Federal Circuit rules Alice did not alter the law governing 101

By Gene Quinn
May 2, 2018

Federal Circuit rules Alice did not alter the law governing 101On April 20, 2018, the Federal Circuit issued a decision in Voter Verified, Inc. v. Election Sys. & Software LLC, a case arising from an appeal by Voter Verified, Inc. from the United States District Court for the Northern District of Florida’s dismissal under Fed. R. Civ. P. 12(b)(6) of its claim for patent infringement. The district court held that the claims of U.S. Reissue Patent RE40,449 (“the ‘449 patent”) are directed to patent-ineligible subject matter and, therefore, are invalid under 35 U.S.C. § 101. The Federal Circuit, in a decision authored by Judge Lourie, joined by Judges Newman and Reyna, affirmed.

The parties previously litigated the same patent, in a dispute dating back to 2009-2010. In that prior litigation the defendant argued that the patent was directed to ineligible subject matter. In a series of summary judgment orders during the previous litigation, the district court made validity and infringement decisions. The district court determined that claims 1-93 were not infringed and claim 94 were invalid as indefinite under § 112. The district court then entered summary judgment in favor of Voter Verified concluding that all the claims of the ‘449 patent, except for claim 94, were not invalid under §§ 101 and 112, because Election Systems failed to present any arguments or evidence regarding invalidity of these claims. Finally, the district court dismissed without prejudice the claim of invalidity of claims 85 and 93 under § 102, having already determined that they were not infringed, but held that claim 49 was invalid under § 103, even though the district court had also already determined that it was not infringed.


In the current litigation, which was filed by Voter Verified in 2016, subject matter eligibility was again raised during motions on the pleadings. In response, Voter Verified argued that issue preclusion, or collateral estoppel, precluded Election Systems from relitigating patent eligibility, which it argued had already been decided in the prior litigation. Election Systems argued that issue preclusion should not apply because there had been an intervening change in the law (i.e., Alice). Regardless of the existence of an intervening change in the law, Election Systems also argued that under Eleventh Circuit law issue preclusion would still not apply because two of the four required elements of issue preclusion were not met. More specifically, Election Systems argued that the § 101 issue was not actually litigated and it was not a critical and necessary part of the judgment in the first litigation.

The district court granted Election Systems’s motion to dismiss. The district court concluded that the Supreme Court’s decision in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014), constituted a “substantial change” in the law such that the issue of patent validity was not precluded from consideration in the second litigation. As a result of that ruling, the district court did not reach an issue preclusion analysis under Eleventh Circuit law. The district court then proceeded to analyze the claims of the ‘449 patent under the Alice/Mayo § 101 framework, finding that the claims were directed to an abstract idea that did not contribute substantially more to transform the abstract idea into patent eligible subject matter. Accordingly, the district court held that all the claims of the ‘449 patent were directed to patent-ineligible subject matter and, therefore, invalid under § 101

Intervening Change in law

The Federal Circuit did not agree that Alice presented an intervening change in the law, rather surprisingly finding that Alice did not represent a shift or change in the law of patent eligibility.

“Turning to the first condition, we conclude that Alice, which was decided after the first litigation ended, did not alter the governing law of § 101,” Judge Lourie wrote. “In Alice, the Court applied the same two-step framework it created in Mayo in its § 101 analysis.”

“Moreover, to the extent that Election Systems argues that Mayo was an intervening change in the law, we disagree because Mayo was not intervening,” Judge Lourie went on. “Mayo was decided while the first appeal was still pending before this court.”

How the Federal Circuit could rule that Alice did not change the law governing § 101 is a bit of a mystery, at least to those familiar with the real world. Judge Lourie is no doubt correct when he says that Mayo set out the two-step framework, but if what he and the majority were suggesting is that the law of patent eligibility relative to computer implemented innovation was the same prior to Alice as it was after Alice then he and the rest of the panel are simply wrong. Alice most definitely changed the law.

Concluding that the same two-step framework was the test ever since Mayo seems a convenient way of dodging reality, and in fact creating a narrative that simply is not true. At a time when there is real momentum gathering for a legislative solution to § 101 why did the Federal Circuit choose to rule that Alice did nothing to change the law? Is the Court simply unaware of how such a statement, despite being clearly erroneous, will be misused in legislative debates? Alice most certainly changed the law of patent eligibility, in fact changing it to the point where the landscape bears absolutely no resemblence post-Alice to what it was pre-Alice.

Even the most casual industry observer has to know that Alice changed the law governing patent eligibility. Indeed, any attempt to say otherwise is nothing short of a most extraordinary revisionist history being foisted upon the patent community. Outcomes are unquestionably different as the result of Alice, and if outcomes are different how exactly is it possible that the law did not change? If the law remained the same why was Alice a clear pivotal moment in software patent history? Obviously something has significantly changed. It does no good, and in fact does real harm to the system to suggest Alice did nothing to change the law when everyone with even passing familiarity knows otherwise.

Mayo related to poorly written life sciences claims relating to a medical diagnostic. While the Supreme Court unnecessarily overruled itself and ignored the patent statute in reaching its decision in Mayo, the unquestionable reality is Mayo dealt with a technology different from the one present in Alice. Indeed, the last time the Supreme Court had dealt with computer implemented methods in Diamond v. Diehr, the Supreme Court had found the claims to be patent eligible. Moreover, one need only look at the wreckage of software patents both in district courts, at the PTAB and at the Federal Circuit since Alice, as well as the extraordinary loss in value of software patents post-Alice.

Simply put, anyone who says Alice did not change the law is fooling only themselves. To what end the Federal Circuit seeks to fool themselves one can only wonder, but the Federal Circuit is wrong. Saying Alice did not change the law shows just how out of touch and insulated from reality the Federal Circuit has become.

