Software Patent Eligibility at the Federal Circuit 2017

By Gene Quinn
December 17, 2017

The Alice/Mayo framework represents the approach adopted by the United States Supreme Court for determining whether a patent claim exhibits patent eligible subject matter. The Alice/Mayo framework requires the decision maker, whether a patent examiner, Administrative Patent Judge on the Patent Trial and Appeal Board (PTAB) or federal judge to ask and answer a series of questions before determining whether the patent claim in question constitutes patent eligible subject matter. These questions are represented in the flowchart seen below.

The judicial exception at play when computer implemented inventions are claimed is the abstract idea exception. Unfortunately, the Supreme Court has never defined the phrase abstract idea, and neither has the United States Court of Appeals for the Federal Circuit. Similarly, there is no definition for significantly more. Therefore, in practice, deciding whether a claimed invention is directed to an abstract idea and/or adds significantly more than the abstract idea has proved to be rather subjective. Notwithstanding, the United States Patent and Trademark Office has created a Quick Reference Guide based on current case law.

In November 2016 I wrote A Guide to Software Patent Eligibility at the Federal Circuit, which summarized the notable cases on software patent eligibility from 2016, starting with Enfish v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016). What follows picks up where that article left off and provides summary and analysis of the notable software patent eligibility cases decided by the Federal Circuit in 2017. For practitioners representing innovators it is important to remember that as much (if not more) can be learned from reading those decisions where claims were found ineligible.

If there was a theme that emerged in 2017 it is the necessity to have what is specifically innovative disclosed in the claims. While not a particularly new concept, there were cases in 2017 where the Federal Circuit acknowledged that a patent eligible innovation may well have been disclosed in the specification, but which was not found in the claims. With many legacy software patents the description of the technology (if one actually existed) was only in the specification while the claims were written to be quite broad. The Federal Circuit requires both a thick technical description of the innovation and why it is an improvement (see Enfish) and incorporation of what is innovative into the claims. Incorporating specifics into claims is something that has for a variety of reasons been avoided by some practitioners not wanting claims of narrower scope. Today those extremely broad claims do little more than contaminate the entire patent given that focus will be placed on the most broad and easily invalidated claim, which will be deemed representative.

Of course, means plus function claims would import the technological description of the specification into the claims, but do not forget the teachings of the Algorithm Cases, which require 100% of the algorithms disclosed in the specification when using means plus function claims. Even if you are not going to use means plus function claims that level of disclosure is most wise, assuming of course the client gives the practitioner sufficient time and budget to actually do what the law seems to be increasingly requiring.

 

Trading Technologies Int’l v. CQG – Non-Precedential (Fed. Cir. Jan. 18, 2017)

In a non-precedential opinion the Federal Circuit found claims to a graphical user interface (GUI) patent to be patent eligible.

The ’132 and ’304 patents describe and claim a method and system for the electronic trading of stocks, bonds, futures, options and similar products. The patents explain problems that arise when a trader attempts to enter an order at a particular price, but misses the price because the market moved before the order was entered and executed. Federal Circuit agreed with the district court that the claims do not relate to an abstract idea. The Federal Circuit added further that the graphical user interface does not represent a long known idea, which is a threshold criterion for abstract idea ineligibility. Cf. DDR Holdings supra. Notwithstanding the patent eligibility finding on Step 2A, both the district court and Federal Circuit agreed that even if the claims were abstract there was an inventive concept that amounted to significantly more.

The claims that have been found to be patent eligible under 35 U.S.C. 101 were under review by the Patent Trial and Appeal Board (PTAB) in a Covered Business Method (CBM) review because the PTAB believed the graphical user interface patent claims were likely patent ineligible. After this non-precedential ruling the PTAB did find the claims to the ‘304 patent to be patent eligible, agreeing with the Federal Circuit. Notwithstanding, on the same day the PTAB terminated the CBM on the ‘304 patent the same panel of PTAB judges issued a final written decision finding the claims of another Technology Trading International GUI patent to be patent ineligible. See CBM2-15-00179.

It is unfortunate that the Federal Circuit did not make this decision precedential. Still, the analysis should be at least somewhat instructive moving forward. It is also further worth noting that the Legislative History of the America Invents Act does specifically include mention from Senator Chuck Schumer (D-NY), the champion for CBM, that GUI patents were not intended to be susceptible to CBM review at the PTAB. It is also further worth noting that Trading Technologies has received patents on these same innovations in Europe where there is a prohibition on patenting business methods and a specific requirement that there be a technological solution to a technological problem in order for a patent to issue. When there is such a technological solution at CBM review is supposed to be prohibited based on the express language of the Statute.

 

Intellectual Ventures v. Capital One, 850 F.3d 1332 (Fed. Cir. 2017)

Thee claimed invention at issue was directed to a system and method for editing XML documents. The claimed invention creates the dynamic document based upon “management record types” (“MRTs”) and “primary record types” (“PRTs”). A PRT is a simple data structure that contains unspecified data extracted from XML documents and an MRT is merely a collection of PRTs.

Under Step 2A, the Federal Circuit determined the claimed invention was directed to an abstract idea, as the Court has previously concluded with patents reciting similar data manipulation steps. While the Federal Circuit noted that the data structures added a degree of particularity to the claims, the underlying concept embodied by the limitations merely encompass the abstract idea itself of organizing, displaying, and manipulating data of particular documents. According to the Court, the PRTs and MRTs are just defined labels for generic data types that transfer data from one type of electronic document to another.

With respect to Step 2B, the Federal Circuit explained that the mere fact that the inventor applied his own coined labels to conventional structures did not make the underlying concept inventive. Furthermore, although this patent claims to have met a need in the art to allow users to view and update XML documents in different formats, manipulate the data and perform actions without programming skills, the claims recited nothing inventive or transformative to achieve that stated goal. In essence, whether the steps are viewed individually or as an ordered combination, the claimed invention recited no more than routine steps of data collection and organization using generic computer components and conventional computer data processing activities. Therefore, there was no inventive concept present in the claims to transform the abstract idea into a patent eligible application.

 

Thales Visionix Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017)

Thales Visionix, Inc. appealed from the U.S. Court of Federal Claims judgment on the pleadings holding that claims of U.S. Patent No. 6,474,159 are directed to patent-ineligible subject matter. The ‘159 patent discloses an inertial tracking system for tracking the motion of an object relative to a moving reference frame. The ‘159 patent claims provide a method that eliminates many “complications” inherent previous solutions for determining position and orientation of an object on a moving platform, with multiple advantages disclosed over the prior art in the specification.

Although the invention is certainly of the type that would be patent eligible, the claims themselves did not contain as much detail as they could. Nevertheless, the Federal Circuit explained the claims are not merely directed to the abstract idea of using “mathematical equations for determining the relative position of a moving object to a moving reference frame,” as the Claims Court found. Rather, the Federal Circuit found the claims to be directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.

“Just as claims directed to a new and useful technique for defining a database that runs on general-purpose computer equipment are patent eligible, Enfish, 822 F.3d at 1337-38, so too are claims directed to a new and useful technique for using sensors to more efficiently track an object on a moving platform.”

The presence of a mathematical equation did not doom the claims to being abstract. The Federal Circuit explained “the claims seek to protect only the application of physics to the unconventional configuration of sensors as disclosed. As such, these claims are not directed to an abstract idea and thus the claims survive Alice step one.”

With a different panel it would be easy to see this case going another way. What likely saved the claims was the specification explaining that the inertial sensors do not use a convention approach with respect to measuring inertial changes relative to the earth. Instead, the inertial sensors measure the gravitation field in the platform frame. This allowed the panel to follow Enfish. Still, it would have been preferable to draft the claims to incorporate that core uniqueness in the claim itself. Patents with an inventive concept disclosed in the specification but not in the claims were found patent ineligible in RecogniCorp and Two-Way Media, discussed infra.

 

RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322 (Fed. Cir. 2017)

The patent in question, U.S. Patent No. 8,005,303, sought to encode images in a way that required less memory and bandwidth.

Under Step 2A, the Federal Circuit explained “[t]he inquiry often is whether the claims are directed to “a specific means or method” for improving technology or whether they are simply directed to an abstract end-result.” In this situation the Federal Circuit concluded that the claim was directed to an abstract idea of encoding and decoding image data, which they characterized a “an abstract concept long utilized to transmit information.” RecogniCorp argued Diamond v. Diehr, 450 U.S. 175 (1981) was dispositive in its favor because of the presence of a mathematical formula in the claims. The Federal Circuit explained that adding one abstract idea (i.e., math) to another abstract idea (encoding and decoding) does not render a claim non-abstract. The Federal Circuit distinguished Diehr by saying the Supreme Court focused on the claim as a whole, and the patent claim in Diehr was directed to otherwise eligible subject matter, while the claim of the ‘303 patent was not.

Under Step 2B, the Federal Circuit found the claims lacked an inventive concept that transforms the claimed subject matter from an abstract idea into a patent-eligible application. The Federal Circuit distinguished BASCOM Global Internet Services v. AT&T, 827 F.3d 1341 (Fed. Cir. 2016) by saying the claims did not allege a particularized application of encoding and decoding image data, further pointing out that “claim 1 does not even require a computer; the invention can be practiced verbally or with a telephone.” That characterization by the Federal Circuit was disingenuous because the claim, a method claim, specifically required displaying images on a display, selecting facial features from an area on the display and then reproducing a composite image on a second display. How that could be accomplished verbally or over the telephone is not explained by the Federal Circuit, and in fact would be impossible. Having said that, the morale of the story here is probably to beware method claims, to make sure more tangible components are present in the claims, that the claims incorporate the inventive concept (not just the specification) and to more consciously fall into the safe harbor of McRo, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), it is necessary for rules engine to both be specifically disclosed and incorporated into the claims.

 

Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017)

This case began with the filing of a petition for CBM review of U.S. Patent No. 6,950,807, which includes both system and method claims directed to “provid[ing] financing for allowing a customer to purchase a product selected from an inventory of products maintained by a dealer.”

Credit Acceptance argued that the claims were not abstract because they improved the functionality of a general purpose computer by programming fundamentally new features. Under Step 2A, the Federal Circuit explained that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology. The Federal Circuit explained that the claims here focus not on such an improvement in computers as tools, as was the case in Enfish, but on certain independently abstract ideas that use computers as tools. Ultimately, the Federal Circuit concluded that there was “no meaningful distinction between this type of financial industry practice and “the concept of intermediated settlement” held to be abstract in Alice.”

Under Step 2B, the Federal Circuit explained that merely configuring generic computers in order to “supplant and enhance” an otherwise abstract manual process is precisely the sort of invention that the Supreme Court in Alice deemed ineligible for patenting. In concluding that the claims to not add significantly more to an otherwise abstract idea the Federal Circuit explained that in this case the claims do not provide details as to any non-conventional software for enhancing the financing process. Ultimately the Federal Circuit found the claims not even arguably inventive and, therefore, insufficient to establish a sufficient inventive concept of an abstract idea.

 

Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017)

The patent at issue was U.S. Patent No. 5,93,740. The ’740 patent teaches that computer systems at the time of filing frequently used a three tiers of memory to enhance performance – low speed, medium speed and high-speed memory, which were described as problematic for various reasons. The invention described in the ‘740 patent overcame the limitations of the prior art by creating a memory system having programmable characteristics, which would allow it to be used with multiple different processors without any reduction in performance.

“Our review of the ’740 patent claims demonstrates that they are directed to an improved computer memory system, not to the abstract idea of categorical data storage,” Judge Stoll wrote. “The specification explains that multiple benefits flow from the ’740 patent’s improved memory system.” Dissenting, Judge Hughes disagreed, saying that the claims covered “nothing more than a black box,” and that “the patent lacks any details about how [the invention’s purpose] is achieved.”

The majority found three flaws with Judge Hughes’ conclusion. First, the patent included an appendix having 263 frames of computer code. Thus, the majority found the assumption that those frames of computer code taught nothing was improper. “Second, whether a patent specification teaches an ordinarily skilled artisan how to implement the claimed invention presents an enablement issue under 35 U.S.C. § 112, not an eligibility issue under § 101,” Judge Stoll wrote. Third, the majority explained that the dissent assumes the innovative effort was found in the programming, but that assumption is contradicted by the patent specification itself. After pointing to various places within the specification that explained that the invention is an improved memory system, Judge Stoll concluded: “Configuring the memory system based on the type of processor connected to the memory system is the improvement in computer technology to which the claims are directed.”

 

Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350 (Fed. Cir. 2017)

This case began as a CBM review at the PTAB. The representative claim was directed to a method for processing a plurality of undeliverable mail items. According to the specification, the claimed invention “overcomes the historical problems with prior art manual handling” and “does so quickly, more accurately, and at substantially less cost.” It teaches encoding useful information, such as the name and address of intended recipients, on mail items in the form of a two-dimensional barcode. Undeliverable mail items are returned to a processing location, where the barcodes are scanned. The scanned information is then processed, such as by obtaining corresponding updated address data from a computer or database, and the updated information is then electronically provided to the sender to be used as the sender deems appropriate. In other words, the claimed invention allows returned mail to be processed “virtually entirely automatically through the exchange of data files between computers.”

Under Step 2A, the Federal Circuit determined that the claimed invention was directed to an abstract idea. The Federal Circuit specifically pointed out that the encoding and decoding mail recipient information is a process that can be, and has been, performed in the human mind. Therefore, the claims simply recited an existing business practice with the benefit of generic computing technology, which is insufficient under Step 2A to result in a finding of patent eligibility.

Under Step 2B, the Federal Circuit pointed out that the claims only recite routine, conventional activities such as identifying undeliverable mail items, decoding data on those mail items, and creating output data. The claimed invention does not improve the functioning of the computer or barcode system. Instead, the claimed invention merely applies those functionalities in the context of processing returned mail. This was not enough to demonstrate the presence of an inventive concept to turn an otherwise abstract idea into patent-eligible subject matter.

Although irrelevant to the discussion of patent eligibility, it may be interesting to note that it is curious as to how these patent claims were susceptible to CBM review. In Unwired Planet LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016), the Federal Circuit had previously ruled that an invention that can be used for a financial business purpose does not mean that the patent qualifies for CBM review. See Federal Circuit Slams PTAB. In this case the invention could be used as part of a financial process, but could also be used for many more uses outside a financial context.

 

Smart Systems Innovations v. Chicago Transit Authority (Oct. 18, 2017)

The patents in question deal with various methods of using a bankcard to fund mass transit rides through the use of an open-payment fare system, which allows riders to conveniently and quickly access mass transit by using existing bankcards, thereby eliminating the need for, and added operational cost of, dedicated fare-cards.

In its appeal, Under Step 2A, the Federal Circuit panel found that the asserted patent claims, when taken together, are directed to financial transactions in the field of mass transit and not directed to a new type of bankcard, turnstile, database or methods for processing data that would improve existing technological processes. The Federal Circuit panel was unconvinced by Smart Systems’ argument the claimed invention solved time of transaction issues at turnstiles.

With respect to Step 2B, Smart Systems argued that the asserted claims solved a technical problem with conventional industry practice, and represent an unconventional way to make an electronic process better. The Federal Circuit disagreed, finding that the asserted claims failed to provide an inventive concept. The Federal Circuit explained the asserted claims recite the abstract idea of collecting financial data using generic computer components and, therefore, offer no inventive concept that transforms them into patent-eligible subject matter.

In dissent Judge Linn would have found the claims of two of the asserted patents to be patent eligible under Step 2A. More specifically, Judge Linn explained that to find the claims abstract the majority had to rewrite the claims, or at least ignore the specific limitations of the claims, which specifically relate to a transit system and incorporate various physical components.

The moral of the story here may well be that payment gateways will be perceived to be both abstract and non-inventive regardless of whether they address existing problems in an innovate way and incorporate tangible elements into the claim.

 

Two-Way Media LTD. V. Comcast Cable Communications, LLC (Nov. 1, 2017)

The patents at issue describe the invention as an improved scalable architecture for delivering real-time information. Embedded in the architecture is a control mechanism that provides for the management and administration of users who are to receive real-time information. The patents also describe monitoring network conditions and generating records about the real-time streams.

The claims at issue recite either: (1) a method for routing information using result-based functional language, (2) monitoring the delivery of real-time information to a user or users, or (3) measuring the delivery of real-time information for commercial purposes. The claims requires the functional results of “converting,” “routing,” “controlling,” “monitoring,” and “accumulating records,” but does not sufficiently describe how to achieve these results in a non-abstract way. The proposed construction by Two-Way Media, that the claims are sufficiently tied to a particular scalable network architecture, were unpersuasive. The Federal Circuit explained that “[a]t best, the constructions propose the use of generic computer components to carry out the recited abstract idea, but that is not sufficient.” Therefore, the claims were found under Step 2A to be directed to an abstract idea.

