In an Abstract Idea Context, Little Is Unmistakably Within the Bright-line Eligibility Prohibition

By Jeremy Doerre
August 14, 2018

“[I]t seems clear that the Supreme Court did not intend to categorically prohibit patenting of everything which can be characterized as an abstract idea…”

This is part two of a three-part article suggesting that the Supreme Court’s “standard approach of construing a statutory exception narrowly to preserve the primary operation of the general rule,” Commissioner v. Clark, 489 U.S. 726, 727 (1989), should be applied to narrowly construe the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas.

 

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Image Source: Deposit Photos.

In part one of this article I noted that “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,” Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 88-89, 132 S.Ct. 1289, 1303 (2012).  Part one suggested that this bright-line prohibition should be narrowly construed, and that it would be reasonable to only apply the Alice/Mayo two-step framework implementing this bright-line prohibition for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Phillips, Inc. v. Walling, 324 U.S. 490, 493 (1945), of the bright-line prohibition.

Part two of this article notes that the bright-line eligibility prohibition was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level, and suggests that, with respect to an abstract ideas eligibility exception, the only things that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit”, Phillips, 324 U.S. at 493, of this bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

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The bright-line eligibility prohibition was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level.

Although the Court has not fully defined exactly what does fall within the abstract ideas eligibility exception, what does seem clear from the Court’s jurisprudence is that the Court’s “bright-line prohibition against patenting laws of nature, mathematical formulas and the like,” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303, is not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level.

As a first matter, categorically prohibiting patenting of everything which can be characterized as an abstract idea at some level would risk this “exclusionary principle … swallow[ing] all of patent law,” Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014), exactly as the Supreme Court warned against.

This is the case because any idea can be characterized as abstract at some level, and it is well established that every invention is a conceived idea.  On this latter point, the Supreme Court has unequivocably held that “[t]he primary meaning of the word ‘invention’ in the Patent Act unquestionably refers to the inventor’s conception rather than to a physical embodiment of that idea.” Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998).  This is neither a new development nor an isolated case, as the Court made clear a century earlier that “[i]n every case the idea conceived is the invention.” Gill v. United States, 160 U.S. 426, 434 (1896).

Because every invention is itself a conceived idea which can be characterized as abstract at some level, every invention can in theory be characterized as an abstract idea at some level.  Thus, interpreting the abstract ideas eligibility exception as categorically barring patenting of everything which can be characterized as an abstract idea at some level would create the exact slippery slope that the Supreme Court warned against in its recent eligibility jurisprudence.

Moreover, it seems clear that the Supreme Court did not intend to categorically prohibit patenting of everything which can be characterized as an abstract idea at some level because the Court indicated that there are at least some abstract ideas that are sufficient to confer patent eligibility: namely, inventive concepts.  The Court’s bright-line prohibition against patenting laws of nature and mathematical formulas clearly was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea because such a bright-line extension would bar patenting of inventive concepts, which by definition are capable of characterization as abstract ideas but which the Court explicitly acknowledged are sufficient to signal eligibility.

In this regard, the very first entry in the Oxford English Dictionary for “concept” defines it as “An abstract idea”. Oxford English Dictionary, “concept”, https://en.oxforddictionaries.com/definition/concept.  Even though every inventive concept by definition could theoretically be characterized as an abstract idea, it is clear from Supreme Court eligibility jurisprudence that an inventive concept is sufficient to confer patent eligibility on a claim directed to an abstract idea.  In this regard, an inventive concept may be thought of as an abstract idea that can properly be preempted by a patent claim.  This is consistent with the notion of an invention as an idea, as a patent claim to an invention is inherently preemptive of the idea representing the invention.

Currently, though, Supreme Court eligibility jurisprudence offers very little guidance on distinguishing a patent-ineligible abstract idea which cannot properly be preempted by a patent claim from an inventive concept sufficient to confer patent eligibility which can properly be preempted by a patent claim.