Issue Preclusion & 101

Election Systems argued that by choosing not to respond to Voter Verified’s arguments against its § 101 invalidity counterclaim, the issue was never “actually litigated.” Moreover, Election Systems asserts that a determination of invalidity under § 101 was not critical or necessary to the ultimate judgment of noninfringement. The Federal Circuit agreed on both points. Thus, the Federal Circuit concluded that issue preclusion did not apply, not because there was a change in law, but rather because the issue of patent eligibility under § 101 was not actually litigated and it was not necessary to the judgment rendered.

Because issue preclusion did not apply, the Federal Circuit turned to the merits of the § 101 issue.

With respect to the first part of the Alice/Mayo test, Step 2A, the Federal Circuit explained that the claims are directed to an abstract idea. Judge Lourie wrote that the claims as a whole are to “the concept of voting, verifying the vote, and submitting the vote for tabulation. Humans have performed this fundamental activity that forms the basis of our democracy for hundreds of years.” Perhaps most damaging, however, was that Voter Verified themselves characterized these steps as “human cognitive actions” in their brief to the Federal Circuit.

With respect to Alice/Mayo Step 2B, which is sometimes referred to as the hunt for the inventive concept, the Federal Circuit found that there was no inventive concept in the claims sufficient to transform them into patent-eligible subject matter. “Neither party disputes that the claims recite the use of general purpose computers that carry out the abstract idea,” wrote Judge Lourie. “The case law has consistently held that these standard components are not sufficient to transform abstract claims into patent-eligible subject matter.”

 

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 69 Comments comments. Join the discussion.

  1. Anon May 2, 2018 9:43 am

    Without taking a side on the substantive matter of the article, I will merely point out that only one branch of the government has been allocated authority under the Constitution to write patent law.

    Something to keep in mind…

  2. Matt May 2, 2018 12:14 pm

    Not sure how this squares with this statement from a few months ago, in Inventor Holdings v. Bed Bath & Beyond: “we find that Alice was a significant change in the law as applied to the facts of this particular case.”

  3. BP May 2, 2018 12:16 pm

    Entities interested in policy control (agency capture), wove a tale, not too different from the troll tale. AIPLA from 31 July 2014 letter to Lee:

    There’s been no substantive change in the law. The opinion in Alice applies settled principles for applying the abstract idea exception to patent eligibility of process claims, making no substantive changes to that law. It applied pre-existing law and appears to be limited to the particular facts of the case.

    http://www.aipla.org/advocacy/executive/Documents/AIPLA%20Comments%20on%20Post-Alice%20Guidance.pdf

    As held, Alice did not change the law, it was a narrow holding that relied heavily on Mayo/Diehr. Entities interested in weaker government institutions, agency capture and “breaking things”, found opportunity in Alice to shift the USPTO away from evidence/law and toward policy, with that policy implemented as a top-down directive to strip examiners of their authority. Secret “panels” now decide what is patent-eligible according to policy (politics/lobbying).

  4. Bemused May 2, 2018 12:28 pm

    Anon@1: Very well said and entirely accurate. However…its the “interpretation” (and boy do I use that word loosely) of patent law (and the Constitution and hundreds of years of precedent) that is killing us…

  5. B May 2, 2018 2:16 pm

    ‘Turning to the first condition, we conclude that Alice, which was decided after the first litigation ended, did not alter the governing law of § 101,” Judge Lourie wrote. “In Alice, the Court applied the same two-step framework it created in Mayo in its § 101 analysis.”’

    smh

    Well, within that two-step test, Alice Corp. did change what may be considered “abstract,” i.e., “the building blocks of human ingenuity” to include the man made

  6. B May 2, 2018 2:18 pm

    “As held, Alice did not change the law, it was a narrow holding that relied heavily on Mayo/Diehr.”

    Total B.S.

    Diamond v. Diehr would be held patent ineligible under Alice Corp today.

  7. B May 2, 2018 2:21 pm

    Hey, BP

    I didn’t mean a slight to you in the above comment. I was criticizing the AIPLA comments, which you summarized.

  8. Anon May 2, 2018 2:25 pm

    “interpretation”….

    …with all due respect to Charles L. Dodgson, Through the Looking-Glass, chapter 6, p. 205 (1934). First published in 1872.

    “When I use a word,” the Supreme Court said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”

    “The question is,” said the little engine that could “whether you can make words mean so many different things.”

    “The question is,” said Supreme Court “which is to be master—that’s all.”

  9. B May 2, 2018 2:38 pm

    “Without taking a side on the substantive matter of the article, I will merely point out that only one branch of the government has been allocated authority under the Constitution to write patent law.”

    Generally, courts are allowed to adjudicate exceptions to legislative laws in order to avoid injustice as part of their intrinsic powers to interpret laws – typically by evoking legislative “intent” (whether real of imagined), That said, Alice/Mayo falls waaaaaay outside any rubric of statutory interpretation and legislative intent.

  10. B May 2, 2018 2:44 pm

    “When I use a word,” the Supreme Court said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”

    That sums up “abstract” perfectly, and you did it with quotes from the Alice in Wonderland series.

    To this I respond:

    Alice Corp. laughed: “There’s no use trying,” Alice Corp. said; “one can’t believe impossible things.”
    “I daresay you haven’t had much practice,” said the Supreme Court. “. . . Why, sometimes I’ve believed as many as six impossible things before breakfast.”

  11. Greg DeLassus May 2, 2018 3:22 pm

    @3 AIPLA “Alice… was a narrow holding that relied heavily on Mayo/Diehr.”

    Hooo boy. Alice “relied” on Diehr in the much same way that Muhammad Ali “relied” on George Foreman during the “Rumble in the Jungle.” Diehr was left a red, pulpy mass on the carpet by the time that Alice was through with it.

