Revolutionary JP Morgan software capable of doing contract review likely patent ineligible in the U.S.

By Gene Quinn
February 28, 2017

Yesterday Bloomberg News published an article describing new contract review software created by JP Morgan (NYSE: JPM) that is capable of doing in seconds the same work that it would take a large team of lawyers 360,000 hours to complete. The author — Hugh Son — explains:

The program, called COIN, for Contract Intelligence, does the mind-numbing job of interpreting commercial-loan agreements that, until the project went online in June, consumed 360,000 hours of work each year by lawyers and loan officers. The software reviews documents in seconds, is less error-prone and never asks for vacation.

Clearly, this extraordinary software solution for engaging in tedious contract review is nothing more than an abstract idea and is not the type of thing that can be patented in America. The United States Supreme Court has put an end to revolutionary innovations such as COIN from being patented, and if the hard working patent examiners at the United States Patent and Trademark Office make a mistake and issue a patent on such a ridiculously simple innovation that a second year engineering student could clearly have programmed over a weekend while sipping latte’s at the corner coffee shop the PTAB, some district court or the Supreme Court will step in and set the record straight. Even certain panels of the Federal Circuit would undoubtedly find COIN to be patent ineligible because, after all, the software is just doing what humans could do anyway.

Businessman with umbrella on a pier watching storm gatherYes, the old, extraordinarily ridiculous argument that humans could perform the task of the software so there isn’t anything special to see here — move along. That was fundamentally why the Federal Circuit found the claims in CyberSource Corp. v. Retail Decisions, Inc. to be patent ineligible. Judge Dyk, writing for a unanimous panel that included Judges Bryson and then Judge (now Chief Judge) Prost, wrote: “It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper.”

It is hard to see how software that performs the mental review function of a lawyer, just much faster, could be patentable in view of CyberSource. Of course, that doesn’t say or suggest anything about the remarkable innovation that JP Morgan has achieved. It does, however, speak volumes about the idiotic tests and application of those tests by judges who think they have all the answers and seem absolutely hell bent on treating all software as if it is ubiquitous. A simple app on your phone to track your caloric intake is just the same as IBM’s Watson that won on Jeopardy, or IBM’s Deep Blue that beat Chess Grand Master and World Champion Gary Kasparov, or JP Morgan’s COIN. After all, a second year engineering student can simply code each over a weekend in a coffee shop while sipping on a latte.

For those unfamiliar with the repeated engineering student reference, Justice Kennedy of the United States Supreme Court actually said in oral arguments during Alice v. CLS Bank that the software could be written by a second year engineering student over a weekend. In what can only be characterized as one of the worst ever responses by an advocate during an oral argument at the Supreme Court the attorney representing the patent owner agreed. Unbelievable! The answer is NO! No Your Honor, it cannot be programmed by a second year engineering student over a weekend, and that question shows a complete and total lack of familiarity with the scope of even a simple software coding project. It would be difficult, if not impossible, for anyone to code that simple app for your smartphone to track your caloric intake in a weekend, at least if you wanted it work without bugs and so that it was secure and not an identity theft open door. And second year engineering students have learned little or no computer programming anyway. So the question and the answer clearly demonstrate to everyone who knows anything about technology, software and/or engineering that those who are making these decisions think they know it all but know absolutely nothing.

Alice/Mayo Framework

So how would an Alice/Mayo framework analysis for COIN proceed?  The first question (commonly referred to as Step 1) 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). It would seem that even the most recalcitrant decision makers no longer question Step 1, if for no other reason because it is unnecessary to fudge on the obvious when the next two questions provide all the subjective leeway they need to kill any patent claim they want.

The second question (commonly referred to as Step 2A), where the Alice/Mayo framework truly begins, requires the decision maker to ask if despite the claim being deemed patent eligible under the law, whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. At the moment there are only three identified judicial exceptions, which are: laws of nature, physical phenomena and abstract ideas. With software the judicial exception at play is always the abstract idea exception, which the Supreme Court and Federal Circuit have steadfastly (and rather proudly) refused to define. If the claim does NOT implicate one of those judicial exception then the claim is patent eligible. This is, of course, subjective. In this situation pretty much any of the Administrative Patent Judges of the PTAB, most district court judges, most patent examiners, and a handful of Federal Circuit Judges (i.e., Judges Dyk and Mayer for certain) would find that the abstract idea is nothing more than reviewing contracts, which is something that has been done by human beings for hundreds of years without the assistance of computers.

The abstract idea is identified by those who will find the patent claims patent ineligible without interpreting the claims, and many times without reading the claims. Of course, black-letter law requires full consideration of the claim, the specification and prosecution history in order to determine what a claim covers, but for some reason when reaching a patent eligibility decision very little more than the preamble to the claim is relevant. There is almost never a review of the specification to even see if any terms or concepts have been defined, as is absolutely required to interpret a claim. And there is never any review of the prosecution history. So the abstract idea is identified in some ether or vacuum based on the most absurdly broad articulation of what the decision maker wants the reader to believe the patent applicant or owner is seeking or obtained, as the case may be.

In the case where the patent claim seeks to cover a judicial exception to patent eligibility, the final question (commonly referred to as Step 2B) asks whether the inventive concept covered in the claimed invention added “significantly more” than the judicial exception, or whether the claimed invention did not add “significantly more” and, therefore, was seeking to merely cover the judicial exception. Again, the Supreme Court and the Federal Circuit have never defined what “significantly more” means. This frequently gets characterized as the hunt for the inventive concept, and if you think the abstract idea prong is subjective wait until you get more acquainted with this prong of the Alice/Mayo framework. It is really impossible to breakdown this prong with any objectivity because there is never any in the decisions. It is as subjective a criteria as you will ever see in the law, akin to the distinction between pornography and obscenity — you’ll know it when you see it.