Under Step 2B, the Federal Circuit found the claims lack an inventive concept, which precludes patent eligibility. Particularly important is the fact that Federal Circuit agreed with the district court conclusion that while the specification describes a system architecture as a technological innovation, the claim did not recite this architecture even under construction offered by Two-Way. The Federal Circuit further explained that the claim uses a conventional ordering of steps with conventional technology being used to achieve the desired result. Furthermore, the Federal Circuit did not see any inventive concept in the ordered combination of the limitations found in the claim, as can sometimes save a claim – See BASCOM. Thus, the claim failed to transform the abstract idea into something more and, therefore, the claim was not patent eligible.

 

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 209 Comments comments.

  1. Paul Johnson December 17, 2017 12:36 pm

    You mentioned that Trading Technologies received patents in Europe. I’d love to see an article that compares software patent eligibility between the U.S. and Europe.

  2. Night Writer December 17, 2017 2:05 pm

    A giant bag of nonsense. None of this deals with the equivalency of software/hardware/firmware nor does it deal with the structure of software. Additionally, information processing takes time, energy, and space, and the conservation of information is the most important law of physics.

    And, seriously? A machine that takes space, energy, and time to perform information processing that does what a justice does is not patent eligible? This is medieval thinking at best.

  3. Curious December 17, 2017 4:43 pm

    Wrong technology + wrong judges = patent ineligible
    Wrong technology + right judges = patent ineligible
    Right technology + wrong judges = patent ineligible
    Right technology + right judges = coin flip as to eligibility

    The right and wrong judges are pretty evident to those practicing. For example, Dyk and Newman are pretty much at the two ends of the continuum.

    As for what constitutes “right” versus “wrong” technology, if it has anything to do with either software or biotechnology, then there is two strikes towards being wrong. If it is a small player suing a larger player, then it is another strike towards being wrong. Is the technology simple enough that the judge understands it, that is another strike towards being wrong. Is the technology something practiced by one of the tech behemoth’s (e.g., Google, Facebook), then its two strikes towards being wrong.

    Sometimes one strike is enough to get you into the “wrong” category technology category. Other times, it takes a little more.

    Everybody got that?

  4. Paul Johnson December 17, 2017 4:44 pm

    Night Writer :
    What is a giant bag of nonsense?
    In what respect is software, firmware, and hardware equivalent?
    In your last paragraph, what machine are you referring to?

  5. Edward Heller December 17, 2017 6:10 pm

    Excellent summary Gene.

    From the above, one can break software-related inventions down into the following:

    – Abstract elements including business methods;

    – Software;

    – Computer hardware.

    Typically, in software-related inventions, there is no new computer hardware. So we can set that the one side.

    If there is novel and inventive software for carrying out the invention and it is specifically claimed, more likely than not, the patent claim will be held eligible. The one exception to this that I can see is Versata, that implemented an old business method with novel software and yet the Federal Circuit held that the claim was directed to a business method and for that reason ineligible.

    If finally, nothing else is recited in the claim but inventive abstract ideas including inventive business methods, but software and hardware is only generically referenced, the claim will likely be held ineligible. If the specification discloses innovative software that implements novel business methods, that innovative software must be included in the claim in order for the claim to have any chance of all for being held eligible.

    This one more observation about Diehr, recall that the Steven’s dissent would’ve held the claim ineligible looking at the software algorithm in isolation and ignoring the rest the claim that described a conventional process that otherwise passed MOT. When the majority talked about dissection, is specifically said that one cannot look at the novel subject matter in isolation and ignore the old elements in the claim. It appears to me that the Federal Circuit is specifically following Diehr when it makes a distinction about whether the abstract mathematics is improving an underlying process that is otherwise eligible (in that it passed MOT), or is improving a process that is otherwise abstract. From Gene’s discussion of Recognicorp:

    RecogniCorp argued Diamond v. Diehr, 450 U.S. 175 (1981) was dispositive in its favor because of the presence of a mathematical formula in the claims. The Federal Circuit explained that adding one abstract idea (i.e., math) to another abstract idea (encoding and decoding) does not render a claim non-abstract. The Federal Circuit distinguished Diehr by saying the Supreme Court focused on the claim as a whole, and the patent claim in Diehr was directed to otherwise eligible subject matter, while the claim of the ‘303 patent was not.

  6. Ternary December 17, 2017 6:32 pm

    I agree with Night @2. We should not buy into the notion of a computer “being directed to an abstract idea.” A computer is a machine, full stop. Even a basic integer multi-digit adder is a pure signal switching device, not a mathematical device. In fact an electronic digital calculator is probably one of the least abstract machines that I know. No symbols, digits, ideas, concepts exist inside a machine, and despite what some people believe even 0s and 1s do not exist inside a computer. There are LOW and HIGH signals that determine physical states of devices. That’s all there is to it. Only the concepts outside the I/O interfaces of a computer are abstract as being in our mind. The rest is hard technology. The issue that SCOTUS (and others) want to address with Alice is “the invention is too easy, I could do that.”

    I like the article as part of an ongoing discussion how to address or prevent 101 rejections. However, in this time of bitcoin, MRI machines, complex cryptography, artificial intelligence, digital signal processing, on-line social networks, on-line shopping, etc. it is worthwhile to repeat that it is completely nonsense to declare a computer an abstract idea. (wait, SCOTUS cleverly declares “directed to an abstract idea”)

    No matter how “abstract” your intent is with a computer, in the end the machine has to be built, powered, programmed and connected. Only a correction by Congress on 101 will fully address the Alice issue and remove its arbitrary uncertainty bestowed upon of an entire (and important) branch of technology. Chinese efforts to play a dominating role in this field make the issue probably more urgent than we realize. Where the Japanese failed the Chinese may succeed based on their incredible entrepreneurship that is further being unleashed. (taking a lesson from the American playbook).

  7. Edward Heller December 17, 2017 6:36 pm

    Ternary: I agree with Night @2. We should not buy into the notion of a computer “being directed to an abstract idea.”

    Whether or not a computer is directed to an abstract idea, is hardly the question in these cases. The question whether the invention is directed to a new or improved computer?

  8. Night Writer December 17, 2017 6:58 pm

    @4 Paul Johnson software, firmware, and hardware equivalent?

    Anyone worth their salt with an engineering degree in CS/EE knows this. They are equivalent because you can build a special purpose chip to implement any software and you can use software to implement the functions of any circuit.

    And the machine is an information processing machine.

    @7 Ed the Ned: we have 102/103 for “whether the invention is directed to a new or improved computer.” We do not need 101 for that.

  9. Ternary December 17, 2017 7:09 pm

    Edward,
    In Alice v. CLS Bank “We hold that the claims at issue are drawn to the abstract idea…” That is the entire issue, front and center. All of the above cases mention “abstract idea.”

    A computer with a novel and non-obvious instruction set is a novel and non-obvious machine. But SCOTUS (and many others who believe it is all too simple) does not want that, hence the abstract idea.

  10. Paul Johnson December 17, 2017 8:17 pm

    Night Writer:
    Just below where it says “Post a Comment”, it says “Respectfully add to the discussion.” In the future, please do so. (I will not respond to any of your future posts, as you have decided not to be respectful.)

  11. angry dude December 17, 2017 8:23 pm

    software == hardware

    write it on your foreheads and give it a rest already, pleeeeze !!!

    Any software program should be treated as a special purpose computer when it gets executed: it has ins and outs and it does move electrons and consumes energy

    What is so difficult to understand here, people ???

    The claim language (method or apparatus or code as such) is an entirely different matter completely separate from patent eligibility of “software” vs “hardware”

    Figure it out but please do not make fools out of yourself by denying basic laws of physics and common sense altogether

    I just can’t believe that the fate of this (used to be) great country is in the hands of fools (or very corrupt and dishonest people)

  12. Night Writer December 17, 2017 9:27 pm

    @11 Angry dude:

    The other “fools out of yourself by denying basic laws of physics and common sense altogether” is by claiming that software has no structure. How can something without structure provide additional functions? Not possible. Yet that is what Mark Lemley claims.

  13. Edward Heller December 17, 2017 9:38 pm

    Night, [W]e have 102/103 for “whether the invention is directed to a new or improved computer.”

    OK, Night. Just a test:

    Claim 1,

    Apparatus comprising;

    Novel business method; and

    a generic computer.

    Is this “invention” directed to an new or improved computer?

  14. Edward Heller December 17, 2017 9:41 pm

    Ternay, but the claim has to claim the new and unobvious computer “code” or process. Gene’s rendition point out that the claims held to be ineligible never did claim any new computer process or software. The novelty invariably was in the business method or the like.

  15. Night Writer December 17, 2017 9:49 pm

    @13 Ed the Ned

    Of course it is. You are trying to add a technological test.

    One thing Ed that you have never addressed is business methods (which actually have no definition, but I’ll play along) that are improved by the use of the computer. The fact is that business methods and information processing machines have been combined with the result of new business methods that would not be possible without the information processing machine. This is a classic example of a new inventive field being opened.

    Anyway, a computer that is configured by the software is a new and improved machine. And, again, you don’t address the equivalence of software and hardware. Is it an improved machine if it is a special purpose chip to perform the method of the business method?

  16. Night Writer December 17, 2017 9:51 pm

    @10 Paul: I am not sure what you are offended by unless you are a CS/EE person. But, you have entered a field of law filled with propaganda and unethical academics and practitioners. There is massive lobbying money pouring into K Street. Your questions are the typical questions asked over and over again by the judicial activists that are trying to exclude computers from patentability. I get a bit salty when asked these questions.

  17. B December 17, 2017 9:57 pm

    The reason for the idiotic and irreconcilable s101 holdings from the CAFC is simple: Certain judges (e.g., Reyna and Stoll) in the CAFC have divorced the Doctrine of Preemption from the s101 exception. Preemption is the ONLY policy recognized by the SCOTUS for the exceptions to patent eligibility – even after Alice Corp. That said, the CAFC has abrogated the preemption concerns in favor of capricious declarations against whole categories of inventions just because. Further, when these judges are challenged to name something that is preempted by a claim, they shout “Ariosa” and announce that their s101 analysis fully satisfies and makes moot all preemption concerns.

  18. B December 17, 2017 10:01 pm

    ‘The issue that SCOTUS (and others) want to address with Alice is “the invention is too easy, I could do that.”’

    BINGO, and the liberal arts majors are the worst

  19. angry dude December 17, 2017 10:32 pm

    B@18

    “the invention is too easy”

    invention is never easy – at has to be unobvious after all (aka unreproducible by other people skilled in the same art in the absense of patent specification)

    We live in the technological day and age when everything is “software”:
    I can print any hardware part on 3D printer in a few minutes – all controlled by software I write
    I can design and test and then submit for mass production any analog or digital circuit using only software – without ever physically touching any electronic component

    I can spend hours in virtual reality looking at objects as real as they can be that are nothing but software codes running on my GPU and changing the color pixels in my headset

    People, me thinks this country needs new (technological) leadership

    And not the one appointed by Google

  20. B December 17, 2017 11:21 pm

    I wonder what these same judges would hold for an automatic transmission that changes gears based upon a simple equation. Rotational speed and torque changed to a different rotational speed and torque using math. Done mechanically instead of with a computer. The CAFC needs to explain how such a transmission isn’t abstract under RecogniCorp.

  21. Ternary December 17, 2017 11:31 pm

    Edward @14. In Two-Way Media (check it out for yourself) the claim requires “converting a plurality of streams of audio and/or visual information into a plurality of streams of addressed digital packets complying with the specifications of a network communication protocol, etc” is a highly technical effort. You cannot convince me that this is conventional and routine for humans. Humans cannot address, route and re-assemble audio packets. Who came up with that idea?

    To break up an audio stream or video stream into packets, address them correctly, route them through networks and re-assemble the packets at the destination into the original audio or video stream as claimed is an extraordinary technical achievement, basically the fundament of the Internet (well, packet switching). That is not a business method, let alone abstract.

    To assert and accept abstractness against lack of novelty is a lazy and uninformed way to reject unwanted claims. It also makes validity of claims a complete crapshoot. As said elsewhere, we have 102/103 to assess novelty and non-obviousness.

  22. Benny December 18, 2017 7:19 am

    B @20,
    Using your gearbox analogy, if you were to improve on the “simple equation”, have you invented a new mechanical gearbox, or an improved method of controlling an existing gearbox? Would you apply for a separate patent if your algorithm controlled a VW trannie instead of a Ford type? Unlike Angry dude, I don’t see a black/white choice here, there is a lot of grey in between. It would be easy to list mathematical (law of nature) equations which do not magically become patent eligible if they are typed into the function field of an Excel file. Algorithms for the control of industrial robots, for example, which result in physical interaction with the outside world, should obviously be considered a variation of a machine, and are not abstract. The middle ground, it seems, is worth millions in legal fees.

  23. Anon December 18, 2017 8:00 am

    Benny,

    I am not sure I understand your post. Something is – or is not – “abstract,” so your view of “lot of grey in between” does not reach. This is a binary call for any single instance.

    Where is the grey?

  24. EG December 18, 2017 8:11 am

    “[I]n practice, deciding whether a claimed invention is directed to an abstract idea and/or adds significantly more than the abstract idea has proved to be rather subjective.”

    Hey Gene,

    Exactly. With the broken and nonsensical Mayo/Alice framework, I could predict patent-eligibility better using a Ouija board.

  25. Benny December 18, 2017 8:31 am

    Anon at 23,
    Given that differing interpretations can be -and are – presented (by applicant and examiner, for example) as to whether a a given idea is abstract or not, I don’t see this as a binary call. If one side doesn’t happen to agree with Anon’s worldview, I don’t automatically accept that as proof that the argument is wrong.

  26. Anon December 18, 2017 10:18 am

    Benny,

    The end result IS – and must be – a binary call.

    The lack of certaintude as to WHAT that binary call ends up being should not be confused with the fact that it must come down to being Abstract or not Abstract.

    In the end, there is NO third option.

    This is NOT a matter of anyone “agreeing with Anon’s worldview” – rather strange that you wish to make it so.

    Separately, EG @ 24: the concept you may be reaching for is called “Void for Vagueness.”

    Given that it appears that at least the CAFC is accepting what the Supreme Court has done with 101 as re-writing the law, the application of the doctrine of Void for Vagueness certainly applies. As we both know (as everyone should know by now), the doctrine of Void for Vagueness is NOT limited to criminal law matters.

  27. Ternary December 18, 2017 10:43 am

    An idea is not patent eligible in this country. Beyond that there is not much wiggle room in the statute, about “directed to an abstract idea.” We needed a “judicial exception” based on…! Yeah, based on what actually? You have to perform quite some mental gymnastics to convince yourself that a machine or process that produces a “useful, concrete, and tangible” result is actually drawn to an abstract idea.

    SCOTUS probably would have preferred stating that “we don’t like business methods and we don’t like math, actually we don’t like (or understand) computers and software. Thus we declare inventions with that subject matter as patent ineligible.” But that would have been a step too far. So they came up with the brilliant idea of “drawn to an abstract idea” which sounds like a church canon. It reflects a breath-taking lack of understanding of modern science and engineering. No grey area involved here. A machine is empirical and not an abstract idea.

  28. Anon December 18, 2017 11:32 am

    Ternary,

    I concur.

    Further to your ‘idea,’ it is the epitome of inte11ectual dishonesty to NOT accept the plain fact (basic reality) that software is a manufacture (as that term is legally understood).

    Some other maxims that provide clarity:

    Software is not the thought of software.

    Software is not the execution of software (with all due respect to Gene and others that wish to refer to process claims as ‘software,’ this “use” only begets more trouble than it is worth. Yes, it is understood that the nature of software makes it easier to discuss the manufacture itself as if it were a process [with action words] – but that “ease” comes with a concomitant “ease” of others obfuscating the nature of the discussion, and thus should be avoided).

    A machine that has not been changed (reconfigured) WITH software cannot somehow “magically” “just use” the software. This is often a necessary first step that is omitted from conversations. This too is properly reflected in the patent doctrine of Inherency.

    Additionally, (and in part in reference to Benny @ 22), software is NOT:
    – math
    – logic
    – a story

    Much like most any other engineered item, software may apply math and logic. It is (also) a bit unfortunate that “ease of language” with software has created further obfuscation opportunities regarding “math,” “logic,” and “stories.” But if one is inte11ectually honest, deliberate, and legally careful, the obfuscation dissipates and the actual nature of innovation (the most prolific modern form of innovation at that) is quite clear.

  29. B December 18, 2017 12:37 pm

    @Benny

    “Unlike Angry dude, I don’t see a black/white choice here, there is a lot of grey in between.”