    As for the idea that Alice was a “narrow” holding, well, yes, it was narrower than the Pacific Ocean. It was also as clear as clear as a cinder block in its application, and no more inconsistent with the statute that it purports to be interpreting than a pork roast in a yeshiva dining hall.

    Aside from those minor problems, however, it really was a thoroughly unimpeachable piece of work. Well up to the standard that we have all come to expect when the SCotUS undertakes to “clarify” the patent law.

  12. Anon May 2, 2018 3:58 pm

    B @ 9 – the explicit point being , of course, is that the judicial branch may NOT partake in writing patent law.

    You note of “generally” does not reach based on the explicitness of the Constitution in this matter.

    Of course, as has been done in other arenas, Congress – under suitable restraints and with suitable clarity – may delegate its apportioned power to another branch of the government. For example, see 35 USC 283.

    However, and at immediate point, no such language has ever existed for 35 USC 101 and in fact, given that USC 101 is a direct result of Congress reacting against an anti-patent Supreme Court in 1952 (breaking the previous single paragraph into three separate sections and instead of “invention” (or gist of, or any of the dozens of variants that the common law sharing experiment had generated), the concept of obviousness was introduced. Given this historical fact, the “intent of Congress” was clear that the Court was NOT to have or maintain its previous common law scrivening power.

  13. B May 2, 2018 4:37 pm

    ‘You note of “generally” does not reach based on the explicitness of the Constitution in this matter.”

    Look, I’m only stating what is well-known re courts and making exceptions

    That said, the courts trample on the other branches of government with regularity. Too bad the legislature doesn’t impeach more judges who show a history of violating the Constitution. I once had a most corrupt federal dist. ct. judge (Maryland) take judicial notice of something that is a literally impossibility, then denied me an opportunity to be heard under FRCP 201(e). Total violation of due process. I forwarded a complaint to the 4th fed. cir., who repeatedly and PURPOSEFULLY misrepresented the fact pattern I gave them in order to dismiss the complaint. EVERY APPELLATE JUDGE in the 4th needs to be removed

    Let me be clear: I despise judges as a whole, and until the judiciary cleans its own litterbox that feeling will continue.

  14. Lost In Norway May 2, 2018 4:58 pm

    What in the ever loving *bleep*? How can’t Alice have changed 101? Did they not take a look at the increase in the number of 101 rejections or the huge impact upon software patents when deciding? I actually had hope (silly me) that they would have made a good ruling.

  15. Night Writer May 2, 2018 10:01 pm

    @13 B

    That sounds bad. I’ve run across some really corrupt judges but they were state judges. One actually said to me as the last word that she had better things to do than hear this case. And that she was going to go shopping. Shopping as in use the money she got for ruling against us.

    Anyway, I could go on and on about corrupt judges.

  16. Anon May 3, 2018 6:32 am

    B and Night Writer,

    Not to discount your woe in any manner, but an adage comes to mind:

    Power corrupts and absolute power corrupts absolutely.

    Your indicators of judicial malfeasance calls for MORE (not less) of my “little engine that could” and reflects the reasons why we (the royal we) cannot be lax in our (outside of the Commonwealth of Massachusetts) ethical responsibilities.

  17. Anon May 3, 2018 6:33 am

    B @ 10 – nice rejoinder, btw.

  18. Mark Annett May 3, 2018 8:40 am

    I am going to be a contrarian for a moment.

    Alice did not change the way I draft software related patent applications. I was drafting good applications before and I continue to do the same.

    Yes, I have to overcome 101 rejections from time to time but they are typically quickly resolved through an examiner interview.

    If one were drafting applications that were marginal or getting allowances for stuff that belonged in the public domain then yes, one likely has seen a sea change but personally, I haven’t.

    For me, it has just been additional hoops that I occasionally need to jump through, which I personally believe make the allowed patent stronger.

  19. B May 3, 2018 10:23 am

    That sounds bad. I’ve run across some really corrupt judges but they were state judges.

    Well, Maryland state judges are far worse. Unfortunately, the Court of Appeals in Maryland writes both the rules of procedure and evidence, and in several cases wrote out appellate due process. Makes being corrupt easier when you deny an appellant the right to be heard.

    What state are you talking about?

  20. B May 3, 2018 10:28 am

    For me, it has just been additional hoops that I occasionally need to jump through, which I personally believe make the allowed patent stronger.

    If by “stronger” you mean the independent claims are more narrow, well, okay.

    I had three 101 rejections put on my desk yesterday. One was actually legit and was easily addressed with a simple amendment (hint: “non-transitory storage medium”). The other two were world-class stupid. Thank god none of these two were from 3600.

  21. B May 3, 2018 10:35 am

    to anon

    “Your indicators of judicial malfeasance calls for MORE (not less) of my “little engine that could” and reflects the reasons why we (the royal we) cannot be lax in our (outside of the Commonwealth of Massachusetts) ethical responsibilities.

    I took the case to the SCOTUS based upon due process violations in MD and at the 4th. Turns out the SCOTUS is perfectly fine with the appellate courts violating due process. In fact, the SCOTUS get 2-3 petitions each year asking the SCOTUS to institute due process by the appellate courts. Jihadis taken off the battlefield while trying to kill our troops are entitled to more due process than an American citicen in a federal appellate court.

  22. Anon May 3, 2018 10:44 am

    B,

    I do feel your pain, and please understand that I do believe you to be a fine person living up to that ethical prong that accompanies my “soapboxing.”

  23. Night Writer May 3, 2018 11:07 am

    @18 For me, it has just been additional hoops that I occasionally need to jump through, which I personally believe make the allowed patent stronger.

    It really depends on the AU. If you get into 3600, then you are in real trouble.

  24. Mark Annett May 3, 2018 11:44 am

    B wrote ” I had three 101 rejections put on my desk yesterday… One was actually legit … The other two were world-class stupid”

    The fact that one was “legit” sort of proves my point that they can make your claims stronger.