Of course, that standard is not helpful when it comes to indecency, and it is absolutely useless when it comes to matters of business law that demand certainty. And let’s make no mistake about it, software patents are about business, sought by businesses and the lack of certainty is harming those businesses, the U.S. economy and driving companies overseas for protection.

Conclusion

To all those who will comment that there is no way to know whether claims to the JP Morgan COIN software would be viewed as patent ineligible without seeing what, if anything, might be claimed, my question is this: Do the claims even matter? As far as I can tell, the claims are completely incidental to a patent ineligibility analysis. All that matters is the vague, overbroad description of the abstract idea concocted by the decision maker. After all, how else could an MRI machine be considered to be an abstract idea? You’d think that even PTAB judges would realize that in a dark room without any lights they would trip and fall over that allegedly abstract MRI machine, which would make it not so abstract after all, right?

In any event, congratulations to JP Morgan on creating something that seems quite revolutionary. Too bad you won’t get any useful patent protection in the United States. I recommend you consider China, Europe and other patent friendly jurisdictions around the world. The U.S. seems closed for business with respect to these types of paradigm shifting innovations.

 

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 77 Comments comments.

  1. You Know Who I Am February 28, 2017 1:14 pm

    Do the claims even matter?

    If they don’t, than everything you appear to stand for is bunk.

    Did JP Morgan invent computers? Did they invent text search? Did they invent the particular machine learning algos they are using? If they did not, why should they get a patent for their non-innovation?

    If they did invent some aspects of the solution, the claims sure as hell should matter.

    If their “innovation” is instead undertaking the large, labor and capital-intensive task of efficiently coordinating the use of a series of known inventions to scale a solution, they should have their chance to make more money by doing so, just the same as if they had built a better factory that was thousands of times more efficient than small artisan shops doing the same jobs.

    That’s investment, and it may be innovative, but its not an enterprise for the patent system to “protect”.

    I dislike Alice jurisprudence because you are 100% correct: it’s a “know it when they see it test”, which is fundamentally unfair to everyone involved.

    But your jihad against any subject matter restrictions is also bad medicine. Patenting anything new you can do with a computer creates a worse than useless thicket- and massive rent-seeking for ordinary creativity. There are answers that can help. This polemic does not move the needle.

  2. Caesar Salazar February 28, 2017 1:40 pm

    Interesting article. I’m curious as to what the program actually does. If it performs tasks that humans can do unaided by technology and due to solely the process of the human mind, then yes you are correct Gene; it would likely be patent ineligible under current law. However, a true analysis cannot be done unless there are articulable claims that can be analyzed under the current law.

  3. Caesar Salazar February 28, 2017 1:42 pm

    You Know Who I Am,

    Interesting take. You don’t like current 101 jurisprudence, but you also don’t like Gene’s “jihad” (quite humorous term considering the context) against subject matter restrictions. You say there are answers that can help. What do you mean?

  4. American Cowboy February 28, 2017 1:51 pm

    Great outcome. Don’t want to issue patents that may encourage efforts to develop software that will replace lawyers!

  5. Richard Kahn February 28, 2017 2:40 pm

    I vaguely remember a case (can’t remember the name or the court) that might be relevant here.

    It reserved the question of whether an otherwise-unpatentable piece of software could still be patentable if it could perform the function in such vast numbers and within such minute time periods that a human could not.

    If anyone knows the case, I’d appreciate it if you could post the cite here. Thanks!

  6. Gene Quinn February 28, 2017 3:01 pm

    Caesar @2-

    You say: “a true analysis cannot be done unless there are articulable claims that can be analyzed under the current law.”

    I disagree. The claims are irrelevant in a 101 patent eligibility determination. Decision makers stop reading after the preamble.

    It is also ridiculous that something that can do in seconds what would take a human 360,000 hours would be perceived to be ineligible because a human could just do it. Talk about comical. Like Watson’s trillions of calculations a second, software does more than any human ever could do so the pen, paper and inside the human mind nonsense is just that, nonsense.

  7. Night Writer February 28, 2017 3:14 pm

    @7>>>It is also ridiculous that something that can do in seconds what would take a human 360,000 hours would be perceived to be ineligible because a human could just do it. Talk about comical. Like Watson’s trillions of calculations a second, software does more than any human ever could do so the pen, paper and inside the human mind nonsense is just that, nonsense.

    It is also that how it is done is different than a human would do it. That is one of the sure signs that you are squarely in patentable subject matter.

    It is just unbelievable to me that people cannot see that information processing is just the replacement/supplement of the brain just as the mechanical machines were the replacement of the physical labor.

  8. Ken February 28, 2017 3:28 pm

    “…just the same as if they had built a better factory that was thousands of times more efficient than small artisan shops doing the same jobs.”

    And to the extent of any *inventive processes* employed in such a factory, that too should be eligible for patent protection – even if all it amounts to is a more efficient way to do something that’s already being done.

  9. Anon February 28, 2017 4:08 pm

    What is needed is the light from an exposition of the rise, fall, and zombie-like attempt to resurrect the Mental Steps doctrine.

    Once this is fully in the table, then people can see just how the current Zombification ties into the explicit anti-software patent schemes.