    I suspect that’s because, as with most judges, you do not associate the exception to s101 with preemption. Tell me what is preempted, and perhaps I’ll agree with you, and please don’t give me that preemption doesn’t need to be complete argument as all patent claims partially preempt an abstract idea.

  30. Night Writer December 18, 2017 12:57 pm

    @27 :Ternary

    Exactly. I think Alice is sufficient to impeach each of the 8 remaining justices.

  31. Edward Heller December 18, 2017 1:58 pm

    Ternary, regarding Two-Way Media, according the Gene’s write up, the problem with the claim to the multiple streams was that they were claimed at the level of an idea – results – just do it. Even if there was invention disclosed in the specification – the patentee argued that the architecture disclosed in the specification itself was inventive – the claim did not claim it. According to Gene’s write up, “The claim did not recite this architecture even under construction offered by Two-Way.”

    This is a problem of claiming, not a problem of there not being a disclosed invention.

  32. B December 18, 2017 2:12 pm

    “Ternary, regarding Two-Way Media, according the Gene’s write up, the problem with the claim to the multiple streams was that they were claimed at the level of an idea – results – just do it.”

    Yes, we in the patent industry call that a “method claim.” Look it up.

  33. Edward Heller December 18, 2017 2:22 pm

    B, in that sense, claim 8 of Morse too was a method claim. Look it up.

  34. Anon December 18, 2017 2:48 pm

    Mr. Heller,

    Your view of Morse (and the defense of the Supreme Court) are NOT positives. That you feel compelled to a defense of the errant is part and parcel of why you are viewed as you are.

    Further, as has been discussed in other forums, the claim 8 of Morse was MISREAD by the Supreme Court (as you yourself have admitted, once upon a time: think physicality of the actual shift register).

  35. Ternary December 18, 2017 3:00 pm

    Edward, I am not sure why you are hiding behind “Gene’s write up.” The decision (follow the link) says:

    “The ‘187 and ‘005 patents are directed to the abstract idea of (1) sending information, (2) directing the sent information, (3) monitoring receipt of the sent information, and (4) accumulating records about receipt of the sent information. The claims are thus directed to methods of sending and monitoring the delivery of audio/visual information.”

    What is claimed (see also @21) is basically a way of packet switching, which is highly technical and is far beyond a mere idea, ask Cisco. There is nothing conventional or routine in that. To reduce packet switching by the Court to “sending information” is like reducing Carlson’s invention of the Xerox process to copying bible texts by monks in medieval times. It is all directed to an abstract idea. To assert that packet switching is directed to the abstract idea of transmitting information is lazy, uninformed and unscientific.

  36. B December 18, 2017 3:01 pm

    “B, in that sense, claim 8 of Morse too was a method claim. Look it up.”

    There were no method claims allowed in 1852, but I digress. Morse’s claim 8 preempted electromagnetism’s use in communication 100%. Now what did the 2-way media claims preempt?

  37. Edward Heller December 18, 2017 3:06 pm

    anon, You have stated that you think that the Bilski claims were eligible. But, almost no one else in any court agrees with you. You continue to insist, as you do, that Morse is wrong, that the English cases it relied on were wrong, that the whole weight of Supreme Court and English common law is wrong, but that you are right and that anybody who disagrees with you is anti-patent is simply beyond the pale. It simply shows you and your fellow travellers who believe as you do to be radicals, not mainstream. You have to understand this, but since you associate being pro-patent with your radical agenda you will and, I believe, have actually undermined the currency of being pro-patent because normal people do not want to have anything to do with you.

  38. Edward Heller December 18, 2017 3:11 pm

    B, Art, method, process: all the same thing. They did exist in 1852. The problem was claiming any invention at the level of an idea by claiming its results, not what it was. That was the problem the Feds identified with the claim in Two-Way Media.

  39. Edward Heller December 18, 2017 3:18 pm

    Ternary, I am relying on Gene’s description only. According to his summary, the reason the plural stream claims were found wanting was they were claimed at the level of an abstraction: in terms of results. Even with method or process steps, one must claim an act, not simply a result.

    For more on what this means, check out the Supreme Court cases of Perkins Glue or Rubber-Tip Pencil. The former claim a glue in terms of its properties instead of the process to make it or its composition. The latter claimed a piece of rubber for use on the tip of a pencil. There were no details at all on how this was to be accomplished.

  40. B December 18, 2017 3:31 pm

    “B, Art, method, process: all the same thing. They did exist in 1852.”

    Really? Please point to the specific text in the 1793 or 1836 patent act that allows for method claims.

  41. B December 18, 2017 3:36 pm

    “The problem was claiming any invention at the level of an idea by claiming its results, not what it was.“

    You obviously never read two-way. You also avoided my question. What is preempted?

  42. Edward Heller December 18, 2017 4:05 pm

    Art.

    Same thing.

    Process and method claims were allowed from the very beginning. The very first patent was on a process.

  43. B December 18, 2017 4:24 pm

    “Process and method claims were allowed from the very beginning. The very first patent was on a process.”

    I’ll concede the issue, although Morse never relied on a method claim – so I miss your point.

    That said – I’m still waiting for your answer as to what is preempted in Two-Way Media?

  44. B December 18, 2017 5:22 pm

    “That said – I’m still waiting for your answer as to what is preempted in Two-Way Media?”

    I’ll answer the question you so desperately avoid. The answer is NOTHING. In fact, Judge Reyna avoids the issue completely by citing Ariosa Diagnostics and declaring that the “preemption concerns are fully addressed and made moot.”

    Judge Reyna is so full of it. Nothing like spewing an idiot holding that legal theory supplants reality,then citing your idiot theory any time an attorney with a brain tries to address preemption.

  45. Edward Heller December 18, 2017 5:32 pm

    B, back to you. What does particularly pointing out and distinctly claiming the invention have to do with preemption? Claiming results does not claim the invention, but the result of the invention. It also claims all other methods or apparatus that achieve the same result by different means or methods.

    There is a reason for 112(b).

    Please, try to understand the problem the Supreme Court was trying to address.

  46. Curious December 18, 2017 5:41 pm

    Even if there was invention disclosed in the specification – the patentee argued that the architecture disclosed in the specification itself was inventive – the claim did not claim it.
    Certainly not the first time, but the Federal Circuit again chooses to ignore the statute — in this case 35 USC 112. There is a difference between the first and second paragraphs. The first paragraph is about enablement and that is satisfied by the specification. The second paragraph is about distinctive claiming — i.e., distinguishing the invention over the prior art. There is no requirement that a claim have to describe/enable the entire invention — only that the claim distinguish the invention over the prior art. This means that all the stuff from the specification doesn’t have to make it into the claims.

    In Bilski, SCOTUS stated that: This Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’” By requiring additional stuff in the claims, the Federal Circuit again fails to heed the Supreme Court’s caution.

    The former claim a glue in terms of its properties instead of the process to make it or its composition. The latter claimed a piece of rubber for use on the tip of a pencil. There were no details at all on how this was to be accomplished.
    That is a problem of enablement — not claiming something as an “abstract idea.”

  47. Edward Heller December 18, 2017 5:47 pm

    Curious, enablement certainly is an issue at times. But the court has already been clear that there is a separate and distinct problem of not claiming the invention.

  48. Anon December 18, 2017 5:49 pm

    Mr. Heler @ 37.

    Your post is so full of errors I scarcely know where to begin.

    But let’s just cut to the chase here: YOUR views are not pro-patent views.

    You may have SOME views that align with pro-patent views.

    But by and large your views on 101 are not those that align with pro-patent views.

    NO amount of (attempted) spin from you can change that.

  49. Edward Heller December 18, 2017 5:55 pm

    anon, as I said before, one does not have to be radical to be pro-patent. It simply makes me cringe to have have as a litmus test for being pro-patent to be in favor business method patents. I believe you are completely unwilling to accept the concept that the majority of the opposition to the patent system as a began to emerge in early 2000s was engendered by business method patents. They have brought opposition to the patent system mainstream. It is hard to argue against these folks on issues like the PTAB when you have people on your site arguing in favor of business method patents which the courts and Congress have uniformly been against from the very foundation of this country.

  50. B December 18, 2017 6:18 pm

    “B, back to you. What does particularly pointing out and distinctly claiming the invention have to do with preemption?”

    Funny, Reyna doesn’t address this issue in Two-Way Media. Where exactly is the 112 rejection? Oh, it doesn’t exist. You fabricate faster than Reyna

  51. Edward Heller December 18, 2017 6:33 pm

    B. 112 rejection? You got me there.

    I can give you chapter and verse on what happened since Halliburton, but the short of it is that the CCPA and the Federal Circuit (and even the Supreme Court) ignored the requirement that a claim particularly point out the invention. As a result, the Supreme Court surprisingly brought it back in Bilski. Now, claiming results is not a 112(b) problem, but a 101 problem.

    But the reasoning is the same: if one claims the result of invention but not the invention, one is not claiming the invention. They are also preempting too much — more than just equivalents of what is disclosed.

    Thus a composition claimed in terms of its properties, a machine in terms of its operation, a process in terms of its results does not claim the invention with any particularity. Such claims, however, are routinely granted by the PTO and now face a 101 problem.

  52. B December 18, 2017 7:04 pm

    “B. 112 rejection? You got me there.”

    Then why in God’s name are you bringing 112 up? What does 112 have to do with preemption?

  53. Anon December 18, 2017 7:34 pm

    The reasoning is the same…?

    And you support this Supreme Court mashing of law?

    Ned – YOU are the radical here, even as you label me with that term.

  54. Pro Se Pro December 18, 2017 11:57 pm

    Mr. Heller, I agree with anon. And the Supreme Court disagrees with your assumptions that business methods are an abstract idea. Also business methods are not categorically ineligible. Finally Diehr does not stand for MOT. (See Bilski) . Consider yourself corrected. And you are welcome.

  55. Curious December 19, 2017 1:02 am

    It simply makes me cringe to have have as a litmus test for being pro-patent to be in favor business method patents.
    What’s wrong with a patent on business methods? Whatever that means anyway.

    The problem with snubbing your nose up at business methods is that it opens the door to a whole slew of rejections on software claims that are separate and distinct from business methods. I cannot tell you how many applications I’m handling that have pending 101 rejections on claims that are entirely implemented on a computer, would always be implemented on a computer, and even under the broad interpretation, would never be considered a “business method.”

    Once you allow the Courts to pick the winners and the losers, no subject matter is sacred. By eschewing bright lines, we have continual line creep so now we have wide swathes of technologies that are in danger of being deemed abstract ideas that weren’t even close to being deemed abstract ideas 10 years ago. Historically, the Courts have always been hostile to patents. I suspect the very notion of patents offends the egalitarian view of many judges that one shouldn’t own ideas (whether embodied or not) and their dislike of monopolies, in general (patents aren’t monopolies but judges like to call them monopolies). As such, as soon we let the Courts decide the technology winners and losers, over time, there will be less and less winners and more and more losers.

    The notion of granting patents on so-called “business methods” does not offend me in the least. In fact, I’m not offended by the patenting of even silly ideas. So long as the idea is useful, novel and non-obviousness, I always prefer more patenting over less patenting.

    The ENTIRE POINT of the whole patent system is to ENCOURAGE INVENTION. Let me repeat that because of its importance — the ENTIRE POINT of the whole patent system is to ENCOURAGE INVENTION. We, as a society, will always be better off when there is more invention rather than less invention.

    Many inventors will tell you that invention is a learned art — the more you do, the easier it becomes. Look at kids at a science fair — future inventors. How do you think they would react if a patent attorney, a so-called “expert” in invention, walked into every booth and told every that their ideas were stupid, wrong, old and/or a waste of time. How many of those kids do you think will be motivated to spend 20 hours of their time for next year’s science fair?

    I recall a conversation (a long time ago) I had with in-house for one of the US National Laboratories — clearly, a very high-tech hotbed of inventive activities. He was explaining to me about a particular disclosure that didn’t seem very special (as compared to the other disclosures that were coming out). What he told me was that this particular group of employees wasn’t producing disclosures and in-house counsel wanted to encourage them to engage in the patent system. To that end, he agreed to have a patent application prepared for a questionable technology. His philosophy of encouraging the inventor stuck with me ever since.

    Getting back to so-called “business method” patents, from my experience many (but certainly not all) of these patents are what I considered “easy” ideas to understand and consequently ideas that anybody could come up with (i.e., they don’t need a particular technological background). Put differently, they are “entry-level” patent ideas. Also, given where the economy is headed, ideas that are both valuable and can be something that even the average person can come up with. However, what is going to happen to all of these entry-level inventors when their ideas get slapped down by the Courts/USPTO? Do you think they are going to continue to engage the patent system? Doubtful — more likely, they’ll become like “angry dude” — someone who will tell anybody willing to listen that the US Patent System is a joke and rigged against the small guy. Do you think that is going to encourage more invention?

    Without fail, every time the Courts and the USPTO invalidate/reject claims based upon 35 USC 101, they discourage invention and/or they discourage the participation of inventors in the US Patent System. What I find particular disheartening is that the Courts are training a whole generation of engineers, small-business owners, and garage inventors not to believe in the US patent system. Today, we live in an environment where large corporations have little fear in co-opting the technologies of others because the US patent system has been effectively neutered for all but the most powerful. Does anybody believe that will encourage more invention? The ever-expanding scope of the abstract idea exception to 35 USC 101 is just one of the many tools used by the efficient infringers mega-corporations.

    Getting back to you Ned — yes, the litmus test is about whether you want to see the Courts encourage innovation or do you want to see the Courts discourage innovation. The fight over business methods is just a proxy for that litmus test. You need to stop thinking about whether you are supporting, in your mind, patents on silly or inconsequential technology and start thinking more about the BIG PICTURE. The big picture is that our patent system is under attack by corporations that are willing to prioritize their profits over our country’s ability to be technologically competitive in the future. Who do you want to support? Those corporations or our country?

  56. A Rational Person December 19, 2017 1:35 am

    Curious@54

    I agree 100%. Throwing “business method patents” under the bus won’t silence the the people trying to demolish the U.S. Patent System. It will just be “blood in the water” to them that will only embolden them more.

    I will also note that China appears to be going exactly the other way from the U.S. with respect to patent eligibility which should be a wake up call to any American that cares about the economic future of the U.S.:

    http://www.ipwatchdog.com/2017/08/01/china-streamlines-patent-examination-internet-big-data-patent-applications/id=86356/

    I’m not seeing how losing out in the patenting of business methods to the Chinese helps the U.S. economy in the long run. It just looks like the U.S. be willing to give away leadership in yet another type of technology to another country I do not see how that benefits Americans.

  57. Night Writer December 19, 2017 5:37 am

    @54 Curious: there is no point in arguing with Ned the Ed. I’ve been having these discussions with him for like 10 years. From what I can see, Ned’s opinions on 101 have more to do with business decisions of his practice than intellectual rigor. Ned is also friends with the person behind Benson, R. Stern.

    (Again, business methods (whatever they are) plus information processing machines are a classic example of a new technology plus old needs generating many new inventions. One can see that in that the new business methods are often not ones that would or could practically be used.)

  58. Night Writer December 19, 2017 5:43 am

    Edward >Thus a composition claimed in terms of its properties, a machine in terms of its operation, a process in terms of its results does not claim the invention with any particularity. Such claims, however, are routinely granted by the PTO and now face a 101 problem.

    The bone you are after is not permitting functional claiming at what you call the point of novelty. That is your position, which you hide frequently.

    And, the attack on the patent system has come from functional claiming where it has become blurred with result based claiming. It is a pretty obvious attempt at confusing the judges on the Fed. Cir. and SCOTUS into holding that functional claiming isn’t OK.

  59. A Rational Person December 19, 2017 6:53 am

    Night Writer@56

    Business methods plus information processing machines are also a classic example of a type of technology that can be done by independent inventors or small companies without massive research budgets.

    As described in the book, “Why Nations Fail” by Acemoglu and Robinson, the ability of an individual in the United States of modest means to have a new idea and profit from the idea by obtaining a patent to protect the individual’s idea is one of the reasons the U.S. economy grew so rapidly in the the 19th Century in comparison to the Mexican economy:

    “HAVING AN IDEA, STARTING A FIRM, AND GETTING A LOAN

    The Industrial Revolution started in England. Its first success was to revolutionize the production of cotton cloth using new machines powered by water wheels and later by steam engines. Mechanization of cotton production massively increased the productivity of workers in, first, textiles and, subsequently, other industries. The engine of technological breakthroughs throughout the economy was innovation, spearheaded by new entrepreneurs and businessmen eager to apply their new ideas. This initial flowering soon spread across the North Atlantic to the United States. People saw the great economic opportunities available in adopting the new technologies developed in England. They were also inspired to develop their own inventions.