    Yes, you will always get stupid rejections and even arguing and overcoming stupid rejections is a value as opposed to being issued a patent that will never hold up.

    So yes, B you had to do a little more work to overcome the stupid rejections, which for which you were likely compensated for and you have a better claim based upon the legit amendment.

    So I ask you, where really was the change in the law.

    Prior to Alice, the examiner in the legit one might have “incorrectly” not have cited it and you would have been left with an easily invalidated patent.

    As for the two stupid ones, they likely would not have been cited pre-Alice but as you will no doubt overcome them then they can’t be considered a change in the law.

    Simply pointing to the increased number of 101 rejections has no bearing if they all fall into one of these two classes: “legit” and “world-class stupid”.

    If this is the ONLY evidence then the Supreme Court is correct that the law has not changed.

    Aside from invalidating the patents of others that should never have been issued. From my perspective, I don’t see how it changed the law. At least it hasn’t changed how I draft patents other than possibly being a little more careful to make sure that I don’t leave myself open to a 101 rejection, which was always a “legit” possibility but not always exercised.

  25. EG May 3, 2018 1:26 pm

    Hey Gene,

    Worse than changing the law of patent-eligibility, Alice leaves us guessing what is meant by “abstract idea” by refusing to define this term. We “mere mortals” are thus expected to use a Ouija board to figure out what the Royal Nine mean by that term.

  26. B May 3, 2018 1:43 pm

    “The fact that one was “legit” sort of proves my point that they can make your claims stronger. “

    I didn’t write the claim, and would have made the amendment anyway.

    That said, please inform me how the other two 101 rejects do naught more than cost my clients money and aggravation? Where’s the benefit given the PTAB regularly affirms the stupidest 101 rejections on the planet?

  27. B May 3, 2018 1:59 pm

    ‘Worse than changing the law of patent-eligibility, Alice leaves us guessing what is meant by “abstract idea”’

    EG, you hit the nail on the head. “Abstract” (up until Berkheimer) was an arbitrary term. FYI, I made the Ouiji analogy in a CAFC reply brief in March of 2016. To wit, I scornfully replied to the Solicitor’s anti-evidence comments:

    “Without an evidentiary requirement, there can be no meaningful judicial review. Patent law would no longer resemble law, but instead would be reduced to capricious acts more akin to fashion or superstition. Law should be based on thoroughly reasoned public policy and cognizable rules, and not the capricious dictates of . . . for the patent community to unquestioningly accept as the latest unquestionable fashion trends in §101 rejection. Seriously, why not just allow examiner’s to address §101 issues using a Magic 8-Ball or a Ouiji Board? The answers provided would be just as meaningful, and such practice would save time and money on examiner training.”

    Unfortunately, the CAFC wasn’t entertaining such radical ideas in 2016 despite the fact that the holdings in both Mayo and Alice were based on evidence.

  28. B May 3, 2018 2:08 pm

    Anon @ 17

    B @ 10 – nice rejoinder, btw.

    Spank you. FYI, I used that quote on appeal to the 4th on the case I mentioned. The 4th didn’t address a single briefed issue, but cited a completely different (and legally implausible) reason to dismiss the case. The covered the dist. ct. Judge’s behind, and refused to give me an opportunity to respond to their new grounds for dismissal while shamelessly blowing through the FRAP

  29. There must be a pony somewhere... May 3, 2018 9:57 pm

    Well, if you regard this as a statement of future intent, it doesn’t sound so bad.

  30. IamI May 4, 2018 10:53 am

    Mark Annett @24:

    I would hope that any examiner would not need Alice to be able to recognize a proper 101 under In Re Nuijten, which has been around a decade now.

  31. Anon May 4, 2018 4:26 pm

    a proper 101 under In Re Nuijten,

    Never mind reality and physics points out that In Re Nuijten,” was poorly decided…

  32. Mark Annett May 4, 2018 5:11 pm

    @Iami

    You have in a nutshell stated the Supreme Courts case, “any examiner would not need Alice to recognize a proper 101…” Because Alice is not a change in the law.

    Yes, there has been renewed focus on what is a legit 101, some subsequent invalidation of issued patents that shouldn’t have been issued (that scared the hell out of everyone), and also some hyper over correction on the part of some examiners but I am still waiting for someone to explain to me what the change in the law has actually been for them.

    The examiners should have been examining these 101 issues the whole time but were not always doing so.

    So again, I haven’t seen anything in my practice that I would consider a change in the law. I drafted quality applications before and I draft them now.

    What I I have experienced is being unable to save poorly written applications by others that are unable to overcome 101 rejections because of how they were written.

  33. Mark Annett May 4, 2018 5:15 pm

    My bad, I meant to say “Federal Circuit” not “Supreme Court”.

  34. Night Writer May 5, 2018 6:45 am

    So hard to watch the apotheosis of RBG. Style over substance. Wow, she sticks to her opinions formed out of ignorance no matter what.

    She is the one that said that organizing human behavior was not the sort of thing that patents were meant for. I wonder if dumb a$$ Ruth knows that the first patents for IBM were for card readers that allowed the census to be taken. Without the card readers it would have taken too long to perform the counts.

    So we have to hear from the new media glowing fawning reports of what a great person this ignorant opinionated very old person that things in terms of early 19th century philosophy.

    We have become a third world country.

  35. step back May 5, 2018 4:56 pm

    NW@34

    Are you talking about recent film RBG?

    https://www.salon.com/2018/05/05/film-rbg-about-ruth-bader-ginsburg-unpacks-the-justice-behind-the-fame/

  36. step back May 5, 2018 5:06 pm

    NW @34

    I suspect all nine of the Bench Warmers of Mount Olympus have allowed themselves to be brainwashed into believing they can do no wrong. Whatever thought patterns pop into their unmanipulable “minds” (after reading briefs of the elite amici curie) must be true and correct, as if passed to them from an even higher up authority,

    http://www.channelingerik.com/wp-content/uploads/2015/10/cartoon0902.png

  37. Night Writer May 6, 2018 1:29 pm

    @35 yes I am talking about RBG.