  10. You Know Who I Am February 28, 2017 4:37 pm

    And to the extent of any *inventive processes* employed in such a factory, that too should be eligible for patent protection.

    Of course they should be, or why have a patent system?

    But if every element is already patented or unpatentable (because of previous public use), but the enterprise is still an enormous logistical and capital-intensive enterprise, it may be seen as creative, even innovative, but not a possible subject of a patent.

    The ability to do an algo mentally should not bear on it’s patentability. If the algo is new, non-obvious, fully described, and the results are not consumed by human beings.

    To me, it’s not the performance of the algo, it’s the use of the algo that should decide the eligibility of a method. If you want to treat software as a machine component, then machines should consume the output. If you want to treat it as authored expression, it should be copyrighted. You cannot excise expression from function in software that people use.

    If there remains, in-between, functional, abstract (i.e. informational) improvement that humans use, that improvement should be in the public domain or protected by trade-secret. The patent disclosure is not worth the quid pro quo in loss of liberty and commercial impediment to further development.

    The software business would thrive under that set of rules, and it surely would clean up much of the subject matter mess we have now.

  11. Gene Quinn February 28, 2017 4:41 pm

    Night Writer-

    Just salvaged several comments from spam. I think the greater than sign in a set of 3 triggered the filter.

    -Gene

  12. Independent Inventor February 28, 2017 4:57 pm

    Richard — Planet Bingo v VKGS may be it:

    http://law.justia.com/cases/federal/appellate-courts/cafc/13-1663/13-1663-2014-08-26.html

    Seems like there have been a few other of these “large numbers + very quickly” cases; though I don’t recall them offhand.

    Large numbers and/or short time periods = eligibility.

  13. Curious February 28, 2017 5:00 pm

    Did JP Morgan invent computers? Did they invent text search? Did they invent the particular machine learning algos they are using? If they did not, why should they get a patent for their non-innovation
    You forget the patentability is based upon the invention as a whole. One doesn’t need to be the inventors of the individual aspects that make up the invention, as a whole. You also forget the improvements to pre-existing methods/machines are also patent-eligible.

  14. You Know Who I Am February 28, 2017 5:21 pm

    Curious@14 the combination of known text searches, known learning algos, and known machines is going to be obvious under a reasonable understanding of obviousness. It’s a big job to put something like this together, but its not an invention unless something unexpected is occurring. But of course you know that.

    Eligibility and obviousness do get conflated under Alice- but that’s a problem of information inventions generally, because combinations are almost always well understood before they are undertaken. That understanding is a sine qua non of being able to code them together in the first place.

  15. Richard Kahn February 28, 2017 5:54 pm

    Thanks, Independent Inventor! Planet Bingo’s the one I had in mind.

    It seems necessary to distinguish between “being able to handle” thousands if not millions of transactions vs. “requiring” such a large number, in which case Planet Bingo says the patent eligibility issue is open.

    But if a claim that recites a specific range or threshold, others could possibly try to claim around it by changing those values…

  16. Night Writer February 28, 2017 9:28 pm

    Caesar Salazar : If it performs tasks that humans can do unaided by technology and due to solely the process of the human mind, then yes you are correct Gene; it would likely be patent ineligible under current law.

    This is an incorrect statement of the law. So, you think that if something can be done by a human brain that any machine that can also perform the same task is patent ineligible. Of course, how characters are generated for input/output seems to escape you as outside the human brain.

    Deener could be performed by a human body and yet the SCOTUS found it patent eligible for processing grain.

  17. Night Writer February 28, 2017 9:31 pm

    I think the question about bloggers is whether they are being paid to push an agenda. If so, there can almost by definition, be no intellectually honest dialogue. No matter what position they are advocating, they can never change their opinion or they would lose their jobs. So, perhaps a limited role is interesting for paid bloggers in that it is interesting to see what arguments the anti-patent judicial activists have developed. But, a true dialogue is impossible.

  18. Night Writer February 28, 2017 9:42 pm

    This is actually a disturbing case. This is the type of information processing that is slated to replace 100’s of million of jobs over the next 50 years. And, yet, they are somehow ineligible.

  19. B February 28, 2017 10:03 pm

    “I dislike Alice jurisprudence because you are 100% correct: it’s a “know it when they see it test”, which is fundamentally unfair to everyone involved.”

    The CAFC has done NO ONE any favors with their chaotic and capricious decisions.

  20. B February 28, 2017 10:07 pm

    “Large numbers and/or short time periods = eligibility.”

    Respectfully, the CAFC may or may not agree with you depending on what they had for breakfast. This was an issue in Electric Power Group the CAFC chose to ignore

  21. Paul Cole March 1, 2017 1:53 am

    I completely agree with the comments on the Carter Phillips response in Alice. It raises interesting questions whether attorneys experienced before the Supreme Court but not technically trained and experienced in patent law provide the best advocates for presenting patent cases before that court. When Justice Kennedy asked his question in Alice, Carter Phillips did not have the background knowledge to think on his feet and give an adequate response. A strong answer would have been to the effect that the case was not about the difficulty of programming the suggested software to eliminate the risk of non­-settlement in massive multiparty problems in which it was necessary to deal with difficulties that exist at different time zones simultaneously, but of having had the knowledge and experience to identify the existence of the problem in the first place, and then the insight to decide what steps could be taken in software to deal with it. It is a commonplace in patent law that there can be invention in identifying a problem whose solution is obvious, but the Alice invention, I suspect, goes somewhat beyond that. But the second year student/weekend concession is difficult to understand and should not have been made.