    We can try to understand the nature of these inventions by looking at who was granted patents. The patent system, which protects property rights in ideas, was systematized in the Statute of Monopolies legislated by the English Parliament in 1623, partially as an attempt to stop the king from arbitrarily granting “letters patent” to whomever he wanted—effectively granting exclusive rights to undertake certain activities or businesses. The striking thing about the evidence on patenting in the United States is that people who were granted patents came from all sorts of backgrounds and all walks of life, not just the rich and the elite. Many made fortunes based on their patents. Take Thomas Edison, the inventor of the phonogram and the lightbulb and the founder of General Electric, still one of the world’s largest companies. Edison was the last of seven children. His father, Samuel Edison, followed many occupations, from splitting shingles for roofs to tailoring to keeping a tavern. Thomas had little formal schooling but was homeschooled by his mother.

    Between 1820 and 1845, only 19 percent of patentees in the United States had parents who were professionals or were from recognizable major landowning families. During the same period, 40 percent of those who took out patents had only primary schooling or less, just like Edison. Moreover,
    they often exploited their patent by starting a firm, again like Edison. Just as the United States in the nineteenth century was more democratic politically than almost any other nation in the world at the time, it was also more democratic than others when it came to innovation. This was critical to its path
    to becoming the most economically innovative nation in the world.

    If you were poor with a good idea, it was one thing to take out a patent, which was not so expensive, after all. It was another thing entirely to use that patent to make money. One way, of course, was to sell the patent to someone else. This is what Edison did early on, to raise some capital, when he sold his Quadruplex telegraph to Western Union for $10,000. But selling patents was a good idea only for someone like Edison, who had ideas faster than he could put them to practice. (He had a world-record 1,093 patents issued to him in the United States and 1,500 worldwide.) The real way to make money
    from a patent was to start your own business. But to start a business, you need capital, and you need banks to lend the capital to you.

    Inventors in the United States were once again fortunate. During the nineteenth century there was a rapid expansion of financial intermediation and banking that was a crucial facilitator of the rapid growth and industrialization that the economy experienced. While in 1818 there were 338 banks in operation in the United States, with total assets of $160 million, by 1914 there were 27,864 banks, with
    total assets of $27.3 billion. Potential inventors in the United States had ready access to capital to start their businesses. Moreover, the intense competition among banks and financial institutions in the United States meant that this capital was available at fairly low interest rates.

    The same was not true in Mexico. In fact, in 1910, the year in which the Mexican Revolution started, there were only forty-two banks in Mexico, and two of these controlled 60 percent of total banking assets. Unlike in the United States, where competition was fierce, there was practically no competition among Mexican banks. This lack of competition meant that the banks were able to charge their
    customers very high interest rates, and typically confined lending to the privileged and the already wealthy, who would then use their access to credit to increase their grip over the various sectors of the economy.”

  60. A Rational Person December 19, 2017 7:26 am

    Night Writer@56,

    Also, as I’ve discussed on another patent blog, the whole stupid Alice-Mayo test ignores the fact that as our understanding of science and technology improved, the way various inventions have been claimed became more “abstract”, even in such technological fields as chemistry, not normally associated with the Alice-Mayo test, where thanks to the work of chemists such August Kekulé, inventors could claim new compounds and chemical processes based on their chemical structures.

    However, if the Alice-Mayo test were to be applied strictly to chemical processes, an Examiner or judge who wanted to, could logically argue that virtually all chemical processes are patent ineligible, because they are just a mixture of applying a natural laws and conventional steps. In chemical processes, almost all of the steps such as mixing, heating, cooling, separating (by gravity, filtering, distilling, etc.), maintaining at a particular temperature, applying pressure, conducting a step the presence of a material (such as a catalyst or a particular gas) or in the absence of a particular material (such as air or water) have been known for a very long time and in some cases, since the beginnings of human civilization. What is often “new” in a chemical process are the particular starting materials and the parameters associated with those materials, such as their boiling points, the compounds or elements that catalyze their reactions, etc. all of which could be considered “natural laws”.

    So, an Examiner or judge, if the Examiner or judge wanted to, could break down virtually any chemical process into a mixture of conventional steps and applied natural laws based on a strict reading Mayo, which of course, shows the absurdity of the Mayo decision. And remember, that in Mayo, the compound that was administered was synthetic, so the properties of even a man-made compound have “natural laws” associated with them based on Mayo.

  61. Night Writer December 19, 2017 8:02 am

    @58 and 59 A Rational Person

    Both really good comments. Any well-trained engineer knows of the ladders of abstraction and knows that functional language is used to capture known solutions. Both these things are taught to first year students at the top engineering schools.

  62. Anon December 19, 2017 9:39 am

    A Rational Person,

    While you have a good example with chemistry, It is not just chemistry (and your counter is a good one on a list of counters that never seem to be addressed by those that are anti-patent).

    Another example is the proverbial “Big Box of Protons, Neutrons, and Electrons.” Once you have the elementary particles, all that you have is “laws of nature” on how those elementary particles go together.

    Note that one “rebuttal” is that it is the configuration of the “chemistry” that matters. Funny how that configuration “works” there, but as soon as you venture into the “non-desired” zones, “configuration” no longer seems to be recognized, and instead “mere use” and “conventional” and “generic” become the buzz words. How much more “generic” can you get than with three fundamental particles? How much more “conventional” can you get than with nature’s own building blocks?

    What those with anti-patent dispositions continue to fail to grasp is that the logic employed in their arguments does NOT stop with their personal “Windmills” (for example, the personal “Windmills” of anti-business method or anti-software patent).

    No, when critical thinking is applied to the positions taken, one can easily see that the logic is simply not limited as to those particular desired ends. The logic extends and shows the positions taken necessarily extend from anti-particular to being (merely) anti-patent.

  63. A Rational Person December 19, 2017 10:20 am

    Anon@62,

    To further elaborate on your point, once you have the elementary particles and the fundamental forces (strong interaction, weak interaction, electromagnetism and gravity), all that you have is “laws of nature” on how those elementary particles go together and interact with each other.

    But your point is well-taken.

  64. A Rational Person December 19, 2017 10:44 am

    Night Writer@61

    My posts were inspired in part by your posts elsewhere about the importance of the patent system being available to the “little guy.” They are also a response to the podcast I heard on Freakonomics radio titled “Are We Running Out of Ideas?”

    http://freakonomics.com/podcast/no-new-ideas/

    The people in this podcast discuss how expensive research has gotten and why this is why we are supposedly “running out of ideas”. Interestingly, they note the independent inventors of the 19th century and early 20th century, such as the Wright Brothers, that did not need a multi-million dollar research budget, but don’t make the connection to how advancements in computer technology potentially allow many great ideas to be created in computer-related and software-related technologies with only a modest outlay of hard cash for research.

    What is making it harder for startups is not that people are “running out of ideas,” but that, thanks to our increasingly broken patent system, inventors cannot protect their inventions from efficient infringement, which makes it harder to find investors for their companies.

  65. Edward Heller December 19, 2017 11:38 am

    Curious, good post. I do not deny that patenting inventions encourages inventive activity. It is simply that the Constitution only permits patenting of inventions to promotes the advance of the useful arts. Certainly, by no stretch of the imagination, could a business method be deemed to be within the useful arts.

    If everything else were equal and all we were discussing was what would be good or not good for America, perhaps you have a persuasive point. But if we include law and ask what is legal, then the answer the question is just one.

    Regarding individual inventors, I have seen several key technologies of the disk drive industry that were originally patented by individual inventors who were thinking out of the box at the time they filed a patent applications. One of these invent that the carbon overcoat for discs. Another invented the design of a thin film head. The first inventor was a patent attorney who worked in Silicon Valley and develop his technical expertise by working on patent applications for clients across the Valley. The second inventor was an employee of a disk drive company that was laid off when his company was acquired by another.

    To invent in the area of high technology, one has to know that technology. He can’t simply learn it in school. For example, I knew Eli Harari. He was able to form SanDisk because he invented a new type of flash cell. But he could only do that because he had prior experience in the industry. He worked at Hughes Microelectronics for a number years prior to leaving and forming SanDisk.

    Then again, we all know about Stanford that encourages students to develop inventions and the go into business for themselves.

    The small inventor can and often makes it big in California. I don’t know entirely why, but they do.

  66. Edward Heller December 19, 2017 11:41 am

    Night, there is no doubt that in order to claim an invention as a result, the novelty has to be claimed as a result as opposed to background elements. Background elements can be claimed functionally with no problem. I have made that distinction again and again and again when the Federal Circuit has limited the scope of a claim element that has nothing to do with the novelty because they never took the time to determine whether the claim element was claiming a background elements for context purposes or the invention. The Supreme Court has made it clear that the novelty itself has to be claimed as a result – functionally.

  67. Edward Heller December 19, 2017 11:49 am

    Pro Se@54, if you actually believe what you just said, you are going to lose a lot of money and waste a lot of your time.

  68. Ternary December 19, 2017 12:16 pm

    Rational,
    I fully agree that people are not running out of ideas. In fact many people have new ideas and are experimenting with or developing new software related inventions. The broad availability of relatively inexpensive (and even free) software tools, a high level of education and experience in the workplace, make it actually more likely that new ideas are being developed.

    What has changed is the barrier to obtain meaningful protection of an invention in the last decade. It used to be that an inventor was told “to get a patent for that.” No more, and for good reasons.

  69. Ternary December 19, 2017 12:23 pm

    Edward @65 “Certainly, by no stretch of the imagination, could a business method be deemed to be within the useful arts.” Huh?

    It seems this discussion is going in circles, wherein it is very difficult to pin you down on what you actually mean. For the sake of advancing the discussion can you provide a definition of a “business method.”

  70. Anon December 19, 2017 12:37 pm

    Mr. Heller,

    Sorry, but you could not be more incorrect with the statement of “Certainly, by no stretch of the imagination, could a business method be deemed to be within the useful arts..”

    Apparently modern business practice (for example, Deming et al) is beyond your understanding.

    I suggest then that you refrain from venturing opinions upon which you do not understand.

  71. B December 19, 2017 1:13 pm

    “Certainly, by no stretch of the imagination, could a business method be deemed to be within the useful arts.”

    Two words: Trading Technologies

  72. A Rational Person December 19, 2017 1:14 pm

    Edward@65,

    “It is simply that the Constitution only permits patenting of inventions to promotes the advance of the useful arts. Certainly, by no stretch of the imagination, could a business method be deemed to be within the useful arts.”

    Why? If you argue that because in 1790 “useful arts” did not include “business methods” than by that standard inventions in the fields of chemistry and electrical engineering should also be excluded, because none of those fields, as we understand them today, existed in 1790. For example, in chemistry, the concept of elements were barely understood and the concept of chemical structures didn’t really exist, so patents claiming compounds using chemical structures their chemical structures should be every bit as out of bounds as business methods if we are chained to the definition of “useful arts” as it existed in 1790 . With respect to electrical engineering, the electron was not even discovered until a 100 years later, so patents devices relying on circuits, microprocessors, CRTs, LEDs, etc. would also be every bit as “out of bounds” as business method patents in 1790.

    I think there is every indication that the term “useful arts” was meant to be interpreted broadly and was mainly used to distinguish inventions that were patentable from artistic works that were copyrightable.

  73. Edward Heller December 19, 2017 4:30 pm

    Whether chemistry existed in modern form is not the question. The question really is whether chemical processes make useful things — manufactures.

    Think Statute of Monopolies.

  74. Edward Heller December 19, 2017 4:42 pm

    Method of doing business: a plurality of steps that organizes human activity for the purpose of making money and not for the purpose of making manufactures, machines or compositions.

    Of course, a major reason why the Supreme Court did not ban the Bilski claims because they were business methods was because there did not exist a clear and accepted definition for same. That is why they had to fall back on “abstract.” Virtually all the amicus briefs, save a few, urged the Supreme Court not to adopt the MOT, but to hold the Bilksi claims abstract as if everyone knew what THAT meant. Well the amici persuaded the Supreme Court.

    But, was that a good thing? I sense that everyone here would like to take those amici to the woodshed.

  75. Edward Heller December 19, 2017 4:47 pm

    B@71, I coin the definition in 74 before reading your post. Certainly, Trading Technologies provides an improved machine and is not a business method.

  76. Edward Heller December 19, 2017 4:51 pm

    Also, A rationale, the founders were building on the English patent system, and were intending to define in the Constitution and law the current state of the patent law as it existed in England. Broadly, this was directed to new manufactures, engines, chemical processes, compositions and the like. They coined the word Useful Arts to broadly describe what this was. Today, technological might be a more apt term.

  77. B December 19, 2017 5:16 pm

    “Certainly, Trading Technologies provides an improved machine and is not a business method.”

    There are a lot of machines that perform business methods. In the end, the reason TT was held patent eligible is because Judge Newman, not Judge Reyna, wrote the opinion.

  78. Edward Heller December 19, 2017 5:22 pm

    B, do not misconstrue what I said. The claimed invention was directed to an improved machine. This is not the same thing, not even close, as a machine that performs a business method.

  79. Curious December 19, 2017 5:41 pm

    Certainly, by no stretch of the imagination, could a business method be deemed to be within the useful arts
    How do you get to that conclusion? <– I wrote that before noticing that everybody else picked up on that same statement.

    First, you need to provide a definition of "business method." Second, you need to provide a definition of "useful arts." Third, you need to explain how the set of things defined by your first definition cannot ever be within the second definition.

    You've already made the conclusion so you must have already engaged in the analysis described by the three-step process outlined above. Care to share that analysis with us?

  80. Anon December 19, 2017 5:47 pm

    Mr. Heller,

    You are spouting gobbedlygook.

    There is simply no principle distinction in the difference that you are vainly trying to conjure up between “a machine that performs a business method” and an improved machine.

    If you start with a machine – and you lack improvement, then the inherency doctrine takes over (for machine claims) and the Act of 1952 – by Congress – in 35 USC 100 fully provides that a new use of an old machine is fully patent eligible.

    Your position here does NOT accord with law – at least the law as written by Congress, and it remains YOU that is the renegade with attempts to supplant that law with ultra vires separation of powers violating Supreme Court writing their own law from the bench.

  81. Ternary December 19, 2017 5:49 pm

    Thanks Edward. Interesting background. It raises other questions. For instance, a secure electronic ID card that provides access to a computer operated (locked/opened) door/gate is patent eligible, but if the gate provides access to a railway station or venue for payment it is directed to a business method. Does the technical improvement trump the business method? According to the Federal Circuit Court it doesn’t.

    Optimization processes and predictive processes (like the Viterbi algorithm that we discussed previously) are considered to be patent eligible when implemented on a computer. But they are used for making money. What is the trick here? Being careful not mentioning in the claims or the specs that there are financial benefits? What if the Court decides it is used for business?

    And what is the issue with making money that renders a business process outside the realm of patent eligibility? “After all, we are not communists” to quote a well known movie.

    Enterprise Resource Planning (ERP) systems are used to integrate different functions (order management, MRP, inventory management, financial management, billing, transport management, etc) in an enterprise. ERP systems and related technology have largely been responsible for ability to outsource and creating on-line businesses like Amazon and to integrate and streamline very complex supply chains. All the components in ERP are ultimately focused on one thing: making money. SAP, a leader in ERP, has been very clever in its claiming practice and claims data structures, program objects, etc. However, even based on the specification, you can often discern that these objects and data structures are related to business processes. Does that mean that business process methods are patent eligible if you can hide the business part sufficiently? It seems to me that the definition is not workable and creates arbitrary decisions.

    It also seems that your definition per se does not exclude business methods from the “useful arts”. Especially because making money is such a useful activity in our economy.

  82. B December 19, 2017 6:09 pm

    “B, do not misconstrue what I said. The claimed invention was directed to an improved machine. This is not the same thing, not even close, as a machine that performs a business method.”

    I misconstrue NOTHING. TT is a machine that conducts a business method. That is not disputable. There are a lot of machines that do so, such as the electronic debit system in Smart Systems v. Chicago Transit. Totally a novel machine system that enabled people to use debit and credit cards to pay for the bus. So explain the difference in patent eligibility without using some moronic categorical excusion to 101.

  83. Edward Heller December 19, 2017 6:15 pm

    Ternary, ultimately the search is for whether the claim is directed to a new or improved machine, manufacture, composition or traditional process, which in Diehr was a process that passed the MOT. Thus, a new computer program directed to making processing more efficient of an old pricing algorithm should be directed to in improved machine. But we know what happened in Versata do we not? I think that case was clearly wrongly decided.

