meaningful way, as judges should, Mayer has mounted a soapbox. He’s like a person at a party who just mutters to himself or herself. Mayer’s crime wasn’t being wrong, it was his waste of an opportunity to say something helpful. There are lots of ways that the problems of software patents could be addressed through the existing body of patent law. Instead of offering constructive guidance within the framework of legal reality, Mayer chose to use his precious federal office as a venue for expressing his personal opinions. There’s no harm in his opinions. That’s all they are. But there is harm when opportunity for improving the law is missed. We’re all the poorer because of a de facto empty seat at the CAFC.

  68. Anon October 7, 2016 8:26 pm

    JTS,

    A federal judge in his position, using that forum, to express his opinions IS wrong.

    That is not his role as a judge.

    Not only that, he pledges his “opinion” to some of the worst anti-software patent tripe out there that simply does not jibe with existing controlling law or even the facts as pertain to that Art unit.

    He should be censured for taking such a frolic.

  69. Ben M-Clarke October 8, 2016 5:06 am

    I completely agree with this argument posed by Gene. I have to respectfully disagree with the anti-patent and anti-software patent crowd. If software patents become ineligible, there’s nothing stopping the big companies from stealing the innovations of small startups. Without patent protection, where’s the incentive to innovate? At the end of the day, innovation is about building wealth. It’s nice to think of “helping” the world (which is what the open-source community likes to think), but – in reality – the only thing that matters in business is building wealth and being rewarded for the efforts of your labour. The patent system is the only real way to do this, without having to spend millions of dollars on building a brand.

    We should be looking to strengthen the private property rights afforded by the patent system; not weaken them.

  70. Maurice Ross October 8, 2016 8:29 am

    As usual you are blinded by pro patent bias. Judge Mayer has this exactly right. You represent the typical self serving approach of patent bar members whose elitism blinds them to how law is supposed to work in a democracy. Thank goodness for Judge Mayer who is teaching the patent bar a lesson it needs to learn.

  71. Prizzi's Glory October 8, 2016 10:09 am

    Mandatory retirement for federal judges at 65 would solve this particular problem. Mayer is hardly the only senior status judge that spews nonsense from the bench.

  72. step back October 8, 2016 10:53 am

    Wait,

    What does age have to do with this?
    You could be a 25 year old college graduate and still have a belief system built around brainless, anti-science medieval gibberish.

  73. Anon October 8, 2016 11:18 am

    step back,

    I agree – this is not an age issue, and mandatory retirement is not an answer.

    Mayer’s age is a mere coincidence, and it is his misuse of the bench as his personal bully pulpit that is the issue (which could appear at any age).

  74. Jacques Dulin October 8, 2016 2:19 pm

    50+
    Article 1, Section 8 is the enabling clause that expressed a very populist notion that social power in the new nation is to be based on the merit value of creativity, very unlike Europe where social power was based on title and land.
    Clause 8 is the basis for both the patent and copyright systems. As for value of patents, it is the world’s greatest incentive system, and has spread to 150 other countries. And the founders understood the clear distinction between patents and copyrights.
    Couple of other comments: 15+ years ago, SIPO refused what it characterized as software claims in an application I was prosecuting. India had just then amended its patent law to include software patents. That was pointed out to SIPO in my response. After a long silence, over 6 months (unusual for SIPO at the time) our case was allowed.
    Re: hardware vs software implementation of machines (ask yourself which machine is being instructed to do what – code vs a PLC), do any of you recall the German totally mechanical integrators of the 1950s? Trace a curve with a pointer (cursor) that was slidably mounted on a pair of rods oriented on an X-Y axis, and read the incrementally increasing area under the curve on a dial.
    Sorry, I dont recall the name of it or maker, but possibly Dietzgen. How is a software implemented system analog different from the gear and cam drive system of that machine? Babbage’s Difference engine? The Jacquard weaving machine system of linked warp lifter plates?
    So, in 1800, you know about Jacquard’s plate system, providing a new string of linked plates with differently placed holes to control the loom to make a. Different pattern, indeed to weave a picture (say of a loom in action, at 4000 threads per cm). Is the new string copywriteable, or patentable as an inegral part of the machine.
    I enjoy the diiscussion, just adding a few tidbits of raw meat for thought.