    I agree they are all pretty bad, but dumb a$$ Ruth is putting out there arguments from about 1910. And she acts as if it is a virtue to stick to your opinions no matter what. What is even worse is that they have all these local news reports about how great and admirable dumb a$$ Ruth is. (Plus lots of FB crxp.)

    She should resign. Too old. A calcified brain that was never well-trained to begin with.

  38. B May 6, 2018 2:59 pm

    “She is the one that said that organizing human behavior was not the sort of thing that patents were meant for.”

    Yes, but fortunately, six justices rejected the Witches’ of Eastwick organizing nonsense

  39. B May 6, 2018 3:10 pm

    Whatever thought patterns pop into their unmanipulable “minds” (after reading briefs of the elite amici curie) must be true and correct, as if passed to them from an even higher up authority,

    Hey, to be fair the USPTO and more than half the amici were against handling Alice Corp. under 101. The SCOTUS had already made up its mind before briefing began, and the Alice/Mayo test is the SCOTUS’ brainchild.

  40. Anon May 6, 2018 3:43 pm

    A little late here, but I wanted to note a simple – but no less dramatic – error of logic in the views of Mark Annett.

    Mr. Annett, whether or not you believe that a certain level of disclosure and ardent writing to some “higher level” is what is and has always been required to meet 101 is absolutely besides the point.

    For example, I may view a “proper” writing of a specification to be one that is an exhaustive engineering specification, FULLY enabling anyone off of the street to make and use the claimed invention.

    But that is NOT the current state of the law, and if a Court (or court) case came out with that “interpretation,” it would doubtless BE a change in law.

    That the “change” (taking for arguments sake that such IS a change) affects “what you do” is not indicative of a change in law having actually been made.

    Your own personal level of application writing is just not dispositive to the state of law.

    That you may “over” write may be all fine and good (or not) for your particular clients. But the fact of the matter is that such is simply disassociated from whatever the law may be, and whether or not a change as impacting from a Court case has an effect of changing the law. Put simply, the fat that you feel that your own level of writing is not changed only reflects your own practice (and I would add, it reflects more than a bit of ego – not that such is necessarily a “bad” thing, but here, that ego blinds you, and does not permit you to see the extent of change that HAS come from the Court decision, and how that level of change DOES signify something substantial.

  41. B May 6, 2018 7:13 pm

    ” Put simply, the fat that you feel that your own level of writing is not changed only reflects your own practice “

    Anyone who hasn’t changed how they write patent applications after Alice/Mayo is a danger to his own client. Anything that can be taken as an admission will be taken as an admission, even if out of context. Actually, especially if out of context. Hey, and I’m a guy who hasn’t written a background section (when I write them at all) over 200 words in two decades.

  42. Night Writer May 6, 2018 7:30 pm

    @40 Anon

    Good points. One of the invalidation games of the CAFC is to require more than one skilled in the art needs for enablement.

    That is what the Williamson case is all about.

  43. Mark Annett May 8, 2018 8:58 am

    It appears my last comment may have been blocked for some reason.

    I am still waiting for anyone who believe that law has changed to tell me something that they are doing differently with respect to drafting patent applications that they weren’t doing before.

    Unless someone can explain to me something that they either weren’t doing before and are now doing or were doing and are now not doing when drafting the applications. I am frankly baffled how one says there was a change in the law. If it hasn’t changed what you are doing.

    Yes, the patent “landscape” has changed but I don’t believe it has changed the law (e.g. what should and should not have been allowable).

    The fact that patents are being invalidated because of 101 doesn’t mean the law has changed. It could also mean that both the patent examiners and those drafting the applications weren’t considering 101 they reviewed/drafted the applications.

    I considered 101 both pre/post Alice, which is a small part of what I meant when I said that I drafted “good” applications both before and after Alice.

    Yes, I am a little more deliberate about it post Alice because I know for sure that the patent examiner is going to review it and I have of course had to amend claims of patents that were interveningly filed (and even ones that were filed post Alice) because of 101.

    If the only thing that is occurring is that people are now, because of Alice, suddenly thinking about 101 again, when they draft their applications then that is not a change in the law.

  44. IamI May 8, 2018 9:50 am

    Mark Annett @34:

    It’s clear from your editing of my post that you missed the point of what I said entirely.

    In your first post, you said “Prior to Alice, the examiner in the legit one might have “incorrectly” not have cited it and you would have been left with an easily invalidated patent.” This implies that the examiner could have missed a “signal claim” rejection under In Re Nuijten if the Alice decision didn’t exist. And then you doubled down on this assertion in your followup to me.

    Alice and Nuijten have nothing to do with each other. Examiners who have been in the office any length of time should know the difference, and should have been making rejections under Nuijten before Alice (or even Bilski) came along.

  45. Anon May 8, 2018 10:38 am

    I am still waiting for anyone who believe that law has changed to tell me something that they are doing differently

    And you are still missing the point awaiting such. If you are still baffled, I suggest you read again my post. Slowly if you must. Have some one knowledgeable in law and logic help you if you must.

  46. Anon May 8, 2018 10:41 am

    IamI @ 44,

    I would posit that NO ONE should have been making In re Nuitjen rejections prior to that case, and had that case been decided properly – that is, in accord with reality and physics, then no one should have been making such rejection after that case as well.

  47. Mark Annett May 8, 2018 11:48 am

    @Anon. The Supreme Court has ruled in Alice, which you are now claiming to be more knowable than and the Federal Circuit Court has ruled that there was no change in the law as the result of Alice.

    So you are the one claiming to be more knowledgeable of the law than both the Supreme and the Federal Circuit Court, not I.