    When a claim has both novel business method aspects and novel computer-based aspects the claimant should pass 101. However, as you say the courts are not allowing such claims to pass muster. Perhaps it is because of the prosecution history that emphasizes the novelty of the business method aspects of the claim. I would suggest it might be best to put the business method aspects of the claim into a preamble or intended use part of the claim and focus the claim elements on the improved software method.

  84. Edward Heller December 19, 2017 6:17 pm

    B, just in order to clarify my meaning, a claim to a generic computer or generic software for implementing a business method is not directed to an improved machine and therefore is not directed to patentable subject matter.

  85. B December 19, 2017 6:26 pm

    “B, just in order to clarify my meaning, a claim to a generic computer or generic software for implementing a business method is not directed to an improved machine and therefore is not directed to patentable subject matter.”

    Before spewing more nonsense, read Alice Corp. and a few CAFC decisions. The courts never saw a computer they didn’t categorize as generic. Also, I have no idea what generic software is, and I’m a man who has written nearly a half-million lines of code. That’s just more idiotic nonsense on your part.

    A machine or software that implements a novel business method should be patent eligible as nothing previously made by man would be preempted.

  86. Pro Se Pro December 19, 2017 6:34 pm

    @ 67 Edward Heller December 19, 2017 11:49 am
    Pro Se@54, if you actually believe what you just said, you are going to lose a lot of money and waste a lot of your time.

    Mr. Heller:

    I am not stating a belief. I am stating the law held and ruled on by the Supreme Court in Bilski. If you can find otherwise please cite the holding and or rule.

    ::Silence::

    Now, that that’s settled you should also know that the first patent was a business method and within the useful arts. In fact the reason Potash making was granted a patent was because it was a business method and vital to the economy. Please see, .. “the patent was important not only because it was the first of its kind but also because it was vitally linked the nation’s early economy. In fact, potash was America’s first industrial chemical.” https://www.me.utexas.edu/~longoria/paynter/hmp/The_First_Patent.html

    You may now consider yourself schooled. And you are welcome.

  87. Edward Heller December 19, 2017 7:20 pm

    Pro Se, please stop deluding yourself. The Bilski claims were held ineligible. Your quibble is to the wording of the opinion.

  88. Edward Heller December 19, 2017 7:22 pm

    B, to be clear:

    Claim 1: A Novel Bus. Meth; and

    a processor configured to perform said NBM.

    The processor is generic. The software (unspecified) is any software for the purpose. Not necessarily old, but specified at the level of an abstraction.

  89. Pro Se Pro December 19, 2017 7:59 pm

    @Edward Heller December 19, 2017 7:20 pm
    “Pro Se, please stop deluding yourself. The Bilski claims were held ineligible. Your quibble is to the wording of the opinion.”

    Mr. Heller:

    By your logic:
    1. Alice’s claims were to software.
    2. Alice’s claims were held ineligible.
    3. Therefore software is now categorically excluded and ineligible.

    Now who is deluding oneself Mr Heller?

  90. B December 19, 2017 8:05 pm

    “B, to be clear:

    Claim 1: A Novel Bus. Meth; and . . . . ”

    You’ve just said a lot of nothing, especially in light that every claim can be reduced to a meaningless abstraction if you ignore enough limitations. This isn’t allowed according to the SCOTUS, but practiced with regularity at the CAFC.

  91. Anon December 19, 2017 9:07 pm

    Mr. Heller,

    As is plainly evident, your anti-business method stance is not pro-patent.

  92. Edward Heller December 19, 2017 10:23 pm

    Anon, your crusade for a lost cause is the real tilting at Windmills.

  93. Anon December 19, 2017 10:56 pm

    Mr. Heller,

    Your reply does not deny that your anti-business method stance is not pro-patent.

    As there is NO possible justification to see this in any other way, perhaps you will finally realize why it is YOU are not so well received.

    As to tilting at Windmills, that would still be you. Yes, the score board is currently broken. But anyone who is willing to think critically – and is willing to be inte11ectually honest, understands exactly the point that the score board is broken.

    Fixing the broken scoreboard is actually part of the duty of most all attorneys. As we have seen (with the single exception presented of the Commonwealth of Massachusetts), state attorney oaths place the Constitution above the Supreme Court – and thus we have a duty to NOT abide by – and sit idle – when the Supreme Court itself acts outside its bounds.

    You want to call following my ethical obligation a “tilting at Windmills” – that only denigrates you.

  94. Anon December 20, 2017 2:24 pm

    Pro Se Pro @ 89,

    Your comment of:

    By your logic:
    1. Alice’s claims were to software.
    2. Alice’s claims were held ineligible.
    3. Therefore software is now categorically excluded and ineligible.

    Now who is deluding oneself Mr Heller?

    Is EXACTLY the type of logic that Mr. Heller advanced endlessly after the Bilski case, but insert the phrase “business method” for “software.”

    It took well more than one year of nigh constant engagement to make Mr. Heller aware that Bilski did NOT hold that business methods were categorically ineligible, much less that the holding of the case itself even used the term ‘business method’ in its view of ineligibility.

    In the interim, Mayo was decided, and Mr. Heller’s very own logic was put to him that since Mayo was a medical product case, that THEN (per Mr. Heller’s ‘logic’), ALL medical product cases were ineligible.

    He has not changed his spots (or his scent) – even if he has “championed” a pro-patent stance in his views that patents are not public rights.

  95. Edward Heller December 20, 2017 3:09 pm

    Pro se, Alice certainly did not emphasize any novel software, but only emphasized that the method and system were implemented on a computer. They couldn’t do more because their claims simply required a computer “configured to” do the business method. For example, from the system claim in Alice’s main brief we find

    “a computer, coupled to said data storage unit
    and said communications controller, that is
    configured to
    (a) receive a transaction from said first party
    device via said communications controller….” Alice main brief at 6.

    It goes on like that, simply saying what the computer does. “Configured to” simply is not directed to specific software or software step.

    You should know that I thought that Alice was going to win because their claims did specify particular computer hardware. But as it turned out, it was not the particular hardware that was important because the hardware listed was generic. The reason Alice did not win is that the software part of their invention was not really claimed beyond “configured to.” In order to pass Alice step two, software part has to be specific and inventive.

  96. Curious December 20, 2017 3:12 pm

    Your reply does not deny that your anti-business method stance is not pro-patent.
    Bingo. Mr. Heller’s stance is supporting the same people that he is supposedly against when it comes to the issue in Oil States.

    I also notice Mr. Heller did not address my comments @79. Ultimately, in order to argue that the “business methods” are not part of the “useful arts” you have to define both terms. However, none of the anti-business method people want to set forth such a definition because it’ll be extremely easy to pick apart.

    your crusade for a lost cause is the real tilting at Windmills
    Mr. Heller should read Bilski, they didn’t declare “business methods” to be non-statutory subject matter per se. They were also invited to do so in Alice but did not as well.

  97. B December 20, 2017 3:21 pm

    “The reason Alice did not win is that the software part of their invention was not really claimed beyond “configured to.” In order to pass Alice step two, software part has to be specific and inventive.”

    This is total b.s., and I doubt you even read Alice. The Alice claims were considered patent ineligible because the business method implemented was nothing more than a computer configured to perform a well-known and routine business method that had been used for over a hundred years PLUS the SCOTUS redefining what was meant by “abstract.”

  98. Edward Heller December 20, 2017 3:26 pm

    Curious, I did define business method. I also discussed Useful arts to mean the state of English case law as it stood at the founding: manufactures, machines, processes, and compositions — and anything fairly related to these, broadly, technology.

    You must have skipped over it.

  99. Edward Heller December 20, 2017 3:27 pm

    B, my point is that they could not argue software because it was not claimed.

  100. B December 20, 2017 4:14 pm

    “B, my point is that they could not argue software because it was not claimed.”

    Mr. Heller, discussing law with you is like chasing squirrels in the backyard. You’re incoherent and inconsistent, and horribly ignorant of case law.

  101. Anon December 20, 2017 6:19 pm

    Given as Mr. Heller has retreated to blindly regurgitating the incoherence spewed forth by the Supreme Court, it bears repeating:

    As to tilting at Windmills, that would still be you. Yes, the score board is currently broken. But anyone who is willing to think critically – and is willing to be inte11ectually honest, understands exactly the point that the score board is broken.

  102. Curious December 20, 2017 8:15 pm

    Curious, I did define business method. I also discussed Useful arts to mean the state of English case law as it stood at the founding: manufactures, machines, processes, and compositions — and anything fairly related to these, broadly, technology.
    I looked and I did not see any definition of “business method” set forth by you in this article. Perhaps you can reproduce your definition. As far as your definition of “Useful arts,” a business method (claimed as part of a computer) is an improvement to a machine. Additionally, a business method is a process.

  103. Edward Heller December 20, 2017 9:02 pm

    Curious, see post 74.

  104. Edward Heller December 20, 2017 9:11 pm

    B, trust me, I understand what the courts are looking for and why: they are looking for statutory subject matter: a new or improved machine, manufacture, composition or process, and a business method (or math) is not an eligible process because it does not improve a computer, manufacture or composition.

    You seem hopelessly tangled in words. I know that “abstract” is all but a coined word for the concept of being non statutory. But even so what I described here is the substance of what is going on.

    Reading the Alice brief once again demonstrates that the writers of the brief had no fundamental understanding of the topic. They were saying that the issue was preemption, when it is not. It has not been about preemption since Flook. One can claim math in detail, in great detail. But it doesn’t change the fundamental aspect that even if the math is claimed to the last detail is still remains nonstatutory because it is not a statutory process.

    When we get down to software, the courts will find patentable subject matter if the software is actually claimed in detail and it arguably improves the utility of the computer or computer systems. Assuming arguendo that Alice actually developed novel software for its business method, they failed to claim it.

  105. Anon December 20, 2017 10:47 pm

    A business method is not math.

    Your misrepresentations snack of the same anti-patent tactics as any other anti-patent propaganda.

    Mr. Heller, you cannot talk your way out of the reputation that you talk yourself into.

  106. Curious December 20, 2017 11:44 pm

    Method of doing business: a plurality of steps that organizes human activity for the purpose of making money and not for the purpose of making manufactures, machines or compositions
    OK. Every patented process (of any value), as its end goal, is for the purpose of making money. As such, that isn’t a particularly distinguishing feature. I’m not sure what you mean by “organizes human activity.” Unless it is a natural process, a human is somehow involved in the process. A human may have to initiate the process, set up the conditions that allow the process to happen, and/or assist in performing certain steps of the process. Under a broad interpretation of “organizes human activity,” I don’t see how that is distinguishing in any manner.

    As for the “not for the purpose of making manufactures, machines or compositions,” you’ve pretty much eliminated nearly all software-related inventions. You’ve also eliminated nearly all medical diagnosis inventions. You’ve eliminated most medical treatment patents. Arguably, you’ve eliminated telecommunication process patents that involve the generation of a signal (per Nuijten, a signal is not a manufacture). Arguably, any process that is directed to the generation of energy might fall within your definition. Certainly, any process patents that involves teaching easily falls within your definition.

    Assuming arguendo that Alice actually developed novel software for its business method, they failed to claim it.
    The Courts didn’t get to the novelty/obviousness of the software.

    the courts will find patentable subject matter if the software is actually claimed in detail and it arguably improves the utility of the computer or computer systems
    All software should improve the utility of a computer — a programmable computer without software is merely an expensive paper weight.

    A business method is not math.
    It is interesting that his definition involves “a plurality of steps that organizes human activity.” I’m not sure how math is a necessary part of that.

  107. Lost In Norway December 21, 2017 2:37 am

    Excellent article, Gene! Thank you very much for this year’s summary . I have printed it out and added it to the summary from last year. Keep it up!

    I came face to face with my first Alice rejection on an application this year on an electronic device for measuring speed. I made a “mistake” and included an equation because it was needed to understand a time delay in the method. The examiner went “abstract idea” on me. It was my first time, and they weren’t gentle. *sigh*.

    I still can’t get a decent explanation from pro-Alice crowd about why changes were needed in 101. Doesn’t 102, 103, and 112 take care of the problem?

  108. Anon December 21, 2017 8:41 am

    I still can’t get a decent explanation from pro-Alice crowd about why changes were needed in 101. Doesn’t 102, 103, and 112 take care of the problem?

    That thought was put directly to the Supreme Court.

    Any “answer” that you might see expressed by the anti-patent crowd will (likely) be merely a parrot of the non-answer as given by that Court.

  109. Ternary December 21, 2017 9:06 am

    Judge Rich condemned the Flook opinion as embodying:

    an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of inventions in § 101 which may be patentable and to the conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonobviousness condition of § 103.

    The reason for this confusion in the Court’s opinion he attributed to “subversive nonsense” in the government’s briefs for the Patent Office…
    (the above from Wikipedia)

    The spouting of “subversive nonsense” regarding § 101 continues to this day. There is no statutory reason why business methods or mathematical expressions on a computer are patent ineligible. These inventions are made patent ineligible by “judicial exception.” The exceptions are the result of a misunderstanding and mistrust of the process of invention and technological advancement. This has to be resolved by Congress.

    Alice reflects no wisdom or insight or even interest in the process of invention. It merely solves an issue by Justices who are uninformed and seemingly biased and cannot bring themselves to sticking to the statute.

  110. B December 21, 2017 9:30 am

    “B, trust me, I understand what the courts are looking for and why:”

    Really? You have yet to properly outline the basics of Alice Corp., and keep changing the subject, e. g., 112.

    “You seem hopelessly tangled in words.” Yes, words actually mean things, especially in law. I don’t apologize.

  111. B December 21, 2017 9:41 am

    “ There is no statutory reason why business methods or mathematical expressions on a computer are patent ineligible.”

    I would state that a mathematical expression of a law of nature, by itself, is patent ineligible, but otherwise there is no reason a process or machine using math is patent ineligible. The Flook decision was idiotic. The invention was a marvelous bit of steepest-descent style adaptive signal processing the black-robed apes couldn’t understand.

  112. Anon December 21, 2017 12:26 pm

    an unfortunate and apparently unconscious, though clear, commingling of distinct statutory provisions which are conceptually unrelated, namely, those pertaining to the categories of inventions in § 101 which may be patentable and to the conditions for patentability demanded by the statute for inventions within the statutory categories, particularly the nonobviousness condition of § 103.

    THIS.

    This from one of the people who know best WHAT Congress did in the Act of 1952 (in no small part because he helped WRITE that Act).

    The self-avowed resident historian (Mr. Heller) takes a decidedly “convenient” lapse from actual history when it comes to the Act of 1952 and exactly why Congress had been prompted to remove the common law power of setting the meaning of the word “invention” and instead changing a pre-1952 single paragraph into several distinct sections of law, and instead of a focus on “invention” (via “gist of invention,” “inventive gist,” “a gestalt of the invention,” or any of dozens of euphemisms that only showed the LACK of success of the Supreme Court to use common law to settle the law (as opposed to using their bully pulpit to be able to constantly stick their fingers into the nose of wax of patent eligibility).

    TOO MANY have not understood history and the Act of 1952.

    Thus, history repeats.

    It is really unfortunate that the modern day Congress lacks a cohesive and pragmatic understanding of the importance of innovation and a strong patent system.

    Instead, we have super-high levels of partisanship, coupled with the “capture” effect that decisions such as Citizen’s United have only exasperated.

    We – the Royal We – have infused OTHER philosophical ends (the Windmills of anti-business method and anti-software patent, for example) to SO obfuscate what Congress did, that we now need Congress to basically say “and we really mean it.”

    I will end with a plug for my preferred path of Congress saying “and we really mean it”:

    Let’s have Congress exercise their Constiutionally granted power of jurisdiction stripping to remove the non-original jurisdiction of hearing patent cases from the Supreme Court.

    In order to maintain Marbury – which is merely Article III judicial review – to emphasize the distiniction with Supreme Court review – Congress should also set up a new untainted Article III patent court to place patent cases in. The current version – established for well and good reasons – has been simply tainted with repeated brow-beatings from the Supremes and have lost their spine to remind the Court that the Court does not get to write patent law in the first place (as was ably done in part by Judge Rich, as Judge Rich was able to separate NON-controlling dicta of the Supreme Court from any proper role of interpreting the statutory law – a statutory law whose authority to write is Constitutionally granted to but one branch of the government (and “common law” power falls OUTSIDE OF that grant). Mr. Heller’s historian lapse is also reflected in his disappearing from conversations that deal with this facet.

  113. Ternary December 21, 2017 2:39 pm

    B @111 “ There is no statutory reason why business methods or mathematical expressions on a computer are patent ineligible.”

    All in the context of § 101 of course. A mathematical expression or even an algorithm on its own is most likely not useful, if it is not used for something. Vector analysis was useful over quaternions in the context of EM field applications. A Discrete Fourier Transform (DFT) or the related Fast Fourier Transform is only useful over an analog Fourier Transform in certain applications. Otherwise it is just math.