  75. Prizzi's Glory October 8, 2016 2:22 pm

    jng@7 describes one of the symptoms of a senior status judge that is loosing it.

    What is most telling about Mayer is that he is apparently too chicken sh** to float his nonsense in oral arguments…

    Nonsense in written opinions is another symptoms.

    Some people can function until well into the 90s and occasionally beyond (so called super-ages). Others become more and more mentally inflexible and have difficulty in adapting when new concepts or situations present themselves.

    After 65 a super-ager judge could go back to representing clients. A non super-ager should not serve as a judge after 65.

  76. step back October 8, 2016 3:40 pm

    Anon @71

    Usually we agree.
    But IMHO this is not merely bully pulpit stuff.

    This is what Judge Mayer truly believes.
    This is what informs all his patent eligibility decisions.

    This is probably what all the SCOTeti believe and what informs all their patent eligibility decisions.

    They believe in the mystical magical man ear (of the 2nd year engineering student at the Silicon Valley java juice bar).
    They believe in the Star Trek Picard utterance of “make it so”.
    They truly have no clue about real science, real engineering, real complex computing or biological systems.

    For them it all just inevitably happens because “The Free Market” is there and because all good things come when markets are free to do and take as they please.

    They believe what certain favored “friends” of the court tell them about tr011s and the deceptive patent scriveners who aid the tr011s in their evil doings.

    So it is no surprise that patents are sucking the vital bodily juices out of the First Amendment according to the Gospel of Mayer.

  77. Deepak Malhotra October 8, 2016 4:51 pm

    “Bad” patents that the Alice decision sought to address, those that cover automation of well known business practices, could easily be addressed using 35 USC 103 instead of 101. I would be tempted to say that Congress needs to step up and legislate one way or another. However, we know from AIA that the result would be a bill that favors large multinationals, with their lobbyists, to the detriment of startups and small businesses.

  78. Tourbillon October 8, 2016 5:05 pm

    The problem is not with Mayer. It is with a Supreme Court that refuses to recognize what Congress has said (it is in Section 101), a Supreme Court that refuses to define “abstract” in any limiting sense, and a Supreme Court that does not apparently understand that under the Constitution, Congress, not the judiciary, defines what technology can and cannot be patented,.

    The grotesque jurisprudence of Mayer is just the denouement of the unhinged Supreme Court jurisprudence on patent eligibility.

  79. Prizzi's Glory October 9, 2016 10:27 am

    Here is a recent journal article on super-agers.

    http://www.jneurosci.org/content/36/37/9659

    There are a tremendous number of senior status judges in the federal judiciary, and most of them certainly are not super-agers.

    It is sheer lunacy that leading edge technological and legal questions are being decided by judges that are losing their minds, and I have certainly observed at least one federal district court senior status judge babble from the bench and engage in courtroom behavior that was bizarre in the most charitable interpretation.

    Other contributors to this forum may have seem similar questionable performances.

    BTW, when (almost certainly patentable) pharmaceuticals appear that can give ordinary agers super-ager mental performance, the mandatory retirement at 65 can be revisited.

  80. Prizzi's Glory October 9, 2016 10:31 am

    This joint Slate/Pro-Republica article addresses the issue of senior status judges that suffer increasing cognitive deficits.

    https://www.propublica.org/article/life-tenure-for-federal-judges-raises-issues-of-senility-dementia

  81. Ash October 9, 2016 4:39 pm

    I’ve been following these US software patents with interest. What I don’t understand is why all these cases focused on eligibility when most of the arguments used to define eligibility seem to center around an ‘obviousness’ argument.

    The Alice decision seemed to boil down to, ‘known or obvious method implemented on computer, therefore invention lies in abstract idea and not patentable’. The addition of a computer cannot pull the otherwise non-patentable idea into patentability. However, has this ever been the case, e.g. if I claim a method of playing poker on a computer (using known rules) was that ever non-obvious?

    In other jurisdictions an obviousness/inventive step attack would seem more appropriate, i.e. known method implemented using known computer = obvious and not patentable unless some non-obvious synergistic effect etc. The eligibility question shouldn’t have been required and just seems to muddy the water.

    Do you think the Alice claims would be deemed obvious if the court had considered them and if so, why are these particular software patents not been challenged on obviousness grounds?