    You are insisting that there has been a change in the law.

    I am simply asking you to explain to me what you are doing differently, with respect to drafting applications. If you are doing nothing differently than just say so.

    If the law has changed then shouldn’t there be something you are doing differently???

    I am not trying to be insulting anyone here. I really am curious and willing to learn.

    What I don’t want to do is begin engaging in insults and I will and gladly let you have the last word if the conversation deteriorates further.

    Is there some threat in my question that causes you not to answer it?

    If you haven’t changed anything when drafting specifications pre/post Alice then simply say so. If you have changed then I simply want to know what it is you have changed.

  48. B May 8, 2018 1:05 pm

    @Anon. The Supreme Court has ruled in Alice, which you are now claiming to be more knowable than and the Federal Circuit Court has ruled that there was no change in the law as the result of Alice.

    I know that Anon, like myself, has long been critical of the CAFC’s denial for the need of evidence when making a 101 rejection. That puts him at least three years ahead of the CAFC.

    Hey, I don’t agree with Anon on everything, but I think his contempt of various CAFC decisions is well-founded. Hey – no disrespect – but if you can resolve the various CAFC decisions, then you’re a group of one. Read Judge Lynn’s dissent in Smart Systems v. Chicago Transit.

  49. Mark Annett May 8, 2018 3:25 pm

    @B. So I just read the the following article related to Judge Linn’s dissent. http://www.patentdocs.org/2017/10/smart-systems-innovations-llc-v-chicago-transit-authority-fed-cir-2017.html

    At the end of the article it asks, “Are we to consider all claim elements in part one, or boil the language of the claim down to its gist or main idea?”

    I have always first considered the latter when drafting my claims. Basically I always ask, ” What is the gist or main idea and is it something patentable?” Then I work on making sure all of the claim elements support that and that the specification supports all of the claim elements. So I draft the application backwards.

    The article then goes on to ask, “If the answer is the latter, how do we prevent different evaluators from finding different main ideas in the same claim, as was the case here?”

    The answer is that you obviously can’t.

    If it is during prosecution then you amend the claims to make it clear what your gist is or you argue the nonsensical nature of what the examiner is suggesting.

    If I was a judge, in this case, would I have reached the same decision that the all the patent claims were ineligible? The answer is likely, Yes, though I say so without having heard the evidence or read the case.

    However, I likely would have used a different gist, which is simply that using a magnetic strip on a card to initiate an action (like opening a door) and then doing additional processing of data from information on that card is known and belongs to the public.

    The reported innovation of having a local “white list” and specifically applying this to turnstiles, wouldn’t have been enough to sway me.

    BTW, if Smart Systems had come to me, I also would have advised them upfront about the unlikelihood of prevailing with this broad concept.

    So I don’t have a problem with the ultimate decision that the patent claims should be invalid in this case.

    That they reached the outcome through saying this was nothing more than a financial transaction is a path that I wouldn’t have chosen but I didn’t hear the case nor read the transcripts.

    So, maybe the process that I perform in drafting applications is the reason that I haven’t seen a change in the law. I have always been essentially doing the two-step process.

  50. B May 8, 2018 5:45 pm

    ‘The reported innovation of having a local “white list” and specifically applying this to turnstiles, wouldn’t have been enough to sway me.’

    And therein lies the problem. Smart Systems was an decision not based on evidence or the idea of preemption. Basically, the judges JUST KNEW the claims were ineligible despite the innovation.

    Why do you think the state of 101 law is so screwed at this very moment?

  51. Mark Annett May 8, 2018 6:17 pm

    @B As I don’t see the innovation there as worthy of a patent, I don’t think the state of the 101 law is screwed up.

    They were actually adding steps to a process rather than simplifying it. That is not typically a good path to patentability.

    Again without having read the case file, I feel it was the right decision, even if the method of getting there appears odd.

    I assume you feel that both the ultimate decision was wrong, as well as the method of arriving at it.

    If so then I understand why you feel the law has been changed.

    Likewise, you hopefully will appreciate why I don’t.

    Especially in light of the fact that I have always been essentially going through the two step process when I draft patents. 🙂

    Best wishes,

    Mark

  52. Anon May 8, 2018 7:10 pm

    Mr. Annett,

    You are NOT here “just to learn,” as you would have paid better attention to the point that I provided, instead of again attempting to have me answer your point.

    Answering your point contains no threat – it is just a meaningless point to answer, of which you would have understood by now if indeed you were here to learn.

    Further, I can guarantee that you were not drafting as you claim to be BEFORE the Court provided the “two-step.” Were you a mind reader in those days?

    If you say that you were, then you have lost all credibility.
    If you say that you were not, then you have lost most of your credibility, having then reacted to a decision of the Court.

    Which is it?

  53. B May 8, 2018 8:33 pm

    “. . . I don’t think the state of the 101 law is screwed up.

    They were actually adding steps to a process rather than simplifying it. That is not typically a good path to patentability.”

    I’m sorry, but that must be the two silliest things I’ve read all week.

    ———————————————-
    “As I don’t see the innovation there [in Smart Systems] as worthy of a patent,”

    Well, as the CAFC has taught us, innovation and 101 are different things depending on the time of day. That was one of Judge Lynn’s points. Also, it’s not “innovation” that drives patent ineligibility, its preemption.

  54. Mark Annett May 8, 2018 10:55 pm

    @Anon

    So let me get this straight.

    Your argument is that I have lost my credibility because you are in fact able to read my mind because you can “guarantee” that I was not doing something for which I would have to have been a mind reader to do. Which is impossible for me to have done because no mind readers exist, except for you who can “guarantee” exactly what I was thinking.

    I find it somewhat incredulous that you feel it is implausible that someone would have ever asked themselves (pre Alice). 1) What is the gist or main idea and is it something patentable?” Before they begin to draft a patent.