    The brilliance of § 101 is that almost anything under the sun is patent eligible. The problems started when people started screwing around with it and thus screwing it all up.

    My inclination is that at this stage of science and technology if you discover a new law of nature or you develop new mathematics and you claim it as a useful process, machine, manufacture or composition of matter you have something that is patent eligible. We should promote work in those fields and reward inventors who are able to come up with that stuff.

  114. Ternary December 21, 2017 2:49 pm

    “I will end with a plug for my preferred path of Congress saying “and we really mean it.” Fully concurring with Anon @112. No more writing new law through judicial exceptions.

  115. B December 21, 2017 2:58 pm

    “A mathematical expression or even an algorithm on its own is most likely not useful, if it is not used for something.”

    Of course. You’re hitting at the literal text of 101 and possibly 112 – not the judicial exception to 101.

  116. B December 21, 2017 3:02 pm

    “I will end with a plug for my preferred path of Congress saying “and we really mean it.”

    Just, FYI, even a computer running a mathematical algorithm that reflects a law of nature AND NOTHING MORE could be considered obvious. The law of nature was always there and thus prior art. It’s the application of the law of nature, e.g., determining a time to cure rubber, that distinguishes a claim.

  117. angry dude December 21, 2017 3:53 pm

    B@116

    Dude,

    please do not cite this nonsense about “laws of nature”

    Where do you find those “laws of nature”

    there is no such thing as “law of nature” – some dude has to discover and formulate it first and its always an approximation

    Example 1: Newtonian mechanics was considered absolute “Law of Nature”…
    until Einstein showed that it is only an approximation

    Example 2: Ideal gas state equation is an approximation to the van der Waals equation

    etc.
    etc.
    etc.

    you dudes are clueless and it’s just hopeless

  118. Edward Heller December 21, 2017 4:06 pm

    Ternary, . There is no statutory reason why business methods or mathematical expressions on a computer are patent ineligible. That is the way Judge Rich would have put it – there is nothing in the statute prohibiting business methods.

    But the statute requires that the invention be of a new or improved machine, manufacture or composition, or a process which basically provides a new or improved machine, manufacture or composition. Certainly simply using a computer as a processor in a business method or mathematical calculation does not provide a new or improved computer.

    Ternary, it is your refusal to accept this simple proposition that is causing you to not accept the Supreme Court case law.

  119. B December 21, 2017 4:18 pm

    ‘please do not cite this nonsense about “laws of nature”
    Where do you find those “laws of nature”‘

    ——————————

    I’m only quoting Supreme Court precedent going back to 1852 on the issue. Also, nature exists and pre-existed anything man-made whether or not our understanding is perfect. Still further, a claim like: “A method comprising: heating a parcel of land using sunlight” encompasses a natural phenomena.

    I make no apologies.

    “you dudes are clueless and it’s just hopeless”

    Whatever. We all cannot be as brilliant as you.

  120. Anon December 21, 2017 4:27 pm

    Mr. Heller,

    Please desist form your known error of “or a process which basically provides a new or improved machine, manufacture or composition.

    That is simply not in accord with US law as written by Congress.

    (and even your own broken-scoreboard Supreme Court rejected the ‘Machine or Transformation” that underlies your attempt to proselytize your “version” of the law)

  121. Anon December 21, 2017 4:43 pm

    Mr, Heller,

    Please desist from your other (well-worn) dissembling with your statement of:

    Certainly simply using a computer as a processor in a business method or mathematical calculation does not provide a new or improved computer.

    There simply is NO “just use” without a first step (that you again omit) of CHANGING a machine by re-configuring a machine with the software manufacture that provides for the capability of your “just use.”

    This is not a new point presented to you, it is either extreme hubris or extreme dishonesty (or both) that you exemplify by again dissembling so.

  122. Ternary December 21, 2017 5:47 pm

    Edward:
    You say: “But the statute requires that the invention be of a new or improved machine, manufacture or composition, or a process…” which is correct. But then you sneak in “… which basically provides a new or improved machine, manufacture or composition” which is nowhere in the statute. It is just made up by you. Poof, gone is the process. Did it just become abstract?

    Many novel business processes rely on improved messaging, sensor reading and conditional steps to instigate an activity. Just-in-time manufacturing is such a business process, which is extremely useful. The use of machinery is essential in these processes. The use of known machinery does not make a process patent ineligible.

    You are wrong in another allegation: I never said that “simply using a computer as a processor in a business method or mathematical calculation provides a new or improved computer.” What I do maintain is that a programmed machine/computer is a machine not an abstract idea and not directed to an abstract idea. One has to check against prior art if the programmed machine is a new or improved machine. But in many cases, the use of a computer is extremely useful in a process.

    You and others try their utmost, mostly with weird mental gymnastics, to make machines involved in business methods abstract or directed to an abstract idea. This is a label or characterization that has no support in empirical science. It is a made-up fiction to achieve a political result. A manufacturing machine that has parts that grip, transport, insert, cut, weld, solder, test and certify is patent eligible, and is not an abstract idea nor directed to an abstract idea. A programmed computer is not an abstract idea and unless you apply some strange definition is not directed to an abstract idea, it is directed to generate one or more signals.

  123. Edward Heller December 21, 2017 6:37 pm

    Ternary, you said I made that up – that process had to do with a new or improved machine, manufacture, or composition. But I didn’t. You have to understand that at the founding, the legislators were trying to enact into the American statutes the the broadest scope a patentable subject matter then recognized in England. Originally, the Statute Of Monopolies required that an invention be related to “new manufactures.” But but it was soon recognized that methods of making manufactures were patentable as well as manufactures themselves. Also manufactures was recognized to include machines and method of making machines. It also extended to improvements – although that was highly controversial for most of time between the Statute and the founding of our country.

    That is why it is quite clear that when the original statutes included Art among the listed categories of patentable subject matter, it was intended to include methods of making manufactures – known as processes. The courts uniformly adopted the term processes to describe “Art” for the next 150 years, and a 1952, Congress amended the statute to use the term process rather than a term art, but made clear in section 100 that art and process were meant to be the same thing.

  124. Anon December 21, 2017 7:14 pm

    Mr. Heller,

    Your view of the section of law of 35 USC 100 as passed by Congress in the Act of 1952 is known to be in greivous error and exemplifies your continued misrepresentation of patent law and particularly THAT Act and its history.

    This is not a new point presented to you.

    Tread carefully here – this blog has a far lower tolerance for falsehoods.

  125. Edward Heller December 21, 2017 7:22 pm

    Anon, enlighten us please.

  126. Anon December 21, 2017 7:36 pm

    Asked and answered Mr. Heller.

    To wit: (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    “New use of” has ZERO to do with your more “traditional” English version.
    It reflects “use” as in the modern day understanding of “process” and does NOT require the statutory category to be limited as to being some “subset” of the hard goods categories.

    EACH of the statutory categories are full and separate.

    Further, the “double use” of “process” is meant to include and expand upon that “traditional” English version.

    As I noted – these are NOT new items and have been presented to you many times over the course of at least the last several years.

    Let’s be inte11ectually honest about this, eh?

  127. Anon December 21, 2017 7:38 pm

    B,

    As loath as I may be to reference “the other blog,” you may want to take a gander at: https://patentlyo.com/patent/2017/12/when-natural-wrong.html

  128. B December 21, 2017 8:22 pm

    Thank you Anon, but I’d seen the article and dismissed Professor Crouch’s analysis as trite.

    Certainly we deal with approximations of laws of physics, but that does not invalidate the approximation as a law of physics.

    That said, I am NO FAN of the Mayo decision as I see the claim at issue as the monitoring of a byproduct caused by a man-made drug therapy – said monitoring generally assuring that the patient won’t likely die from the therapy. Yeah, the numbers in the claims are approximations, but the real question you need to ask: “What natural phenomena is preempted?”

    Answer: None. Mayo is a bad decision.

  129. B December 21, 2017 8:48 pm

    BTW, Anon, I wrote an Amicus Brief for RecogniCorp at the CAFC and at the SCOTUS. As far as I can tell, few of the people commenting at “the other blog” actually read Diehr, Bilski, Mayo and Alice Corp. – or remotely understand that patent eligibility is based solely on the concept of preemption and requires an analysis of a claim as a whole. Hell, none of them apparently read the RecogniCorp decision, which is telling from the comments. Dozens of comments and not one mention of preemption or analyzing a claim as a whole.

    https://patentlyo.com/patent/2017/12/recognicorp-processing-patented.html#comments

  130. B December 21, 2017 8:58 pm

    One last, Anon. I have literally talked to well over 200 patent examiner’s on 101. You know how many stated they can make sense of the CAFC’s various decisions?

    Zero.

    You know what that should tell everyone? The CAFC is incapable of producing consistent and coherent holdings, and if you don’t believe me read Judge Linn’s dissent in Smart Sys v. Chicago Transit

  131. Anon December 21, 2017 9:08 pm

    B,

    We are largely in accord (but I would suggest “Treachery of Images” by Magritte as to the man-made approximations.

    Way back when, I had a minor in the history of science and technology. The “rationale” that “Laws of Nature” have always existed rather missed the point of man’s efforts as to any approximations (and yes, approximations are ‘not the pipe’).

  132. Edward Heller December 21, 2017 10:26 pm

    B, since you did not read Flook, your statement about preemption is interesting. I still demur. Preemption of a principle in the abstract might be a concept related to Morse-type abstractness, but it has little to do with nonstatutory subject matter. The Bilksi claims were nonstatutory. Ditto Benson and Flook. Flook actually said that math was nonstatutory. No matter how detailed and specific nonstatutory subject matter is, it can never pass muster under 101. Bilski made that clear when even very detailed dependent claims were held nonstatutory.

    Now, anon, if a new use of a known machine could pass 101, then Benson should have come out differently. In fact using paper and pen to conduct the algorithm in Benson should have been enough.

    But we know, using a computer or pen an paper to calculate a mathematical algorithm is not really a “new” use of the computer or the pen and paper. Imaging telling a 5 year old at Christmas that he got a new bow and arrow because you changed his target. He would laugh at you.

  133. Ternary December 21, 2017 11:45 pm

    Anon @126. Thank you. It all gets to be very tiresome to respond. As to Benson, the Board (CCPA) decided in Benson’s favor, but was overturned by the Supreme Court on the reasons that still haunt us today. The Board’s reasoning comes across as technologically informed ( Benson is directed to a machine that is a shift register that processes signals in a novel way and thus is patent eligible, period).

    At least in their Benson opinion the Supreme Court realized the different interpretations of “process” and that they were probably out of touch with modern technology and suggested that Congress take a closer look at the issue (which Congress still has to do). “The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed.”

    Until Congress does so, we will continue to have these (at least technologically) absurd discussions.

    Btw Edward, you probably have to reverse your earlier (correct) opinion that a programmed machine executing a Viterbi algorithm for a specific application is a novel machine and patent eligible.

  134. Anon December 21, 2017 11:50 pm

    Mr. Heller remains anti-patent to the extent that he supports the broken scoreboard machinations of the anti-patent Supreme Court.

    Nothing new in his dissembling or his lack of inte11ectual honesty.

  135. B December 21, 2017 11:55 pm

    “B, since you did not read Flook, your statement about preemption is interesting. . . . “

    Ned,. I’ve read Flook twenty to forty times. Don’t assume. The SCOTUS got It wrong because the SCOTUS was technologically ignorant and there was an idiotic fear of computers at the time that Diehr sort of corrected in an idiotic way that left the patent industry confused for nearly forty years.

  136. B December 21, 2017 11:58 pm

    BTW, Ned, Judge Rich got Flook right at the CAFC. Unfortunately, the art history majors at the SCOTUS were too ignorant to realize that Rich knew more about patent law than them

  137. JCD December 22, 2017 12:04 am

    B,

    (1) Re Preemption

    It continues to be unbelievable that discussion of preemption is absent from most 101 analysis when it forms the entire basis for the judicial exception.

    (2) Re Flook

    The Flook decision was the only one that Lemley couldn’t reconcile either. But it makes sense in in a strange way if you consider the entire decision as flowing from the Court’s assumption: “We also assume, since respondent does not challenge the examiner’s finding, that the formula is the only novel feature of respondent’s method.” Parker v. Flook, 437 U.S. 584, 588 (1978).

    If you start from that assumption, is the result really that abhorrent? Maybe it’s still not ideal, but Ned’s point upthread that there are real issues that the Supreme Court is trying to grapple with is a great one.

    JCD

  138. JCD December 22, 2017 12:13 am

    Follow up:

    Mayo actually does a lot to reconcile Flook. I’ve been meaning to put together an article/brief on this, but I might as well just throw it out here until I have time to do it justice.

    Mayo made clear that the Court is using a bright line rule re laws of nature and mathematical formula because “[c]ourts and judges are not institutionally well suited to making the kinds of judgments needed to distinguish among different laws of nature.” As a result, “cases have endorsed a bright-line prohibition against patenting laws of nature, mathematical formulas and the like, which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.”

    Flook was applying such a bright line rule. You can disagree with the bright line rule, but the Court at least acknowledges that it is just an imperfect approximation. The problem is when you try to apply it in an abstract ideas context. Then, well, then it makes no sense for reasons I hope to eventually have time to articulate.

  139. Night Writer December 22, 2017 8:10 am

    Ned>>>> But we know, using a computer or pen an paper to calculate a mathematical algorithm is not really a “new” use of the computer or the pen and paper. Imaging telling a 5 year old at Christmas that he got a new bow and arrow because you changed his target. He would laugh at you.

    What nonsense. You are again refusing to address the equivalence of hardware and software. I suppose you would hand the child the computer and laugh at the child when the child ask what he/she is supposed to do with the computer?

    Function without structure is your argument Ned. And this new use? Really? So, if use my computer to drive a car that is not a new use? According to your reasoning it is not. Just absurd nonsense. You ignore structure.

    The thing that really bother me about your statements is the way it goes back to medieval times and ignores what we have learned about human intelligence and thinking. We know now that our brains are processing information. We know now that processing information is hard and what separates us from other creatures.

  140. Night Writer December 22, 2017 8:12 am

    >>The Flook decision was the only one that Lemley couldn’t reconcile either.

    Lemley can reconcile anything in one of his papers because there is no peer review and his cites do not stand for what he claims they do. Any reference to Mark Lemley is an immediately disqualifies an argument. Lemley also claims that software has no structure.

  141. Anon December 22, 2017 8:15 am

    Mr. Heller’s treachery continues:

    Now, anon, if a new use of a known machine could pass 101, then Benson should have come out differently. In fact using paper and pen to conduct the algorithm in Benson should have been enough.

    First, Mr. Heller, you are on record as saying that Benson was wrong – in at least the claim dealing with the shift register. Yet again, you side with bad law when it suits your Windmill chases.

    Second, you throw out a strawman by attempting to make my position move from a(n actual) machine change to a “pen and paper” implementation.

    Your straw violates not only what my actual argument is, but seeks to obfuscate on a position NOT advanced – and to which a proper reply would be to (again) tell you that the exceptions to the judicial doctrine of printed matter would suffice to negate your argument.

    As it is, please kindly move the goal posts back – your shift completely avoids having you respond to my actual point presented to you at post 121:

    There simply is NO “just use” without a first step (that you again omit) of CHANGING a machine by re-configuring a machine with the software manufacture that provides for the capability of your “just use.”

    This is not a new point presented to you, it is either extreme hubris or extreme dishonesty (or both) that you exemplify by again dissembling so.

  142. Night Writer December 22, 2017 8:16 am

    And again I see you using the term “math” to harken back to the 19th century of how math was viewed with natural laws.

    Math is now seen as applied math as used with computers and as methods of information processing — you know like your brain performs to generate your propaganda. Please try to stay within 100 years of modern thinking.

    And, to all the garbage above about 101–real simple to think about. Look at the structure of the claims. All the 101 cases boil down to an assertion that some of the structure of the claim is a magical and should not be able to be claimed. The judges/justices then generate garbage to try to justify that the structure is “abstract” or “a natural law,” or an attempt to claim such.

    Real easy.

  143. Night Writer December 22, 2017 8:18 am

    @142 Mr. Heller’s treachery continues:

    Anon, Ed the Ned has not changed his arguments in the last 10 -15 years. They come from R. Stern the architect of Benson (he as at DOJ).

    I’ve argued with R. Stern. Same arguments as Ed the Ned. Just garbage propaganda that ignores and mischaracterizes modern science.

  144. Night Writer December 22, 2017 8:24 am

    Ed the Ned: Certainly simply using a computer as a processor in a business method or mathematical calculation does not provide a new or improved computer.