    On the substance of this posting, it is not clear which aspects of the COIN software fall within one of the four statutory categories of Section 101.

    If we are looking at the “machine” category, for example, an eligible claim would need to define not only the new result the computer achieves, but how the computer is modified to achieve that result. The MPEP cites in relation to “machine” the old cases of Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570, 17 L. Ed. 650 (1863) and Corning v. Burden, 56 U.S. 252, 267, 14 L. Ed. 683 (1854). Those old cases repay re-reading and make it clear that you cannot claim just the benefit the machine achieves, but how it is modified to achieve that benefit. As an Australian colleague put it some years ago: “What does the computer contribute to the feast?”

    Our profession has become obsessed with the statutory exceptions to the exclusion of the vital necessity for clear and positive compliance with the appropriate one of the four positive categories of eligible subject-matter within Section 101 as explained with reference to the jurisprudence for that category. If there is such compliance as a matter of substance and not as a matter of mere outward form, then the judicial exceptions cannot remove the relevant claim from eligibility without raising issues of separation of powers, as was implicitly (but very deliberately and carefully) spelled out in the CIPA amicus brief to the Supreme Court in Sequenom.

    Remedies for the present situation are available to all. More careful and detailed descriptions in the cases that we write, explaining precisely how the proposed software works and identifying each result achieved. Claims that properly reflect what the computer brings to the feast. And in litigation, detailed supporting evidence at the first instance stage emphasizing and explaining the technical contribution achieved in terms that can be understood by non-technical judges and relied on at the appellate stage (the panel majority in Sequenom were economists with only slight knowledge of patent law: hence their gross and inexcusable factual error of describing amplified DNA as a natural product which was clearly and quantifiably wrong by a factor of 1000 to 1,000,000 on the face of the opinion – one of our major jobs is to prevent this kind of error recurring). The present situation is not a cause for despair but for attention to detail and hard work at every stage.

  22. patent leather March 1, 2017 3:19 am

    “Justice Kennedy of the United States Supreme Court actually said in oral arguments during Alice v. CLS Bank that the software could be written by a second year engineering student over a weekend.”

    Completely irrelevant, Justice Kennedy. Look at Edison’s revolutionary patent for the light bulb. A second year engineering student (or even a wise junior high school student) could easily have made the claimed light bulb in a few minutes. So what?!

    How long it would take one of ordinary skill in the art to make a claimed invention (after being given the patent) is completely irrelevant. Carter Phillips missed many opportunities to set the Supremes straight.

  23. Eric Berend March 1, 2017 5:25 am

    20/20 hindsight bias. Columbus and the Egg.

    Inventors, are leaders of discovery.

    Judges, are not.
    Attorneys, are not.
    Legislators, are not.

    Presented with the whole ‘dish’ of an invention, Justice Kennedy parses the recipe and notes only the ingredients list; he then evaluates the effort and scope of activity involved, solely by what it takes to go out to the grocery for the ingredients. Essential structure, is lost. Gross incompetence is casually joked about, from the high bench. The whole system suffers from this distortion.

    Hindsight bias! The USPTO PTAB implementation of the AIA practically assures its improper inclusion, in its procedures that violate a Constitutionally established “Secure” property right. Ham-headed judges only further poison the stew. Inventors are headed for the exits.

  24. Caesar Salazar March 1, 2017 7:18 am

    Night Writer,

    I think the question about bloggers is whether they are being paid to push an agenda. If so, there can almost by definition, be no intellectually honest dialogue. No matter what position they are advocating, they can never change their opinion or they would lose their jobs.

    Are you talking about Gene? I don’t think he’d appreciate that.

  25. Night Writer March 1, 2017 8:10 am

    @25 Caesar: Actually, Gene could change his position on all these issues because he works for himself. So, again–we have a misrepresentation by you.

    @22 Paul & @ patent leather. the first part of your comment about what the answer should have been to how hard it was to do was really great. That is exactly right. They are conflating building it with figuring out what to build.

    Just crazy stuff. I used to teach computer science to business majors. I’d hear the same kind of stuff from them.

  26. Night Writer March 1, 2017 9:23 am

    OT, but is there a way to file a continuation and not have it examined for a year or two?

  27. Curious March 1, 2017 9:31 am

    Curious@14 the combination of known text searches, known learning algos, and known machines is going to be obvious under a reasonable understanding of obviousness.
    What did SCOTUS say about obviousness in KSR? I believe they cited In re Kahn that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” The phrase “under a reasonable understanding of obviousness” is a conclusory statement.

    Also, I believe the Federal Circuit wrote: “virtually all [inventions] are combinations of old elements.” Thus, the fact that all the individual elements of the invention are known doesn’t mean that the invention, as a whole, is obvious.

  28. Curious March 1, 2017 9:33 am

    its not an invention unless something unexpected is occurring. But of course you know that.
    I didn’t realize that an unexpected result was a necessary requirement for establishing non-obviousness. Do you have a cite for that proposition?

    BTW — I won’t be holding my breath for that cite.