    2) Then having made that decision then “work on making sure all of the claim elements support that”. And then draft the specification supports all of the claim elements.

    I find this to be the most efficient way to work and it was the way I was trained.

    I find you continued refusal to answer my simple question baffling. As you have stated that you are not afraid to answer the question then I can only surmise that you possibly can’t answer the question at this point.

    As such, I am discontinuing posting here, though I have enjoyed the exchange with B and others.

    Feel free to get in any last words to your heart desires. The floor is yours.

  55. Anon May 9, 2018 8:43 am

    Mr. Annett,

    You again miss the point. I can guarantee something BECAUSE there is no mind reader and BECAUSE you would have had to have been not only a mind reader, but also would have had to have had the ability to foretell the future.

    Your direct claim of “I have always written claims with the Two-Step process in mind” is a falsity in itself, BECAUSE you could not possibly have foretold these Supreme Court cases. Therefore, you must have changed your own writing, which defeats your first position.

    This is NOT merely your attempted spin here of “what is the Gist (whatever it is that you think that may have meant prior to the Court fashioning its “Gist/Abstract” sword), and then “let’s support that Gist.”

    That’s a pretty strawman that you fall back to. Of course claims need to be written so that they are supported – whether or not your spin here of “supported the Gist” does not change the fact that claims need to be written in a manner that they are supported.

    That you continue to “be baffled” as to why I may refuse to answer your simple question ONLY confirms that you are NOT here to learn. You have yet to grasp my point,and only want to move on to your own (perceived) point. Why would you be baffled in that I refuse to entertain your point until you actually grasp mine? Especially as I point out that once you grasp mine, then your point becomes, well, pointless? Your “i can only surmise” is at best a lame ability to surmise anything.

    Since you actually refuse to budge from your soapbox, and you actually do not want to learn anything, and you have nowhere else to hide, I can understand why you are discontinuing posting here. I do hope that you understand that your “exit plan” is just not how you want to spin it. As always, your choice to post is yours. I can respect your wish to no longer engage, even as your proffered reason is easily seen through. Please come back when your words are what you can live up to.

  56. Mark Annett May 9, 2018 9:47 am

    @Anon

    I know that I said that I wasn’t going to post again but I finally realized what your refusal to answer my question reminds me of. It is the courtroom scene in a Few Good Men.

    Me (Tom Cruise): Do you draft your specifications differently because of Alice?

    Anon: (Jack Nicholson): I am not even going to dinify that with an answer?

    Me: Do you do anything differently, anything it all in response to what you say is a change in the law?

    Anon: Have you ever served in an infantry unit son?

    Have you ever served in forward unit fighting against the injustices and bad decisions raining down on us by the inept decisions of the courts?

    I do what I do because otherwise people die. Is that clear? Is that crystal clear?

    Me: Crystal…I just have one more question for you. If you know better that the Supreme and Federal Circuit Courts, who say there is no change in the law but you know there is a change in the law and you are always right then.

    Then why aren’t you drafting your applications differently, because you know the law better than the courts and you are always correct?

    Anon: You snotty little bastard!

    You want answers?

    Me: I want the truth!

    Anon: You can’t handle the truth!

    Son, we live in a world of walls that must be guarded. Whose going to do that you!

    I have more responsibility then you can possibly fathom.

    You don’t know what I know.

    You need me at that wall!

    I have neither the time or the inclination to explain myself to a man who stands under the very blanket of protection that I provide and then questions the way I do it.

    I would rather you just say “Thank You!” Or pick up a gun and stand guard.

    I don’t give a damn what you think you are entitled to!

    Me: Do you do anything differently?

    Anon: You are DAM right I…

    Unfortunately, we never got to the dramatic answer because I am alas, to my wife’s disappointment, no Tom Cruise.

    Anon, you proudly stand at your wall and keep protecting us from the bad decisions of the courts.

    I will proudly stand by my words and have even put my own name to them. 🙂

  57. Anon May 9, 2018 10:32 am

    Except not, Mr. Annett, as your refusal to actually address the point that I present has precluded ANY item of me addressing your point on its “merits.”

    You STILL need to recognize, grasp, and apply the point presented to you. As of yet, you have refused to do so, even as you mouth that you are “here to learn.”

    You have only proven the exact opposite.

    as to “I will proudly stand by my words and have even put my own name to them. ? ” – please, the gambit of “I use my name” has ling been debunked. All you do is add more IL-logic to your already questionable position with such a comment.

  58. Mark Annett May 9, 2018 11:35 am

    @Anon

    So I will readily agree which your point that whether or not I am doing anything differently has no bearing on whether or not the law has changed.

    I would hope that we could also both agree that if I had stated that I have made changes to the way that I draft applications that it would be fairly good evidence to support that I personally believe the law has changed.

    That I haven’t made changes could be in fact indicative of many many things: laziness, not caring, believing that I know better than the courts, wanting to fight it out in the courts so that I could make a name for myself, that the change was not something that impacted drafting, and even a remote possibility that I personally didn’t see a change.

    So I will absolutely concede your point that what I personally do has no bearing on whether or not the law has changed.

    Similarly, whether or not you have changed the way you have drafted applications, assuming you still do so, has no bearing on whether or not the law has changed.

    By the way, I don’t mean any slight by saying, “assuming you still do so”, you might be in an executive position, where the actual drafting is done by others or your focus could be on litigation.

    However, I think we can agree that if you have made changes to the way that you draft applications because of the Alice decision that it would be a good indication to support that you personally believe the law has changed.

    However, you not changing the way you draft applications could be for anyone of the reasons previously mentioned or another reason.

    So you ultimately answering the question one way or the other has no bearing on whether or not the law has in fact changed.

    Therefore, just humor me and answer the dam question.

    Have you changed the way that you draft application as the result of Alice?