  82. Ash October 9, 2016 4:40 pm

    Edit:

    In other jurisdictions an obviousness/inventive step attack would be used and in these US cases would seem more appropriate, i.e. known method implemented using known computer = obvious and not patentable unless some non-obvious synergistic effect etc. The eligibility question shouldn’t have been required and just seems to muddy the water.

  83. Prizzi's Glory October 10, 2016 6:00 am

    If claims such as Benson’s are to be ineligible (whether the embodiment is made via a software program, via a PLD, or via discrete components), rejection because of obviousness or because of lack of inventive step would not be possible.

    If Congress does not want a method to be allowable because it corresponds to a Turing computable function, Congress should add an effectively computable exception to § 101 to make methods ineligible that could be done by pencil and paper calculation.

    The concept is well-defined and was developed before electronic computers. The idea is not particularly difficult.

    Why not make the law clear and exclude this issue from questionable interpretation by Judges like Mayer or by those suffering increasing cognitive deficit?

    Note that adding an effective computability exception to § 101 would not make the claims of Diehr ‘142 to be ineligible. A Turing computable function (doable by pencil and paper calculation) could neither perform the temperature sampling nor open the molds in accord with the description in Diehr’s method claims.

  84. Anon October 10, 2016 6:39 am

    Prizzi’s GLory,

    You miss the point in Diehr, as that case would be overturned. Those other items were done by other system components, and those system components did nothing more than their already understood inherent functions.

    Further, your advocating to remove “Turing complete” from patent eligibility has no ground to stand on. The “do it with a pencil” line of thought itself is not coherent when you realize that it is a machine that is doing “the doing” and not a human.

    “Could be done” is no basis in law to ignore the distinction that what is claimed is NOT a human doing the item.

  85. Prizzi's Glory October 10, 2016 8:21 am

    Practically all inventions are made with standard components.

    When judges have referred to system components carrying out their already understood inherent functions, they mean input devices performing the equivalent of lambda-binding within the lambda-calculus or output devices displaying the output of evaluation within the lambda-calculus.

    These are easy arguments to make once one understands the lambda-calculus which is a simple logical formalism generally easier than legal logic.

    Diehr’s temperature probes — because they are continuously sampling — are not performing lambda-binding while opening a mold — something that inherently involves mechanical equipment — simply is not evaluation within the lambda calculus.

    Of course, if the Diehr device simply displayed a command (to a human) to open a mold without the continuous temperature samping (arguendo by using a timer — something that can be implemented on a Turing machine), the hypothetical method would be equivalent to a lambda function and effectively computable.

    It takes a lot of guts to call incoherent analysis developed by some of the greatest logicians of the 20th century.

    Yet I do agree that using the phrase “do it with a pencil and paper” when effective computability is meant does betray mental fuzziness and a degree of unfamiliarity with some elementary mathematical logic.

    I must clarify that I am taking no position whether methods should be § 101 eligible that are logically equivalent to effectively computable functions.

    § 101 should be written to be clear on the issue.

  86. Anon October 10, 2016 9:09 am

    Judges do not mean any such “lamda” anything.

    They do not even know what such means.

    The desire to use other than “legal logic” is a mistake. You cannot substitute one for the other just because the one is “easier” for you (or anyone).

  87. Anon October 10, 2016 9:16 am

    Gene is spot on. But I’ll take it a step further. The CAFC should be stripped of its appellate jurisdiction for patents. We would be better served if we had 100+ legal minds from the regional circuit appellate courts reviewing these issues creating a more balanced body of law. The CAFC has been historically composed of judges without the practical experience of actually trying cases. There is no reason why the area of patent law should be any different than the dozens of other areas of “complex” law that all of the other federal appellate courts handle on a daily basis.

  88. Gene Quinn October 10, 2016 10:05 am

    Maurice-

    Just rescued your comment about Judge Mayer from the spam folder. Not sure why it was in spam, although perhaps that is where it really belongs.

    As I’ve explained in the article Judge Mayer is wrong. Your comment does nothing to explain how or why Judge Mayer is correct, which is understandable since Judge Mayer (and now you) are wrong.

    It is disingenuous (at best) for Judge Mayer to use intentionally misleading quotations that don’t mean what he says to support his erroneous and radical views of patent law. If Judge Mayer were right he wouldn’t need to misquote the Supreme Court and engage in intellectually dishonesty to bolster his views.