  29. Curious March 1, 2017 9:50 am

    The CAFC has done NO ONE any favors with their chaotic and capricious decisions.
    Just as a side note, I’ve noticed elsewhere the discussion about how Rule 36 affirmances violate 35 U.S.C. 144. I read somewhere that the role of an Appellate Court should be to “correct errors, develop legal precedent, and do justice.” In principle, I agree that the Federal Circuit has shirked its responsibility by failing to provide guidance as to how the patent law should be interpreted (i.e., develop legal precedent) by continuing to issue Rule 36 affirmances. However, in an era in which the Federal Circuit has shown such an anti-patent bent, I’m not so sure that is such a bad thing. If eliminating Rule 36 means that the Federal Circuit is going to issue more anti-patent decisions, is that something we want? Consider all the cases decided at the District Court level on 35 USC 101 issues that received Rule 36 affirmances — do we want the USPTO to be mining those cases for guidance as well?

    Alternatively, the Federal Circuit makes what were previously Rule 36 affirmances non-precedential, then that wouldn’t be too bad. The guidance associated with those decisions would be minimal, but at least the individual parties involved would have an understanding as to why they lost (won). I’m just worried that the more the Federal Circuit says, the worse off we’ll be.

  30. Caesar Salazar March 1, 2017 10:32 am

    Night Writer @26,

    Not sure who your attack on “paid bloggers” is directed to then? Is it supposed to be me? If so you are incorrect. I am not a blogger, thus how can I be a “paid blogger”? It’s just simply logical analysis.

  31. You Know Who I Am March 1, 2017 10:39 am

    Paul@ 22

    “It is a commonplace in patent law that there can be invention in identifying a problem whose solution is obvious”

    This surprises me. If the solution is obvious, are you saying that the invention is obvious? Or are you saying there can be multiple solutions, some of which are non-obvious?

    Curious@ 28, From KSR:

    “The diversity of inventive pursuits and of modern technology counsels against confining the obviousness analysis by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasizing the importance of published articles and the explicit content of issued patents. In many
    fields there may be little discussion of obvious techniques or combinations, and market demand, rather than scientific literature, may often drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, for patents combining previously known elements, deprive prior inventions of their value or utility”.

    and

    “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”

  32. Night Writer March 1, 2017 10:51 am

    @31 Caesar: you obviously have an intent to be disruptive. And your airs of being better educated or smarter than the rest of us is ridiculous and pointless.

    (I hesitate to even say this, but you want to play some game with the definition of blogger when I clearly meant to include the commentators as well. And, “blogger” can certainly include people that actively participate in commenting and adding comment to a blog.)

    But, you know that. And you want to be disruptive. You. Are. Not. Fooling. Me. For. A. Second. Your comments are interesting in seeing what arguments the anti-patent judicial activists have put together (i.e., the K Street people). But, there is no possible dialogue with you.

  33. Night Writer March 1, 2017 10:55 am

    The other thing too about some of Caesar’s comments (K Street) is reality. What bothers people about CAFC, PTO, and SCOTUS is that often the opinions are insulting to the intelligence of an attorney in that they are both legally wrong and misrepresent science in ridiculous ways.

    That is the core of why people like me tend to be hostile. I would have no problem if Google came out and said we don’t believe in patents and lobbied for changes to the law in an open honest way. That is not what they are doing. And, the courts are burning the system down with ridiculous opinions that insult our intelligence.

    Anyway. That is the core of what is going on. And Caesar’s attempt to pretend to be naive and wanting to point out “inconsistencies” is just another part of the K Street express.

  34. Caesar Salazar March 1, 2017 10:56 am

    Night Writer @33,

    I was simply pointing to a flaw in your use of vocabulary in what seems to be your apparent “attack” on me as some sort of a “paid blogger.” I am simply a commentor, not a paid blogger. Thus your apparent attack wasn’t a strike, it was a ball (in baseball terms just to clarify my use of vocabulary).

  35. Caesar Salazar March 1, 2017 11:11 am

    Night Writer @34,

    I see a disturbing trend to attack character and perceived motive instead of addressing the arguments in these comment sections. Charges of being a “Googler” or K Street and charges of Google as some kind of “Illuminati” or secret society.

  36. Night Writer March 1, 2017 11:14 am

    @35 Caesar: Except it wasn’t a “flaw” in my use of vocabulary, and certainly didn’t warrant multiple posts. I don’t think any fair minded person would say it was wrong. And, except you ignore any substance that doesn’t fit your agenda. And, you are playing the disruptive game, aren’t you? Accuse people of things and try to get them to explain themselves and ignore what they say.

  37. Anon March 1, 2017 11:37 am

    Caesar,

    This is a prime example of you playing the pedantic semantics game.

    That type of nitpicking on a web blog really is not appropriate.

    This is not a courtroom, and exacting perfection – as to form – is not required.

    Contrast this with your abundant lack of perfection when it comes to legal theory and understanding, and your own efforts to MIS-play with the known concepts of words in the sophistry style that you employ.

    That type of malfeasance abuses the form to obfuscate the substance.

    It is a difference that you would be well advised to contemplate and distinguish before your time upon the stage is extinguished.

  38. Caesar Salazar March 1, 2017 11:40 am

    Night Writer,

    Posts @18, @33, @34 are, in your own words, “multiple posts” that may, to be to a reasonable observer, seen to be unwarranted character and motive attacks. Thus why does the man who writes multiple posts accuse another of multiple posting?

  39. Anon March 1, 2017 11:44 am

    And you should note that I have not called you names – but the items that I have called you out for are far more pernicious than the labels which DO attach to the type of gambits that you have engaged in.

    You are welcome to make your points, even counter points, but do not mistake making counterpoints with excessive spin that either misstates the legal terrain, or turns what people have said into something that they have not said. Such is chicanery too far.