  59. Anon May 10, 2018 8:35 am

    Therefore, just humor me and answer the dam question.

    You are still not here to learn. Grasp my point first, and then you will understand just why I have not bothered with yours.

    So you ultimately answering the question one way or the other has no bearing on whether or not the law has in fact changed.

    Do you even grasp the words that you use?

  60. Mark Annett May 10, 2018 10:25 am

    You do realize that your position that the law has in fact changed is, in the eyes of the courts, incorrect right?

    That my position that it hasn’t changed is, in the eyes of the courts, is the correct one right?

    As such, there is no motivation for me to ever accept your main premise that the law has in fact changed. That is, unless you can convince me that there is something worth doing differently.

    Let me assure you that I have understood your logic (and your insults) completely but as your main premise goes against the most recent court decision, the burden of proof is on you, not I.

    There is absolutely no incentive for me, or anyone else for that matter, to listen to anything that you have to say on this matter, as you are WRONG, in the eyes of the courts.

    As I am not struggling with 101 issues, I think maybe you should begin to think that maybe you can learn from me at this point. 🙂

    See, I can easily match your level of arrogance, if I want to.

    Honestly, at this point, I no longer care what you are doing.

    I thought it would be interesting to find out but not anymore.

    To be honest, I seriously doubt that you changed anything about the way that you drafted your applications because you have already claimed to know better than the Supreme Court with regard to Alice, which may or may not have been in the best interest of your clients. But as for your methods, keep them to yourself.

    You have to realized that as your main premise was wrong, you started with no credibility in my eyes on this issue.

    I frankly wanted to learn/understand why everyone was having such a problem with 101 issues and I wasn’t.

    I have resolved that.

    It is simply an inherent outcome of how I have gone about drafting applications, which is to start with the main concept the person is trying to claim and work backwards from there.

    The fact that you don’t believe that is what I have been doing is your issue not mine.

    I know that my clients have been well served by me both pre/post Alice and the recent court decision confirms, not potentially invalidates, what I have been doing.

    Maybe you should consider in whose best interest it is in for you not to realize that you are WRONG, in the eyes of the court, with your insistence that the law has changed.

    I am not saying that your clients will suffer, as one can obviously not agree with a decision and still act in the best interest of the client.

    All the best,

    Mark

    Maybe

  61. Anon May 10, 2018 1:52 pm

    in the eyes of the courts, incorrect right?

    You do realize that the courts are incorrect, right?

  62. Mark Annett May 10, 2018 5:31 pm

    Maybe you should find some that understands logic to assist you in reading my previous post, if you didn’t understand that I don’t. 😉

    Just kidding. Have a great day!

  63. Anon May 10, 2018 9:16 pm

    Maybe you should try again, Mr. Annett.

    No really. Your efforts here – what? is that an attempt at humor?

  64. Mark Annett May 10, 2018 10:29 pm

    I was parroting back some of your own words to me back to you.

    I was hoping that you would recognize them and that hopefully we could end this conversation.

    My goal was to imply that in spite of your insults to me that there were no hard feelings on my part.

  65. Anon May 11, 2018 8:13 am

    Your hope misses.

    Taking my words, and attempting to spin them out of context and apply them to me (instead of heeding them and YOU actually being here to learn) – that’s a non-starter.

    As to your last goal, you miss as well, as any insults that you may have perceived as being directed to you were NOT directed as such. My posts have been critical of your position, not you personally. Since you appear to want to deflect anything put to you away from any sense of critically reviewing your position, I can see why you would so place my posts as then necessarily being directed to something else.

    But that is merely on error on your part – doubling down on your refusal to grasp the point provided.

    As to ending the conversation, I do hope that you actually BEGIN the conversation by doing as I have implored – read and understand the point provided to you. You have yet to start doing that.

  66. Mark Annett May 11, 2018 9:15 am

    Dude, you just can’t take a hint.

    Why the hell would I ever adopt your way of thinking when I am having no significant issues surrounding 101 and you are? Especially when your philosophy is WRONG, in the eyes of the law.

    I have tried to be polite but in this relationship, it is not me it it you!

    If you feel unsatisfied then look me up on LinkedIn (you have my name) but please spare the rest of the audience by continuing to engage with me here.

  67. Anon May 11, 2018 9:54 am

    Dude, you just can’t take a hint.

    Look in the mirror, my friend.

    Politeness has nothing to do with you ONLY wanting your soapbox – just he opposite of your professed “I am here to learn.”

    As to “sparing the audience,” that too is something with which you should engage your local mirror.

  68. Mark Annett May 11, 2018 10:45 am

    I have learned what I came to learn, which is why I have not been having significant problems with 101 and others have. The answer: is because of the way I have and still do draft applications.

    In your particular case I suspect the reason you are struggling with 101 is your supreme arrogance.

    You have nothing that is in anyway helpful to me at this point, on this particular issue.

    I like people who think differently and I typically can learn from them but alas, on this score you are not one of them. You actually remind me an awful lot of Donald Trump.

    Again, I implore you to continue the conversation on LinkedIn, rather than publicly here.

  69. Anon May 11, 2018 1:59 pm

    I have learned what I came to learn,

    Mighty convenient of you to have such scope of what can be learned (and to paraphrase, you only learned what you wanted to hear.

    I suspect the reason you are struggling with 101 is your supreme arrogance

    Says the person exhibiting the supreme arrogance – and unable to even recognize that an issue exists. Mighty nice to have those eyes clenched so tight….

    <You actually remind me an awful lot of Donald Trump.

    LOL – you are the one unwilling to learn anything outside of the belief system that you want to hold onto, and you want to call me “Trump.” Now, that is a type of humor (albeit, unintended).

    As to “publicly here,” I have no problem with you continuing to publicly embarrass yourself as you are doing. Perhaps though, you may be starting to feel that you are not smelling like the rose that you merely want to smell like…

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