    -Gene

  89. Anon October 10, 2016 10:49 am

    Anon’s view above about the 100+ is not the view of this (regular) Anon.

    There is a word of caution to be attached to that Anon’s “balance” and that has to do with the historical lack of balance in the pre-CAFC (and its immediate court before it).

    That historical lack was what led to excessive forum shopping and a fracturing/splintering of patent law, rather than any such “more robust” or “balanced” body of law.

    Those who do not learn from history are bound to repeat it, and the call (such as it is), is merely a call to repeat history.

  90. Prizzi's Glory October 10, 2016 11:51 am

    Anon@86,

    Are you suggesting that it is wrong to import basic extra-legal terminology in order to clarify a law?

    Have you looked at 35 U.S.C. 103 (PRE?AIA) CONDITIONS FOR PATENTABILITY; NON-OBVIOUS SUBJECT MATTER.

    (b)
    (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to proceed under this subsection, a biotechnological process using or resulting in a composition of matter that is novel under section 102 and nonobvious under subsection (a) of this section shall be considered nonobvious if-
    (A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
    (B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
    (2) A patent issued on a process under paragraph (1)-
    (A) shall also contain the claims to the composition of matter used in or made by that process, or
    (B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
    (3) For purposes of paragraph (1), the term “biotechnological process” means-
    (A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to-
    (i) express an exogenous nucleotide sequence,
    (ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
    (iii) express a specific physiological characteristic not naturally associated with said organism;
    (B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
    (C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

  91. Anon October 10, 2016 12:18 pm

    I am suggesting exactly what I stated.

    Too often, and to a great detriment, people want to assume that legal logic is optional to a “MathS logic sense.

    They are not.

    You need to accept this at face value.

    Your long quote of pre-AIA 103 does not make a point. Perhaps you can clarify what that quote was supposed to indicate.

  92. Anon October 10, 2016 12:20 pm

    Oops – I omitted a sentence.

    Legal logic is not optional.
    Legal logic and the MathS logic – they are not interchangeable.

  93. Prizzi's Glory October 10, 2016 12:46 pm

    All I am suggesting is a reformulation of the sort below. (I don’t care which formulation is chosen, but this aspect of § 101 should not be at the discretion of the Supreme Court. Note that this modification does not address the issue of Rubber-Tip Pencil Co. v. Howard.)

    35 U.S.C. 101 INVENTIONS PATENTABLE.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title unless (or even if)

    — said process is logically equivalent to a mathematical function effectively computable by a Turing machine.

  94. Anon October 10, 2016 2:02 pm

    I reject your reformulation.

    Again – the difference between a machine and a man is important to keep in mind [pardon the pun].

    You overemphasize the Turing angle, and such does not have a place in the law as written by Congress.

  95. Prizzi's Glory October 10, 2016 2:28 pm

    Anon@94,

    How can one possibly discuss software eligibility without thinking about Turing machines?

    You are misreading the modification. It only pertains to process claims whose metes and bounds encompass a logic device (something that could made explicit if such explicitness were desired although the use of the phrase “Turing machine” forces such interpretation).

    Arguendo Henry Ford under either version of the proposed law should have been able to patent the assembly line (if he truly invented it) because the qualification would not have applied, and the modified statute applies exactly the same as the unmodified statute to process claims not encompassing of a logic device.

    The modified statute would apply exactly like the unmodified statute to non-process claims.

  96. Anon October 10, 2016 3:39 pm

    Prizzi’s Glory,

    Your first mistake – and not a small one at that – is thinking that “software” for some reason must be treated differently in regards to the eligibility question.

    That is not how the law works, nor how section 101 was written.

    101 was written in a future facing manner, dealing with innovations that simply could not be known a priori.

    You have two (legal) logical restraints – and only two:

    1) the utility must be that as to belong to the Useful Arts. This is extremely broad and simply means that the Fine Arts are not proper subject matter.

    2) the claimed subject matter must (loosely) fit into at least one of four categories. This too is properly construed loosely (as opposed to the current “broken scoreboard” with exceptions wholesale swallowing the rules). See Chakrabarty for the sensible application of this concept.

    That is it.

    All else is muckery. There is no such thing as new forms of innovation needing to be especially adopted by Congress into 101, and that is entirely due to the nature of innovation itself.