    I see Ed the Ned is in full propaganda swing. This really is unethical Ed. Ed you tell us about the equivalence of hardware/software/firmware.

  145. Curious December 22, 2017 8:37 am

    Certainly simply using a computer as a processor in a business method or mathematical calculation does not provide a new or improved computer
    I really hope you don’t believe this — but some client is putting you up to saying this.

    I’ve been dealing with computers for about 40 years — in the first decade or so I had to write my own software to get them to run. A computer without software is a paper weight (much bigger paper weights back then). A program is an improvement to a computer. A computer loaded with software is MORE VALUABLE than a computer that has no software on it whatsoever. The fact that it is more valuable reflects people’s opinions that it has been improved.

    Ultimately, our intellectual property system should be protecting the value created by human intellectual endeavors. If that system is not protecting the value created by human intellectual endeavors, then it is a failed system.

    Ned — why do you keep advocating for such a failed system? Are you angling for a job a Google?

  146. Night Writer December 22, 2017 8:40 am

    regarding Ned>>I really hope you don’t believe this — but some client is putting you up to saying this.

    My understanding is that Ned gets clients from R. Stern (author of Benson).

  147. Curious December 22, 2017 8:44 am

    1952, Congress amended the statute to use the term process rather than a term art, but made clear in section 100 that art and process were meant to be the same thing.
    Wow — nice misrepresentation of the law. 35 USC 100(b) states “The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” Did you notice that, in the definition of “process,” “art” is just a subset of what is included as part of that definition. Accordingly, there is not a one-to-one correspondence between “process” and “art” (i.e., not the “same thing”) — contrary to what you stated.

    I haven’t read all of the comments, but I’ve seen Anon has already called you out on this. Why do you continue to spout failed arguments? What drives you to misrepresent the law? I know why the likes of Google want to change the law — for financial reasons. Is it the same with you?

  148. Curious December 22, 2017 8:50 am

    Imaging telling a 5 year old at Christmas that he got a new bow and arrow because you changed his target. He would laugh at you.
    Where do you come up with these lousy analogies? A computer is reconfigured. You “bow and arrow” is re-aimed. Not the same.

    Your analogy would be more appropriate in arguing that putting new inputs into software changes the software. However, I know of no one that argues that new inputs into old software makes it new software.

  149. Anon December 22, 2017 9:46 am

    Curious and Night Writer,

    As you have noticed, I have called out Mr. Heller for advancing bogus arguments.

    And clearly, this is not the first time.

    The issue has become more than merely AN advancement of bogus arguments and has evolved into an issue of why the repetition of bogus arguments persists.

    It is not as if Mr. Heller ever stops and applies critical thinking to the points presented.

    Ever.

    Instead, what happens is that Mr. Heller engages in what has been termed “the internet version of shouting down.”

    He is NOT engaging in reasoned discourse.

    Instead, ALL that he is doing is retreading propaganda.

    And it is not even good propaganda at that.

    Separately,

    Night Writer, you provide a statement regarding math.

    I have advanced (many times over many years) a manner of viewing “just math” that provides a much more precise understanding (in direct contrast to the use of “just math” to obfuscate understanding – as witness Mr. Heller):

    When one hears the words “math,” one should attempt to separate the point being advanced as to which actual concept is being referred to. There are (at least) three such concepts:
    a) math – as in basic math,
    b) applied math – as in using math as a tool (which is basically what most all engineering – read that as ‘technical efforts’ if you like),
    c) MathS – as in the philosophy of math and applied math, often seen in “higher level” discussions and included the like of Tegmark (and PoiR, of Slashdot and Techdirt ‘fame’). This last will often be inappropriate for legal discussions, as the “philosophy” does not concern itself with the legal realm, and will treat matters in manners that are not helpful for the legal realm. That is not to say that understanding the philosophical discussion should be avoided. Such is often a fascinating undertaking. It IS to say though that an understanding of the limitations induced by a non-law inclusive viewpoint can be important in applying critical thinking to some of the anti-patent arguments advanced by those who would wholesale deny patent protection to software innovation.

  150. Ternary December 22, 2017 10:56 am

    Aaaah, @132. The core of the poodle reveals itself, as in Faust. A programmed computer is “a new use of a known machine” and “But we know, using a computer or pen an paper to calculate a mathematical algorithm is not really a “new” use of the computer…”

    Edward, in this discussion it would be helpful to clarify if you believe that to be true.

    It may be (I am eternally optimistic) that you only reflect/discuss what is currently considered in case law, based on historical interpretations. However, if you truly believe that a programmed computer is “a new use of a known machine,” we are clearly wasting our time in engaging in discussions.

  151. Night Writer December 22, 2017 11:32 am

    Their goal is to overturn Alappat. That is what Lemley (there is no structure in softare) and the like are after.

    Function without structure. It’s magic!

  152. Ternary December 22, 2017 11:35 am

    Good points @ 149 Anon.
    I would add another type of mathematics, which is operational mathematics. Mathematics in engineering used as a modeling tool is known of course, to most of us. Relatively new, and less known outside the engineering community, is operational math as a set of expressions or representations that when executed on a computer perform a useful real-life operation. Digital filters are one example. An FFT to perform a convolution in for instance cryptography is another, as is a statistical representation of an object in an image to be used for object recognition. Certain algorithms in AI such as support vector machines and neural nets. And there are many other examples.

    What is new about operational math is that when executed at sufficient speed and provided with the appropriate signal converters it starts to replace existing devices (such as radio receivers, but also stored data on memory as video or audio) or form entirely new devices as in virtual reality, 3D printing to replace manufacturing, crypto coins replacing money (as long as that lasts). We are, I believe, facing a technology where math is not merely a model of reality, but is part of an implementation of reality and to make a distinction between physical devices and programmed devices becomes technologically irrelevant.

  153. B December 22, 2017 11:36 am

    “Function without structure. It’s magic!”

    clap . . . clap . . . clap . . . (golf clap)
    Well said!

  154. B December 22, 2017 11:39 am

    ““The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” Did you notice that, in the definition of “process,” “art” is just a subset of what is included as part of that definition.”

    In some of my readings, I understand that Giles Rich intentionally crafted language this in order to address the SCOTUS’ idiotic error in Leroy v. Tatham

  155. Anon December 22, 2017 11:51 am

    Ternary,

    It is worse than that.

    Far worse.

    My admonitions of Mr. Heller’s tactics have pointed out his fallacies along either option that you present to him.

    First, the plain fact of the matter – and purely from a reality point of view – is that a machine must FIRST be reconfigured with any new software prior to that machine even being able to “just use” that software.

    Second, as a matter of law, even if somehow Mr. Heller waves his magic wand and implements software without any change to the machine, then the law permits patent eligibility to claims that ARE merely “new uses” to an old (unchanged) machine.

    There is NO fact or law (as written by Congress) that cuts as Mr. Heller attempts with executing software being somehow a “use” that does not “count.”

    As I have additionally pointed out, ALL of Mr. Heller’s “concerns” are already accounted for by the exceptions to the judicial doctrine of printed matter – and there exists a REALLY simple “set diagram” explication of this.

    In essence, what occurs with these exceptions (and the doctrine itself) is that the OTHER prong of 35 USC 101 is evaluated. As a reminder (and apologies if this is too self-evident), 35 USC 101 has two prongs: it has the prong concerning the wide open gate of statutory categories (see Chakrabarty for an apt description), and it has a prong that serves to limit eligibility to the Useful Arts.

    Elsewhere (and most oddly), Mr. Heller has sought to freeze innovation to somehow being only those things that may have been strictly considered “useful” at the time of the setting of the US Constitution. That of course is a ludicrous and unsupportable view, given that innovation itself MUST deal with advances into the unknown (and it exactly WHY 35 USC 101 is viewed – and it is TO BE viewed – as a wide open welcoming gate.

    Plainly put, and anyone approaching the topic with even the least bit of inte11ectual honesty would see, innovation has provided that software and business methods are most definitely contained within the Useful Arts – as that legal term of art is properly recognized.

    As already indicated, the exceptions to the judicial doctrine of printed matter ALREADY guard this function, and no, let me repeat NO wholesale, de facto, or categorically applied exclusion of business methods or software innovation is appropriate.

    Of course, this cuts directly against the Windmills of Mr. Heller.

  156. B December 22, 2017 11:55 am

    JCD@137

    ‘“We also assume, since respondent does not challenge the examiner’s finding, that the formula is the only novel feature of respondent’s method.” Parker v. Flook, 437 U.S. 584, 588 (1978).’

    And yet three years later, the SCOTUS declared that it is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. – Diehr.

    And then later declare that it’s okay to ignore those well-known, routine and conventional steps. – Alice

    So help me, I’d like to take a cattle prod to the SCOTUS in a dimly-lit room and zap them every time they failed to explain their contradictory statements.

  157. Anon December 22, 2017 12:17 pm

    B,

    Feel free to apply that same rod to attorneys who – in their pursuit of their chosen idiological Ends – embrace the Court as if no such contradictions exist.

  158. B December 22, 2017 12:29 pm

    “their chosen idiological Ends.”

    Anon, you misspelled “idiotic.”

  159. Edward Heller December 22, 2017 2:56 pm

    Ternary@133, regarding the Viterbi algorithm, I do not understand why you suggest that I have to take back my earlier conclusion that a computer, in a larger environment of a machine or a process, executing the Viterbi algorithm that improves that machine or that process is nonstatutory.

  160. Edward Heller December 22, 2017 3:01 pm

    B: Ned,. I’ve read Flook twenty to forty times. Don’t assume. The SCOTUS got It wrong because the SCOTUS was technologically ignorant.

    B, I don’t know what you thought the Supreme Court got wrong in Flook, but they clarified that preemption was not the issue. They clarified that mathematics was nonstatutory. The holding was that gathering data, and then performing a calculation ending in a number did not recite a statutory process.

  161. Anon December 22, 2017 3:02 pm

    What does this even mean:?

    that a computer, in a larger environment of a machine or a process,

    Where is the requirement that for computers (and apparently ONLY for computers) that some “larger environment” is a statutory requirement for eligibility?

    This appears to be Mr. Heller further sliding down a slippery slope of his falsehood concerning “process” as somehow necessarily being a handmaiden category dependent on some hard good category…

    Perhaps Ned, you should take a moment (or several) to contemplate the many posts here that deconstruct your desired world view.

  162. Edward Heller December 22, 2017 3:10 pm

    Curious: A computer without software is a paper weight (much bigger paper weights back then).

    But you are talking not so much about a computer, but a computer system comprising not only the processor, but the display keyboard and other human interface apparatus. For the human to be able to communicate to the computer system efficiently, the computer system must be running and OS and other software.

    But this does not changed the validity of my statement that a computer executing software does not improve the computer because in my statement I am limiting the statement to the computer as opposed to a computer system.

    I acknowledge that most of us think of a computer system when we say computer. In order to avoid this confusion perhaps we ought to use processor instead of computer. But even that at times is vague and indefinite if we only talking about a CPU executing instructions from a program memory.

  163. Edward Heller December 22, 2017 3:17 pm

    Curious, I maintain that change from Art to Process in the statute was not intended to change the law, but to codify the cases that had uniformly been using the term process or method instead of art.

    Certainly the new use of a known machine etc. can be a statutory process if it results in a new physical effect which is equivalent to a new or improved machine, manufacture, composition or conventional process. That is what the law was prior to 1952.

    If you have any evidence at all that Congress intended to overrule any prior Supreme Court decision as opposed to codifying the law in this area, I be quite willing to listen. But I would be surprised that it exists given that we had so much briefing about 101 in the last 40 years that this issue should have been raised at least once.

  164. Edward Heller December 22, 2017 3:26 pm

    Ternary, let’s be clear about this. I hope you do not maintain that changing the algorithm calculated by the computer improves the computer.

  165. Edward Heller December 22, 2017 3:32 pm

    B, In some of my readings, I understand that Giles Rich intentionally crafted language this in order to address the SCOTUS’ idiotic error in Leroy v. Tatham

    Of course you are referring to the language in 100(b) that defined process to include a new use, etc.

    This is interesting. If you have a citation it would be quite useful. One wonders that is as never been brought up to the Supreme Court considering the fact that LE ROY ET AL. v. TATHAM ET AL., 55 U.S. 156, 14 L. Ed. 367 (1852) is cited in almost every 101 case as if it were good law.

  166. Edward Heller December 22, 2017 3:48 pm

    B, And then later declare that it’s okay to ignore those well-known, routine and conventional steps. – Alice

    There is little doubt that Steven’s view, expressed in his dissent in Diehr, did not prevail. Steven’s would look at the novel subject matter in isolation, not considering any of the old elements of the claim for any purpose. Steven’s would have said that the claim in Diehr was nonstatutory even though the mathematics/program computer was used to improved and otherwise statutory process. When the Supreme Court in Diehr talked about dissection, if specifically commenting on Steven’s view.

    Later, in Mayo, the Supreme Court clarified that simply because parts of the claim pass the MOT, as they did in Diehr, does not make the claim statutory if those elements are old and conventional. The novel subject matter has to be applied in an inventive application. Alice extended this view to “abstract ideas.” But looking back at Diehr, is quite clear that the reason Diehr was deemed a statutory was because the mathematics was applied during the molding process – by measuring the temperature inside the mold during the process, recalculating, etc. This improved the effectiveness of the existing process.

  167. Edward Heller December 22, 2017 3:58 pm

    Anon@161: What does this even mean:?

    “that a computer, in a larger environment of a machine or a process,”

    Anon, we have been talking about Alappat for years. One of the questions in Alappat was whether a computer implemented equivalent of the claimed digital circuitry would pass 101. It did in that case because the Federal Circuit held that the claim was directed to a rasterizer which is a specific circuit of a graphics processor for a display.

    You keep ignoring the holding of the case and think that the holding of the case was that a programmed computer was per se statutory.

    The Federal Circuit extended Alappat in State Street Bank to effectively hold that a programmed computer was a statutory machine even if it was running a business method.

  168. Ternary December 22, 2017 5:53 pm

    Edward Re @159 You say in @132 “But we know, using a computer or pen and paper to calculate a mathematical algorithm is not really a “new” use of the computer or the pen and paper.” First of all to make an essential mistake by comparing pen and paper with a computer. Pen and paper cannot perform an algorithm, while a computer can.

    Viterbi decoders are trellis or maximum likelihood decoders that are used to decode signals which are encoded using convolutional codes and formed a basis for effective mobile phone technology. The Viterbi algorithm can be described in mathematical terms. The Viterbi algorithm in one implementation is a program described by the mathematical algorithm executed by a processor (a new use of a known machine in your terms). The convolutional coder is in essence a combination of two or more shift-register based coders which can be described by a z-transform. Mathematics again! So we get back to your own words: “using a computer or pen and paper to calculate a mathematical algorithm (like the convolutional coder) is not really a “new” use of the computer…” I say, yes it is, if the algorithm is novel.

    So when you ask “I do not understand why you suggest that I have to take back my earlier conclusion that a computer, in a larger environment of a machine or a process, executing the Viterbi algorithm that improves that machine.” Because of the math, as in Benson and elsewhere, and in several other of your observations, including in @132, wherein you explicitly state (or repeat after SCOTUS) that mathematics performed on a computer (whatever that is) is nonstatutory and you agree with that. Or do you not?

    I (and others, I think) would be pleased for you to admit that a novel useful mathematical algorithm executed on a computer is an improvement of that machine. But you won’t say it. Or if you say it you will be equivocating later what you mean.

  169. Anon December 22, 2017 5:53 pm

    I have ignored NO holdings of the Alappat case, Mr. Heller.

    Quite in fact, I have attempted to school you on the fact that a case – such as Alappat may have more than one holding, and that in particular YOUR view of the Alappat case is extremely deficient.

    THAT case is not your friend.

  170. Edward Heller December 22, 2017 6:08 pm

    Anon, this is how Rich described the holding of Alappat:

    “Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result” — the smooth waveform.”

    State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368, 1373 (Fed. Cir. 1998).

    Note, the Federal Circuit did not hold that any programmed computer was eligible. The claims in Alappat were directed to a rasterizer (part of a graphics processor) of a display and it produced a smoothed waveform on the display. There is nothing in Alappat to suggest that the court there held that a computer simply calculating math was eligible.

  171. Ternary December 22, 2017 6:11 pm

    Edward @164 “ I hope you do not maintain that changing the algorithm calculated by the computer improves the computer.“ I never said that.

    What I do maintain is that a computer executing a first algorithm is a different machine compared to the same computer executing a second algorithm. One has to compare the execution of the algorithms, such as execution time, accuracy, reliability and repeatability and even power consumption to determine if one programmed machine is an improvement over another. Or over other prior art.