  40. Night Writer March 1, 2017 11:47 am

    @39: Caesar: My post of 34 is filled with substance that characterizes why there is hostility. So, respond to the substance. (Why am I sure you will not engage the substance of that post.) You are a whac-a-mole game.

  41. gene March 1, 2017 11:50 am

    “Do the claims even matter? As far as I can tell, the claims a completely incidental to a patent ineligibility analysis. All that matters is the vague, overbroad description of the abstract idea concocted by the decision maker.”

    the judges’ “vague, overbroad description of the abstract idea” is based on the vague, overbroad claims.

    “After all, how else could an MRI machine be considered to be an abstract idea?”

    the claim in the mri case is bunk. it troubles me that claim drafting remains a mystery on this board. you are destined to bang your head against the wall for eternity. it may be that, these days, software engineering and electronics design originate in separate collegiate departments. in the 1980’s and earlier “electrical and computer engineering” was commonly a single department where students had to learn to program as well as study logic circuits and assembler languages. claims these days seem like the drafter used a new program on a computer for a few hours (using mouse and keyboard, and even less for a smartphone app) and felt competent enough to draft the claims.

  42. patent leather March 1, 2017 11:53 am

    @#27 Night Writer, the only thing I can think of is to add lots of claims in your continuation. this would serve two purposes: 1) the examiner won’t be in any hurry to pick it up, and 2) when it does get picked up, you can encourage a restriction requirement which can buy you six more months before you have to respond to get a first action on the merits (assuming you wish to pay the extension of time fees).

  43. Caesar Salazar March 1, 2017 11:54 am

    gene @42,

    the judges’ “vague, overbroad description of the abstract idea” is based on the vague, overbroad claims.

    That seems to be the crux of the issue. It would not be unreasonable to hold this position as it seems to be correct in many regards.

  44. Caesar Salazar March 1, 2017 11:57 am

    Anon,

    When a valid counterpoint is mis-characterized as “spin” the tactic at hand seems to be to undermine and “demonize” the originator of the counterpoint as a person. It’s akin to an ad hominem attack.

  45. gene March 1, 2017 12:16 pm

    to address any actual possible invention here . . . it may be patent eligible, or not, depending on the program and the CLAIMS. if i manually add up work hours for an employee, look up the rate of pay, and the appropriate tax withdrawal rate, it is NOT a patent eligible invention to copy my work effort and program a computer to receive a file with a person’s name, hrs worked, pay rate, # deductions and spit out 10,000 pay checks in one hour. everyone knows or should know that’s what a computer does—it performs programmed steps very fast. if this JP morgan program has code that looks for the text “indemn*” and “jp morgan” in the same sentence, it may kick out that contract if the program says to do that. that’s not patent eligible either if it copies what a team of lawyers takes 360,000 hrs to do. since when does reducing work time by 99.999% constitute crieteria for patent eligibility? an “OOH! OOH! OOOH!” reaction does not make a thing patent eligible either.

  46. Anon March 1, 2017 12:25 pm

    Except Caesar, trying to use that as a shield when you have actually engaged in spin is just not the same as being “the victim.”

    As I have noted – several times on several threads – your version of things IS spin.

    You would do well to know the difference (if you currently do not, which I doubt), and in the alternative, you would do well to abide by that difference. Politeness has bought you a bit more leeway than usual, but false politeness is its own vice, and you tread precariously on the line of being banned (from my perspective). I would not want to lose the foil that you provide, as you are evidently intelligent, and I enjoy intelligent conversations with those that do not share all of my views.

  47. Anon March 1, 2017 12:27 pm

    And as I mentioned, “validity” of counter-attack does not inure to form that obfuscates the content.

    Do not lose view of the context in your sophist endeavors.

  48. Night Writer March 1, 2017 12:33 pm

    Now why did I know that Caesar was going to ignore my post at @41. Clearly, Caesar you intent is to disrupt and push your talking points.

  49. Caesar Salazar March 1, 2017 12:54 pm

    Night Writer @49,

    Your post @41 references your post @34. Your post @34 is simply an accusation that I am somehow on “K Street.” It doesn’t seem substantive, other than explaining your hostility.

  50. Night Writer March 1, 2017 1:14 pm

    @50 Caesar “other than explaining your hostility”. Right it does. And your big theme has been why are people hostile. I explain in @34 why people are hostile. Substance: that the legal opinions coming from the courts are judicial activism and that science/technology is factually wrong. And, that the hostility towards Google is that they are pushing for change by means that appear not to be transparent.

    There’s is lots of substance there. But it doesn’t fit one of your talking points. You just want to blab all around that people are hostile and see conspiracies, etc. (lots of BS from K street), and then when you face real substance you bonce off it and intentionally misrepresent what it is.

    You. Are. A. Troll.

  51. Gene Quinn March 1, 2017 1:42 pm

    gene @46-

    Are you actually asking: Since when has better and faster lead to something being patent eligible? You really didn’t ask that question did you? Obviously, the answer to that question is since 1790.

    -Gene

  52. Gene Quinn March 1, 2017 1:48 pm

    Caesar @ 50-

    I don’t see how anyone accused you of being on K Street, but there is no doubt that your views are certainly consistent with a certain lobbying set on K Street that is employed by one particular side in this debate.