  97. Anon October 10, 2016 3:42 pm

    It is entirely unclear what you think “misreading the modification” and “only applies to process claims” when it comes to our immediate discussion. Can you tie that back into what we are discussing somehow?

  98. Prizzi's Glory October 10, 2016 4:42 pm

    Anon@96,

    Patents grant time-limited monopolies to specified knowledge. There appears to be a problem that relates to what knowledge can be subject to patents. I don’t see how the court’s approach can be changed without more precise legislation that constrains the courts. There is no reason to treat Jefferson’s text as holy writ.

    Effective computability places a constraint on certain knowledge. I don’t really care whether it is used to allow or to disallow.

    The constraints I suggest limit judges like Mayer, whom I suspect of increasing cognitive deficit.

    I know 75 year olds that can understand the relatively simple concept of effective computability. I don’t believe Mayer to be among them. In face of a modified § 101 he might realize it is time to retire.

    I see no harm in granting special Law of Nature patents to people like Maxwell, Einstein, Schrödinger, Heisenberg, Feynman, Watson, or Crick.

    Law of Nature patents could have special research exemptions and compel licensing. In any case of the 5 physicists I mentioned, only Feyman’s discoveries seem to have been important in the development of products within 20 years of first formulation.

    § 101 could easily be modified to cover two separate classes of patents.

    BTW, patent-eligible categories have changed 1790.

    https://ipmall.law.unh.edu/sites/default/files/hosted_resources/lipa/patents/Patent_Act_of_1790.pdf

    Perhaps some refinement is necessary today. The 1790 Act does not even refer to process, but it may be using “art” to mean “process” in something like the modern sense.

  99. Anon October 10, 2016 5:12 pm

    Prizzi’s Glory,

    Your approach is not grounded in law.

    You have problems right from the beginning with that.

    As I have mentioned more than once now, the legal logic is neither optional nor is it merely replaced with some other logic.

    What you are suggesting is entirely ultra views and unnecessary to what the law means.

    As for what “Process” means in relation to “Art,” you should be aware that the Act of 1952 greatly expanded that understanding beyond the mere “art” in the 1790 sense. See 35 USC 100(b).

    For the rest of your efforts, I am afraid that they are misplaced and entirely unnecessary. What is necessary is to remove the judicial muckery and legislating from the bench. For that, I have advanced a radical – but fully legal – path of jurisdiction stripping of the non-original jurisdiction of hearing patent appeals from the Supreme Court, coupled with a new and untainted patent court (to preserve the holding of judicial review per Marbury).

  100. Anon October 10, 2016 5:14 pm

    “Ultra views” should read “ultra vires”

  101. Anon October 10, 2016 5:19 pm

    Further,

    You have not answered my questions above regarding “misreading” and “only applies.”

    I have the distinct impression that you have left the path of law and have wondered off into a different realm.

    There simply is no need for such because the law as written by Congress was written to encompass innovation, which by its nature must be amenable to future forms of that innovation (and is the principle reason why 101 must be read broadly).

  102. A Rational Person October 10, 2016 9:02 pm

    Anon@99

    Further to your point, the first patent issued in 1790 was for a PROCESS of making potash.

    https://www.uspto.gov/about-us/news-updates/first-us-patent-issued-today-1790

    https://en.wikipedia.org/wiki/Samuel_Hopkins_(inventor)

    So as long as there has been US Patent Law, it has been understood that processes were patent eligible.

    Interestingly, the process was for his DISCOVERY of a better way of making a NATURAL substance, potash.

    Here’s a description of the process in U.S. Patent No. 1 from 1790:

    https://www.me.utexas.edu/~longoria/paynter/hmp/The_First_Patent.html

    “Hopkins’s key advance lay in burning the raw ashes in a furnace before they were dissolved in water. This second burning resulted in much greater carbonate formation, apparently because the free carbon in raw ashes (which partly accounts for the black color) was more completely oxidized and because of exposure to concentrated carbon dioxide gas from the fire. Hopkins also ncreased yields by mixing the insoluble residue from one batch with the raw ashes of the next, instead of simply discarding it. For a five-year license for a furnace using his process, Hopkins required a down payment of $50, or a half-ton of potash, and another $150, or a ton and a half of potash, over the next five years, payable to his agents in various cities.”