  172. Edward Heller December 22, 2017 6:16 pm

    Ternary, all existing computers are useful for calculating mathematical algorithm’s. One does not improve these existing computers by providing a different algorithm.

    A programmed computer executing the improved algorithm however might be useful in a specific application – such as reducing noise received at a station from a cell phone. Viterbi after all, was a founder of Qualcomm.

    You have to take a look at the holding of Alappat to understand more closely what were talking about here. Look at post 170. I quote Rich’s understanding of the holding of Alappat – this taken from State Street Bank. The programmed computer executing the improved algorithm must be applied as it was in Alappat to improve some larger process or larger machine – larger than the programmed computer itself.

  173. Night Writer December 22, 2017 7:14 pm

    Ed the Ned is merely trying to play the technical improvement of the hardware game. Lame. Gee, literally the hardware has not changed, but even the EPO holds that some software improves the operation of the computer per se and is thus eligible.

    So, when we look at what the computer is doing, then that functionality is improved. And, you only know what is actually performing those functions –hardware or software if you look into the black box.

    Ed the Ned refuses to discuss the equivalence of hardware/software/firmware.

  174. Ternary December 22, 2017 8:31 pm

    Edward @172 A computer may run a first algorithm called a ripple adder. The same computer may also run a second algorithm called a carry look-ahead adder. The computer with the second algorithm is an improved computer over the computer with the first algorithm. There are sooooo many examples of different algorithms that improve a computer.

    If you like the improved computer and use the algorithm often you may implement the algorithm in discrete components, which happens often with FPGAs, or in processors you move the algorithm as hardware into the ALU? Or in other cases you create a GPU. Really, why are we having this discussion? Didn’t you learn this in school or even in your practice?

  175. Edward Heller December 22, 2017 9:16 pm

    Ternary, if a computer employs circuitry or equivalent micro-programming define adders or the like, certainly those computers are improved machines. The distinction between such machines and general-purpose computers executing software out of their program memories should be obvious and is obvious to any engineer.

    An FPGA configured to run a specific algorithm is no different from a general-purpose digital computer programmed to run same specific algorithm because the configuration is a simply a matter of programming. The FPGA is not improved.

    Use either the FPGA or programmed computer in a larger machine (Alappat) or larger process (Diehr) and that programmed FPGA or programmed computer may improve that larger machine or larger process.

  176. Ternary December 22, 2017 10:31 pm

    No clarity in that answer. I am starting to understand why Anon gets upset with you.

    Let’s try another one. A computer executing a program performing a Fast Fourier Transform (FFT) is an improved computer over one performing a Discrete Fourier Transform (DFT). FFT and DFT are generally not part of a basic instruction set in a general computer.

    So, the question is: do you agree: the computer performing the FFT is an improved computer over the one performing the DFT! Each delivers the same results but the FFT is known to be much faster than the DFT. No FPGAs, no different ALUs, no GPU. All is a general processor executing different memory stored instructions, but applying the same basic instruction set of the computer.

    I am particularly interested in your arguments if you decide that one machine is not an improvement over another. Especially, because a DFT of a large number of points may take days (yes days) and an FFT over the same number of points mere seconds or less.

    PS: FFT and DFT both perform math

  177. Edward Heller December 22, 2017 10:44 pm

    Ternary, my answer remains the same and it is centered on your use of “program.”

    A computer having circuity or micro-programming is permanently changed. A computer that runs a program is not.

    Even so, if the invention is in a larger machine or process, the use of a programmed computer that improves that larger machine or process in eligible because the invention is the improved larger machine or process.

  178. Night Writer December 23, 2017 6:35 am

    Ed the Ned refuses to discuss the equivalence of hardware/software/firmware.

    Ed the Ned refuses to discuss the fact that he is saying there is new functions without structure.

    And, again, this argument that there is no permanence so no invention.

    The three favorite specious arguments of Ed the Ned. Notice he will not even respond to me anymore after 10 years because I know how to nail him down.

  179. Night Writer December 23, 2017 8:37 am

    Ed the Ned’s argument boils down to see that transistor in the silicon? Well, it hasn’t changed physical form when you consider turning it off and on again. The rest is just a lot of yapping with red herrings.

  180. Anon December 23, 2017 2:29 pm

    A computer having circuity or micro-programming is permanently changed. A computer that runs a program is not.

    The fallacy continues.

    Point blank: a computer physically cannot “just run” a computer program unless that computer is first changed by re-configuring the computer WITH the computer program.

    There is simply no such thing as a computer that can “magically” just run software that has been configured into the machine.

  181. Anon December 23, 2017 2:32 pm

    The last sentence should read:

    There is simply no such thing as a computer that can “magically” just run software that has NOT been configured into the machine.

  182. Anon December 23, 2017 2:33 pm

    And again the fallacy of “a larger machine” with “Even so, if the invention is in a larger machine or process“…

    Mr. Heller, please stop with the deceptions.

  183. Ternary December 23, 2017 5:36 pm

    Edward, Of course the machine with the FFT is an improved machine compared to the one with the DFT. That fact is indisputable and can be empirically established.

    And that is the statement you should have opened with. You can then follow with your thoughts about such a machine being patent eligible or not. But first admitting that a machine is useful and then arguing that it is nonstatutory subject matter is of course embarrassing in an audience of engineers, though lawyers appear to have less problems with that. I understand that you try your best to provide some technical underpinning to your point of view. It doesn’t work and it doesn’t make sense.

    Happy holidays to everyone.

  184. Night Writer December 23, 2017 6:54 pm

    @183 Ternary Happy holidays too!

    Good luck with Ned. I’ve been at it for 10 years with him. He is not being intellectually honest, but is pushing propaganda. He’s a smart guy. I think I will email his daughter. Pretty sure that I met her once. Oddly.

  185. angry dude December 23, 2017 10:32 pm

    Edward Heller@175

    “An FPGA configured to run a specific algorithm is no different from a general-purpose digital computer”

    Dude, for all practical and legal considerations FPGA is pure hardware, reconfigurable hardware, but still HARDWARE

    And there is no such thing as “general purpose computer”: all computers become specialized machines once program instructions are loaded into memory and start executing

    What is so hard to understand here ???

  186. Edward Heller December 23, 2017 11:53 pm

    angry dude, it is quite apparent that you do not get it. Truly.

  187. Night Writer December 24, 2017 7:05 am

    @186 Ed

    You have reached a joke stage. You won’t even respond to the contradictions of your positions nor of the basic scientific facts. Truly you have become a propagandist that deserves no respect.

  188. Anon December 24, 2017 10:43 am

    Mr. Heller,

    Telling someone else that they do not “get it” while you yourself engage in fallacies, blanket acceptance of Supreme Court malfeasance (but only where such suits your views), and refuse to even address the points of fact, law, or history put directly to you, is not compelling.

    In the least.

    You indeed are part of the problem here.

  189. angry dude December 24, 2017 11:35 am

    Ed@186

    I don’t get what ?

    Answer this question: Is FPGA hardware or software program executing ?
    Then ask engineers the same question

    By your idiotic logic anything I can print on my 3D printer is not patent eligible because I write software to program that printer to print that thing

    You are anti-patent troll, dude. Period.

  190. Edward Heller December 24, 2017 11:44 am

    angry dude, you are still lost. The “invention” has to be an improvement to a machine, etc. The FPGA itself is unchanged by new programming. The new programming is a temporary state.

    The use of a programmed FPGA however in a larger machine or process can be in the invention. That was the fact pattern in Alappat – where the equivalent programmed computer was used as the rasterizer circuit in a graphics processor for a display.

    Thinking that the FPGA is improved by programming – a temporary state – is like thinking a computer is improved by programming – a temporary state. It is this kind of thinking that led to the patenting of business methods where the claim recited “do it on a computer.” Simply putting old hardware into a claim where that old hardware is used exactly like it used to be used is not sufficient for eligibility purposes. The invention itself has to be within the four classes.

  191. Edward Heller December 24, 2017 11:54 am

    angry, there is one caveat. If the programming is locked in, becomes fixed, then the programmed FGRA becomes a new or improved machine. Such are computers improved by new circuits that do improved math, even where the circuits could be emulated in micro-programming.

  192. angry dude December 24, 2017 11:57 am

    Edward Heller @190

    Dude, you don’t “program” FPGA – you load configuration bitstream to it

    It is as “permanent” as permanent can be – unless you unplug electric power.
    It is a hardware apparatus for all purposes: technical or legal

    Here is an idea for you and scotus critters to produce even more legal crap:
    include power-on requirement as sufficient condition for unpatentabliy of all fpga containing circuits.
    Seriously, I m sick and tired of all of this nonsensical legal crap and I’m out.
    Merry Christmas

  193. Edward Heller December 24, 2017 12:10 pm

    angry, it is quite clear you know very little about FPGA’s. They are reconfigurable (reprogrammable) for a reason.

    I have no idea why you struggle with simple concepts.

  194. angry dude December 24, 2017 12:35 pm

    Edward Heller@193

    FPGA is hardware, dude. Period.

  195. Edward Heller December 24, 2017 4:35 pm

    Angry dude, so long as you keep repeating that, you will demonstrate to everyone here that you do not get it.

    A computer is hardware too. But simply using a computer to run a program does not make the computer new, nor is the program eligible itself. Fixing a mathematical algorithm to the computer via circuits or micro-programming does the trick. Or using a programmed computer in a larger machine or process does the trick.

    These are simple concept, dude.

    Are you a lawyer? Think fixtures vs. movables. A fixture improves the property. Movables do not.

    Think signals. The reason a signal is not an article it because it is not fixed.

    Distinctions in the law, dude.

  196. angry dude December 24, 2017 6:38 pm

    Edward Heller@195

    FPGA is HARDWARE. Period. End of discussion.

    Juts give it a rest already. Don’t make an idiot out of yourself… pleeeeeze !!!

    Google VHDL or Verilog – Hardware Description Languages commonly used to configure FPGAs

  197. Anon December 24, 2017 7:20 pm

    Mr. Heller,

    Your notion of fixed is both incorrect and has no legal foundation.

    Look up into the night sky for signals (be them not man made) that are your “not fixed” but that have more permanence than ANYTHING ever made by man.

    It is not angry dude that is demonstrating to everyone that someone is not “getting it.”

  198. Edward Heller December 24, 2017 9:02 pm

    anon, if a programmed computer were enough by itself then neither Benson nor Alice would have happened.

    But, I do agree that the PTO thought that was the law for 10+ years, at least since State Street Bank. Many patent attorneys practicing today never knew any other law than the law of State Street Bank. Well, welcome back to reality.

  199. Anon December 24, 2017 11:59 pm

    Both Benson and Alice “are around” for all the wrong reasons.

    The score board is broken.

    Are you really that thick?

    (That’s not reality that you want)

  200. Curious December 25, 2017 3:27 pm

    anon, if a programmed computer were enough by itself then neither Benson nor Alice would have happened
    Benson was decided without 3 Justices, and written by a Justice, Douglas, who thought a tree (i.e., a living organism commonly known as being a source of wood) should have legal standing. Douglas, the other Supreme Court Justices, and probably the vast majority of the people involved in the case had never worked with a computer in their entire life. Alice is just the progeny of Benson.

    Benson was a sham of a decision — a creation (out of whole cloth) of a doctrine regarding 101 that would have been better tied to enablement under 35 USC 112.

    Well, welcome back to reality.
    What reality? You mean where your patent is directed to statutory or non-statutory subject matter is probably more based upon the Federal Circuit panel you get than anything else? You mean where legal distinctions being applied to technology are being made by people who have little clue about science and technology? You mean where our law regarding statutory subject matter is based upon undefined words?

    Nice reality — no wonder why the law is so screwed up.

    I’m sorry Ned, but the only people who agree with you are those that want to destroy the US patent system. What do they say about the company you keep?

  201. Edward Heller December 25, 2017 3:42 pm

    Curious, agree? I am not advocating any change in the law. I am just explaining the law as it is, as I understand it to be.

    When I went after IPR, that was advocacy.

  202. Night Writer December 25, 2017 4:19 pm

    @201 Edward Heller

    Except that you act as an advocate for Alice and Benson. And you advocate positions that are not supported by science.

    You advocate for function without structure. Etc.

    Well said Curious. I guess Ed must really need money.

  203. Edward Heller December 25, 2017 4:30 pm

    Night, there is very little utility in discussing this issue with you. You do not listen.

  204. Anon December 25, 2017 11:00 pm

    Mr. Heller,

    When it comes to not listening, that you would accuse anyone else of that (with supposedly a straight face) is, well, perverse.

    You have refused to listen – for years.

    Part – and not a small part – of the problem here is that the “scoreboard is broken,” and the Supreme Court is the culprit.

    You turn around, stick your fingers in your ears, clench tight your eyes and chant “the scoreboard, the scoreboard,” when it is that very scoreboard that is at issue.

  205. B December 26, 2017 10:47 am

    Anon: “Part – and not a small part – of the problem here is that the “scoreboard is broken,” and the Supreme Court is the culprit.”

    Anon, I personally think its a bad metaphor. The SCOTUS as a body cannot bring itself to admit it made a giant boo-boo. Most judges are like that. I think the first thing they teach people in judge school is to stick with their bv!!sh!t decisions no matter how stupid, and to make sure for the sake of stare decisis that they can spew an alternative grounds even if its a total fantasy.

    Also, why are you continuing to argue with Ned? Arguing with him is like chasing a squirrel around the back yard.

    ————————-

    Curious: “What reality? You mean where your patent is directed to statutory or non-statutory subject matter is probably more based upon the Federal Circuit panel you get than anything else? You mean where legal distinctions being applied to technology are being made by people who have little clue about science and technology? You mean where our law regarding statutory subject matter is based upon undefined words?”

    I think this is well said, and that Judge Linn would be among the first to agree with you. There are no standards to s101 after Alice Corp.

  206. Anon December 26, 2017 12:12 pm

    B,

    I think that the metaphor is excellent, and that the situation it describes is what is “bad.”

    Yes, I agree that most judges have a difficult time admitting to past mistakes.
    I think that you are correct in that “they can spew an alternative grounds even if its a total fantasy” is exactly what has been happening from the Supreme Court in view of 101.

    The problem is that their spewing has created a Gordian Knot of epic self-collision. They will NOT say that Diehr is overturned and in fact claimed outright that Diehr was not only NOT overturned, but was a case “most on point” (in Prometheus).

    When the Court itself has gone beyond its “interpreting” role and has (badly, oh so badly) rewritten statutory law such that THAT law is not irreconcilable with itself, and that a “we know it when we see it” level of “no standard” directly flows from application of the “Gist/Abstract” sword – the “gift” from the Supremes – any “way forward” necessarily involves recognizing what the problem really is.

    As you reflect on statements made by Curious, undefined words are a symptom of the problem. Ask yourself, why is it that there is no standard to s101 after Alice Corp.

    As to arguing with Ned (chasing a squirrel), I do like your analogy there. I tend to think of it though as less chasing a squirrel around, and more like my taking a 22 to the squirrel and blowing a hole through its position.

    The fact that Mr. Heller refuses to answer IS an answer that screams far more loudly than his attempted misdirections (his “I am not advocating, but merely stating the law” does not full anyone in the fact that he IS advocating that what the Supremes have done is perfectly fine with him, as long as such are applied to his own desired anti-patent ends (that is, anti-business method and anti-software).

    Mr. Heller is no doubt well aware of his deficiencies. That he pretends otherwise, that he not only pretends otherwise, but also chastises others given his known deficiencies, and my highlighting this effect continues to throw a sharp contrast between his desired ends and his proclaimed “pro-patent” stance.

  207. B December 26, 2017 12:29 pm

    Anon: ‘I think that the metaphor is excellent, and that the situation it describes is what is “bad.”‘

    Okay, I think the better metaphor is the Titanic steering into a string of icebergs because to change course would be to admit that the ship is taking water.

    It appears we agree on everything else.

    ———————-

    “Ask yourself, why is it that there is no standard to s101 after Alice Corp.”

    I have a three-word answer: “Reyna,” “Stoll” and “Hughs.”

  208. Scott April 6, 2018 4:39 pm

    I have been dealing with various modeling techniques for estimating material properties of an item. The item may be manufactured to test the material properties, but the value in the model comes from estimating the material properties without requiring manufacture and test to allow different designs to be compared. I have 101 rejections asserting abstractness. I have not been able to find much on modeling of this type.

  209. Paul Johnson April 13, 2018 9:48 am

    Scott
    Even though the machine-or-transformation test is not used anymore, it’s still a good benchmark. It’s also akin to evaluating preemption. So first, does your modeling technique result in a new method of manufacturing? Second, does it preempt all ways of comparing designs?