    I think it would be appropriate if you told us at least some basic information about yourself. I find it curious how on some articles/threads you seem to lack the most basic familiarity with the law and legal process (i.e., your questions and comments suggested that you didn’t realize a claim was being invalidated under 101 on motions to dismiss) and at other times you know in great detail what the statute or regulations say. You even know rather obscure references to cases. Of course, you then also seem to lack any understanding as to how those statutes and cases are actually interpreted and implemented day-to-day (i.e., when you incorrectly say there is a right to amend when no amendments are allowed by the PTAB).

    With all this in mind, and you being obviously very sensitive to characterization of your opinions and a widely varied familiarity with the law, why don’t you give us some basic information (doesn’t have to be personally identifying). I think that is fair at this point.

    -Gene

  53. Caesar Salazar March 1, 2017 2:00 pm

    Gene,

    I am simply someone who has a familiarity with some aspects of patent law and I’m here to learn more and present observations I have made with respect to the subject matter. I am by no means all-knowing and respect the opinions of those who have years of practice in the field.

  54. Anon March 1, 2017 2:23 pm

    Caesar,

    I would posit that your “some familiarity” is nothing more than certain talking points that you have been instructed upon. Your lack of a cohesive understanding shines through repeatedly and it is clear that you arrive here with an agenda in hand.

    I would even posit that there is nothing per se wrong with that. Just don’t pretend that your own words and positions have not revealed you. Trying even harder to be something that you are not only decreases the value of any points that you are trying to make.
    I do find the repartee more amusing than most, as you clearly have some background in sophistry (and I use that term in both the modern and Greek traditions).

    What I believe Gene is after is exactly on whose interests do you speak?

    (I chuckle at the saying of “you are not paranoid if they really are out to get you”)

  55. Gene Quinn March 1, 2017 3:00 pm

    Caesar-

    I have to agree with Anon. The thought has crossed my mind that you appear to be working off a script that is very well defined in some areas and which has huge holes in other areas. It is difficult to explain how you could have such a nuanced understanding of the exact argument to make on the amendment issue, for example, and not be aware that district courts invalid patents without a claim construction on motions to dismiss under 101.

    My guess is that you are a student, or relative newbie, but I don’t know. I’m not asking for you to personally identify. But given you seem to have quickly become interested in being a regular I think it would be useful if you could give us some basic ideas about what it is that you believe. For example, do you believe a patent is a property right? Do you believe those that all those who do not commercialize their inventions are patent trolls? That would give us a better idea of where you are coming from, and to Anon’s point exactly on behalf of whose interests you speak (or advocate if even out of personal belief).

    If you are really interested in learning this will facilitate the discussion. So many of those going back and forth with you here have been around for many years and know each other very well if even only online.

    -Gene

  56. step back March 1, 2017 4:15 pm

    This discussion should not be about Caesar (or the Ides of March or et tu Shakespeare?).

    Rather we should be talking about how clueless the Justices of SCOTUS are (e.g. Kennedy with his 2nd year engineering student, Breyer with his King Tut Abacus Man and Thomas with his fundamental Lego blocks of human ‘ingenuity’).

    Because they cite back to the 1852 case of Le Roy v. Tatham, it appears to me that all these Justices are living in a Luddite past and refusing to come up to speed with 21st Century technology and science.

    http://patentu.blogspot.com/2017/02/origins-of-alice-gobbledygook-and.html

  57. Night Writer March 1, 2017 4:52 pm

    Ginsburg/Stevens/Sotomayer with patents are not for organizing human behavior.

    Just generate some phrase and say that is a witch.

  58. Anon March 2, 2017 8:10 am

    Caesar,

    Have you checked with your superiors for a response here to questions clearly off of your script?

    Are you really trying to “respect the opinions of those who have years of practice in the field.“?

  59. Ely Erlich March 5, 2017 4:16 am

    Apologies for not having read all the comments. As a non-US patent attorney I am amazed by the focus on the length of time it takes to create an invention as being relevant to patentability. So if a second year engineering student can build a device over a weekend its not patentable? Since when has production time been a criteria?

  60. Anon March 5, 2017 8:18 am

    Ely,

    Your question is actually an excellent question, and roles into the discussion the Act of 1952, wherein Congress sought to end the prior-allotted authority to the judicial branch of using the tool of common law evolution to set the meaning of the word “invention.”

    Our courts (including the Supreme Court), had failed to set the meaning of the term, and had become quite evidently anti-patent (Congress was responding to a Supreme Court self-description of “the only valid patent is one that has not yet appeared before us”).

    To this effect, they took a single pre-1952 paragraph and expanded that paragraph into full and separate sections of law, including new section 103. The purpose of the new section 103 was clear in that the power to use common law to set the meaning of the word “invention” was stripped from the courts. In place of “invention,” Congress instead opted for a different word: obviousness. And part of the correction of the waywardness of the Court was to be explicit with obviousness that THAT new term was not to be conflated with how the invention came about (including production time).

    The Justices simply do not know patent law well enough, as evidenced by the snide quip during oral arguments. The attorney appearing before the Justices was more than likely too cowed to have been enabled to set the Justices correct on their error in that moment (another horrible by-product of a certain mindset that the Supreme Court is somehow above the Constitution – Supreme is not “supreme” on its own, but merely indicative of a shared holder of the judicial authority created by the Constitution. Those that over-venerate the Supreme Court purposefully or otherwise contribute to this problem.

  61. Paul Cole March 5, 2017 3:12 pm

    @ Anon

    I completely agree with your last sentence.

    Some cases that come before the Supreme Court are of fundamental importance and give rise to significant change in the law. But it does not follow that every case is of that character.