    Anyone think it is a slam dunk that such a process would be patent eligible today based on the Supreme Court’s Mayo decision and the Federal Circuit’s Sequenom decision?

    That’s how much the Supreme Court and Federal Circuit have messed up 35 USC 101.

  103. A Rational Person October 10, 2016 9:49 pm

    Ash@81 and @82,

    “Do you think the Alice claims would be deemed obvious if the court had considered them and if so, why are these particular software patents not been challenged on obviousness grounds?”

    “In other jurisdictions an obviousness/inventive step attack would be used and in these US cases would seem more appropriate, i.e. known method implemented using known computer = obvious and not patentable unless some non-obvious synergistic effect etc. The eligibility question shouldn’t have been required and just seems to muddy the water.”

    I don’t think anyone else has replied to your questions, so here goes my humble attempt:

    You’ve actually hit on one of the key points that most patent attorneys have been complaining about with respect to the Alice case and the patent eligibility cases since the Alice case: these cases should never have been decided based on patent eligibility, i.e, 35 USC 101. 35 USC 101 was always understood for decades by virtually all patent professionals, including patent examiners, patent agents and patent attorneys, to be a very low hurdle to get over. Basically, 35 USC 101 was understood to be mainly used to prevent someone from patenting something that should only be allowed to be copyrighted such as a song, a book, art objects, etc.

    For decades, patent professional have understood that the major hurdles that had to be overcome to obtain a patent were 35 USC 102 (the claimed invent must not be anticipated by prior art), 35 USC 103 (the claimed invention must not be obviousness to a person of ordinary skill in the art) and 35 USC 112 (the claimed invention must be enabled by the application and the scope of the claimed invention must be definite) (I have simplified what the sections 102, 103 and 112 of 35 USC say here for simplicity of illustration).

    I don’t know if the claims in the Alice case or various other Federal Circuit cases that have applied the reasoning of Alice to reject claims as not being patent eligible under 35 USC 101 could have been determined to be obvious over the prior art under 35 USC 103, because I have not done a detailed analysis of the claims at issue as compared to what was known in the technical field of claims at the time the various applications were filed.

    One thing that bothers most patent professionals, including myself, about the Alice case and the ways the courts and USPTO have rejected claims under 35 USC 101 based on the “reasoning” of the Alice case is not that we think that all of the claims at issue in these cases should have been patentable. Instead, what bothers most patent professionals about these claims is that they were rejected as being patent ineligible under 35 USC 101 rather than, as appropriate, under 35 USC 102 as being anticipated, under 35 USC 103 as being obvious or under 35 USC 112 as not being enabled or being indefinite.

    Effectively, the Supreme Court in Alice has made a mishmash of 35 USC 101 by effectively including 35 USC 102, 35 USC 103 and 35 USC 112 within 35 USC 101 but not requiring the full fact-based analysis of the claims that is required to be conducted to make a decision with respect to claims meeting or not meeting the requirements of 5 USC 102, 35 USC 103 and 35 USC 112.

    For example, the Supreme Court stated, erroneously, in Alice that its interpretation of 35 USC 101 was necessary to avoid overbreadth and the risk of preemption of a field with respect to a claimed invention. The Supreme Court’s reasoning is erroneous in this regard, because 35 USC 112 already addresses “overbreadth” and “preemption” in its enablement requirement and its requirement that claims not be indefinite.

    In the Alice decision, the Supreme Court effectively ignores the fact that 35 USC 102, 35 USC 103 and 35 USC 112 exist!

  104. Ash October 10, 2016 10:07 pm

    A Rational Person@102

    Thanks for your answer.

    I had heard that one of the reasons that the 102/103/112 aspects hadn’t been addressed is that the court is required to consider 101 first and therefore they never had a chance to address 102/103 objections. Do you think this is correct?

    If so, it seems perhaps that these cases have conflated the 103/112 issues into the 101 assessment which might be why it’s caused such a headache.

    I also haven’t assessed obviousness in these cases but a lot of comments by the judges smack of a 103 assessment being made. e.g. I think there was recently something along the lines of …the invention is nothing more than the implementation (on a generic computer) of a known method already having been performed on pen and paper…

    Certainly the Alice steps seem to make such an assessment, i.e. does the invention solely lie in the implementation on a generic computer?

    Well if the only invention is in the computer implementation then this would suggest that the method/process is known. If that’s the case then simply automating a known method on a generic computer would/should normally be deemed obvious.

    The whole Alice thing is just odd to me.

  105. A Rational Person October 11, 2016 9:44 am

    Ash@104

    For decades, whether, 35 USC 101 was treated first or last was not a particularly big deal, because, overcoming a 35 USC 101 rejection was usually not particularly difficult. For example, what usually caused an Examiner to reject a computer-related or software-related claim as not being patent eligible under 35 USC 101 was that the claim was found by an Examiner to just claim algorithm (patent ineligible based on the decisions in Gottschalk v. Benson and Parker v. Flook).

    In my experience, this usually happened for method claims where there was no tangible result of the method that would be visible to a human being. Similarly, for a device claim, this usually happened when it was not possible for a human to see that feature of a claimed device that was asserted by the inventor to be new produced any result that could be observed by a human being.
    Usually such 35 USC 101 rejections could be easily overcome for a method claim by amending the claim to include a step that produced a tangible result, such as displaying the result of the step(s) employing the algorithm or some tangible result happening that was caused by the method employing the algorithm, such as using the Arrhenius equation to calculate when sufficient energy had been absorbed by a molded object so that a molding machine should open the press (Diamond v. Diehr). Similar types of amendments could be made to claims for a device that was rejected under 35 USC 101.

    For most patent professionals, the major problems caused by the Supreme Court’s conflation of 103 and 112 into 35 USC 101 in Alice include: (1) the decision with respect to eligibility under 35 USC 101 has become the most important decision in determining whether a claim is patentable, (2) the decision with respect to eligibility under 35 USC 101 effectively makes decisions with respect to patentability under 103 and 112 without considering any of the facts that must be considered when decisions about patentability under 103 and 112 are made on their own, and (3) because of (2) effectively decisions as to the patentability of a claim are purely subjective and arbitrary, which in any other field of law would make such decisions unlawful.

    So your comment that “in these cases but a lot of comments by the judges smack of a 103 assessment being made” is spot on. The problem is, this assessment is being made with no factual analysis as to the state of the art at the time the patent application was filed and why the claimed invention was or was not obvious to one of ordinary skill in the art based on evidence of the state of the art at the time the invention was made.

    “Well if the only invention is in the computer implementation then this would suggest that the method/process is known. If that’s the case then simply automating a known method on a generic computer would/should normally be deemed obvious.”

    A court can only make a statement such as the above by (1) ignoring the requirements of 35 USC 103 and (2) being technically ignorant.

    With respect to many known methods, how to automate the process can be incredibly nonobvious. For example, say we were living in the year 1900. Humans had long-known how to draw a five-pointed star, find the square root of a number, write cursive letters, speak like a human, recognize another human’s face, draw a map of part of a city, think like a human being, etc. But in 1900 it was not obvious how any of these “methods” could be automated in a machine.

    Even today, automating the processes of “thinking like a human being” to run on a “generic computer” is not obvious. And there are many other processes that might be “known” but may be difficult to automate on a computer, despite Justice Kennedy believing that 2nd year engineering student could easily program a computer to do just about anything “over a weekend.” (see Oral Argument in Alice v. CLS)

    “The whole Alice thing is just odd to me.”

    It’s odd to me too.

  106. Curious October 12, 2016 6:17 pm

    unless (or even if)

    — said process is logically equivalent to a mathematical function effectively computable by a Turing machine.
    LOL … judges and the USPTO have enough problem with the words “machines” and “process” and you want to add that? I haven’t made my way through all the comments, but do you have a policy reason behind limiting patentable subject matter in this manner?

  107. Curious October 12, 2016 6:39 pm

    I had heard that one of the reasons that the 102/103/112 aspects hadn’t been addressed is that the court is required to consider 101 first and therefore they never had a chance to address 102/103 objections. Do you think this is correct?
    102/103/112 are conditions for patentability — 101 is not. 102/103/112 are filters — they operate to exclude certain inventions from patentability. 101 is intended to be inclusive — ‘anything under the sun made by man.’ SCOTUS has erred by transforming 35 USC 101 into a test — something it wasn’t intended to do. As stated by many commentators, the worries expressed by SCOTUS can easily be addressed by 102/103/112 since those sections of the code were intended to address those issues.