    Over-veneration of Supreme Court opinions in the Federal Circuit has been a major source of difficulty in relation to Section 101. The task of an attorney is to identify the rule of law applied in a case so that it may be applied subsequently. It is disrespectful to fail to make the correct identification or to apply the rule to narrowly but it is equally disrespectful to apply it too broadly. For example, Justice Thomas expressed his overall holding no less than TWICE in Myriad in very cautious and conservative terms “we merely hold …” etc. That is inexcusably overlooked in our profession who have derived wide and unintended prohibitions from what was intended to be a narrow and careful opinion.

  62. Anon March 5, 2017 5:04 pm

    We are in accord, Mr. Cole

    And please take notice that I have always respected the care that you personally take with the law, even as we may disagree as to how the law is being set or treated otherwise.

  63. step back March 5, 2017 7:57 pm

    @60 Ely,

    Not sure if you see such a phenomenon where you come from (where outside USA are u fm?) but here in the Trumptopia, the masses and the courts are rebelling against smarty pants inventors, especially in the software and biotech areas.

    https://patentu.blogspot.com/2017/02/rise-of-new-romantics.html

  64. james brown March 5, 2017 10:07 pm

    I agree that 101 case law is a mess, but it long has been held that automating human steps, without more, is not patentable, so while writing this software may have been a tedious and difficult task, that does not make it patentable. You have to analyze the software to determine what, if anything, is new and worth patent protection. Software is a process, and processes are patentable subject matter (whether done by a human or a machine), so that should not be the issue. The issue is what is new and inventive.

  65. Night Writer March 6, 2017 12:10 pm

    @65 james brown: ???? What? automating what? This is not a mere automation of known steps that a human would use. And, it is nearly criminal to say that automating what a human does is obvious. This statement which Taranto has made evinces such an ignorance of science and technology that the person would made it should resign/retire/be impeached.

    The scientist in Europe actually just said that they didn’t think it was worth trying to automate human though on a computer yet because we did not know enough for this to be meaningful. But, we get these criminal types like Taranto that say these things.

  66. Night Writer March 6, 2017 3:10 pm

    Also, the way things are done is changed by the machines just as we build chairs differently with machines than we would by hand.

    Just criminal that people like Taranto and Lemley put forth such nonsense. Either they are knowingly lying in which case they should be disbarred or they are do ignorant that they are unfit to perform their duties.

  67. step back March 6, 2017 3:16 pm

    We are all “experts” on how the human “mind” works because we each have one you see (even the Supreme Court Justices are experts, of a supreme order):

    U toob /watch?v=fjbWr3ODbAo

  68. Anon March 6, 2017 9:57 pm

    james brown,

    Software is not a process.

    The execution of software may be a process.

    Please do not confuse the two.

  69. Hagbard Celine March 7, 2017 4:54 am

    A computer will generally do a job many times faster than a human could do it if you take the time and effort to program the computer. Someone will always be first to decide that the time + effort is worthwhile for a particular job. Time + effort alone is not invention. Copyright protects time + effort. Sometimes it is difficult to get a computer to do at all something that a human can do, easily, quickly or otherwise. A novel and non-obvious solution to such a problem ought to be patentable. This should depend on the substance of the matter and should not depend on knowing the correct “magic words”. The PTO and the courts need to be equipped to make such judgements. It is judgement that defeats us. That and all the noise from vested interests on all sides.

  70. Hagbard Celine March 7, 2017 5:06 am

    PS An eligible claim needs to provide an adequate definition of the solution, not merely the result achieved by the solution.

  71. step back March 7, 2017 4:39 pm

    @70 Hagbard,
    No disrespect, but sir you are wrong on so many levels.

    First, the biological human brain does not at all operate as would a digital computer.
    https://www.youtube.com/watch?v=fjbWr3ODbAo

    Second, almost no one is silly enough to file a patent application for something that is already anticipated by (35 USC 102) or obvious over (35 USC 103) the prior art. Skilled patent practitioners know this and also that they have to provide enablement (35 USC 112).

    Third, “problem and solution” are not part of American patent law. The only thing needed (35 USC 101) is “new and useful”.

    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. [meaning: not subject to extraneous nonsense SCOTUS makes up based on an 1850’s understanding of the world as in Le Roy v. Tatham]

  72. Anon March 7, 2017 9:50 pm

    Hagbard,

    You are quite mistaken with your notion of “Copyright protects time + effort.

    It really is quite simple to understand:

    Copyright: expression
    Patent: utility

  73. Paul Cole March 8, 2017 6:02 am

    Following Groucho Marx, I have discovered the secret of success in the patent system. The secret of success is new result. If you can fake that, you’ve got it made!

  74. Paul Cole March 8, 2017 6:02 am

    Or come to think of it, new utility.

  75. James brown March 8, 2017 9:14 am

    Night writer – please read the rest of what I wrote, which is that software should be patentable if it includes something new and inventive. Your false outrage is unbecoming of.your intellect.

    Anon – perhaps the statement was a bit imprecise, but what’s your point.

  76. Anon March 9, 2017 7:38 am

    The point, james brown, is that exact lack of precision is often used to confuse people and conflate understanding about the patent eligibility of software (vis a vis, “just use a machine”).

    Instead of recognizing that software is a manufacture in its own right and a machine component, people instead just think of “software” as an existing machine “doING” something – and invariably omit that the existing machine must first be changed (configured with the machine component of software) TO do that something.

    The point is that that imprecision is being used against the eligibility of software.