    35 USC 101 evolved from an open-armed welcome to the patent system, into a mindless killer that is laying waste to the entrepreneurial dreams of hundreds of thousands of inventors.

    In today’s age, there are few products/methods that cannot be reproduced on the cheap in China, India et al. Consequently, there is little ‘first mover’ advantage when bringing a product to market. You can have a great idea, but there are huge companies, with massive amounts of labor/capital/marketing expertise/supply chain/distribution chain/manufacturing expertise to throw at any new methodology/product that comes down the road. If you, as an inventor and entrepreneur, don’t have patent protection you might as well be giving your technology away. Today, even if you have patent protection, you are facing multi-million dollar litigations to protect your technology with the great expectation of losing your patents.

    Unless Congress steps in or the SCOTUS clarifies their definition of “abstract idea” in a meaningful manner, my dead serious advice to any entrepreneur these days is ‘expect to lose everything.’

    BTW — it’ll only be a matter of time before someone raises 101 as a defense against a “pure” mechanical device, goes to the Federal Circuit, and gets the right (wrong) panel. When that happens, a whole swath of those types of patents will be clear cut by the mindless killers at the Federal Circuit. The logic/arguments/law being employed by the Federal Circuit is not just limited to software and biotech. It is just a matter of time.

  108. Brad Olson October 13, 2016 2:25 pm

    My own two-cents relates to pointing out to the readership that Gene Quinn is not afraid to take on controversial topics and express his views as he has clearly done with Judge Mayer. Gene Quinn was also willing to take on a very powerful figure and state his opinions concerning the circumstances of the reappointment in 2014 of Francis Gurry as Director of WIPO regarding the controversy surrounding the apparent clandestine collection of DNA samples from several suspected WIPO employees for an in-house investigation allegedly steered by Mr. Gurry. Whether you agree with Gene or not, we are fortunate to have this periodical and to have it run by someone willing to publish his points of view and air responses. Thank you Gene for having the all too rare strength of character.

  109. Gene Quinn October 13, 2016 2:54 pm

    Thanks Brad. I appreciate your comment.

    I’m still not sure my visiting Geneva is in my own best interest given that Gurry still runs WIPO and WIPO attorneys threatened me by saying what I did by publishing public allegations against Gurry was a crime in Switzerland. Let’s hope I don’t have to scratch DC off my travel itinerary as well!

    Cheers.

  110. step back October 14, 2016 11:21 am

    Gene,

    Ditto on that about you willing to stand up under your own name and take on the powers that be (TPTB) right to their face.

    Very few attorneys have the moxie to do the same (present company included) in view of fear that same attorneys or their law firm will appear before that/those judges at a later date.

    But who else will stand up and cry foul.
    If not us, then whom? And if not now, then when?

    Well done.

  111. Gene Quinn October 14, 2016 2:23 pm

    Thanks step. Let’s hope I can continue to monetize IPWatchdog and related endeavors! I don’t particularly fear retribution, but then again my practice has morphed substantially over the years from doing to far more advising and consulting behind the scenes. Still, I’ve always been the type to say what I think and in the past even as one door as closed another has always opened. The road less traveled I guess.

  112. Patent Investor November 7, 2016 1:46 pm

    And the beat goes on…today at the CAFC Judge Mayer interrupted the petitioner’s attorney to ask if any of these IPRs (eight IPRs/re-exams on three separate patents) had a 101 issue brought up in the proceedings below or the district court. Upon being told no, he seemed to have continued his nap.

  113. Les Lippany November 8, 2016 5:37 pm

    this jugde zero-subbed Vringo vs Google patent infringement case in favor of Google despite:
    1. months of EXPERT TESTIMONY unequivocally supporting Vringo’s claim
    2. JURY Verdict in favor of Vringo reflecting months of testimony on both sides
    3. Google’s attempted “workaround” of said patent invalidated
    4. Fed Judge Jackson tripleing Vringo’s damages as Google repeatedly violated his orders
    5. Mayer got Wallach siding with him on “obviousness” flouting experts, jury, judge
    6. Substituting his take on the case over overwhelming evidence to the contrary
    7. No checks and balances on this arbitrary judicial dictator
    8. All-or-nothing ruling defies common sense even if he genuinely believes his nonsensical “obviousness”
    9. The financial, social, emotional damage he caused is so immense that it is indiscribable.

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