For example, as referenced in part one, in characterizing the second step of the Alice/Mayo test, the Court indicated that “we have described step two of this analysis as a search for an ‘inventive concept’ — i.e., an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself.” Alice, 134 S.Ct. at 2355 (internal quotations and alterations omitted).  In making this statement, the Court was quoting its own statement in Mayo (in a law of nature context) regarding the search for “an ‘inventive concept[]’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” Mayo, 566 U.S. at 72-73, 132 S.Ct. at 1294.

Applying this approach in an abstract ideas context creates a unique issue not present in a law of nature context, however: while it is generally easy to differentiate between an inventive concept and a law of nature, it is often possible for an inventive concept to itself be characterized as an abstract idea.  The Court in Alice specifically contrasted the “search for an ‘inventive concept’” with “the ineligible concept itself,” Alice, 134 S.Ct. at 2355 (internal quotations and alterations omitted), but the Court has not yet had the occasion to offer additional guidance on distinguishing an inventive concept from an ineligible concept.

While this lack of guidance is problematic to attempts to determine whether a particular concept is an ineligible abstract idea or an inventive concept which signals patent eligibility, the Court’s recognition that an inventive concept can signal patent eligibility signals that the Court did not intend its “bright-line prohibition against patenting laws of nature, mathematical formulas and the like,” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303, to categorically bar patenting of everything which can theoretically be characterized as an abstract idea at some level.

 

In an abstract ideas context, there is little that has been indicated to be plainly and unmistakably within the terms and spirit of the bright-line prohibition.

Because the Court’s “bright-line prohibition against patenting laws of nature, mathematical formulas and the like,” Id., was not intended to categorically prohibit patenting of everything which can be characterized as an abstract idea, it is necessary in each case to determine whether a particular concept that a claim is alleged to be directed to is intended to fall within this bright-line prohibition.

As outlined in part one, the implicit statutory exception for abstract ideas should be construed “narrowly in order to preserve the primary operation of the provision,” Clark, 489 U.S. at 739 (citing Phillips, 324 U.S. at 493), as to do otherwise would risk “frustrat[ing] the announced will of the people.” Phillips, 324 U.S. at 493.  Given that such a narrow construction is necessary for the implicit judicial exception itself (for “patents that claim the ‘buildin[g] block[s]’ of human ingenuity,” Alice, 134 S.Ct. at 2355 (citing Mayo, 566 U.S. at 89, 132 S.Ct. at 1303; Mayo, 566 U.S. at 72, 132 S.Ct. at 1294)), one must be even more careful in construing the “bright-line prohibition … which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303.

Analogously to Phillips, there is an argument that “[t]o extend [such a bright-line prohibition] to other than those [concepts] plainly and unmistakably within its terms and spirit is to abuse the interpretative process and to frustrate the announced will of the people.” Phillips, 324 U.S. at 493.

Here, one result of the Supreme Court’s very reasonable choice to decline to “labor to delimit the precise contours of the ‘abstract ideas’ category,” Alice, 134 S.Ct. at 2357, is that there are only a limited number of concepts which it is clear are “plainly and unmistakably within [the] terms and spirit,” Phillips, 324 U.S. at 493, of this bright-line prohibition.  In particular, in an abstract ideas context, arguably the only things that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of this bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

As to the first of these, as noted above, the Supreme Court has clearly “endorsed a bright-line prohibition against patenting … mathematical formulas …, which serves as a somewhat more easily administered proxy for the underlying ‘building-block’ concern.” Mayo, 566 U.S. at 89, 132 S.Ct. at 1303.

For example, with respect to mathematical formulas, in Parker v. Flook, 437 U.S. 584 (1978), the Court held that where “[a] formula is the only novel feature of [a] method,” “the discovery of this feature [does not] make[] an otherwise conventional method eligible for patent protection.” Flook, 437 U.S. at 588.  Likewise, in Gottschalk v. Benson, 409 U.S. 63 (1972), the Court indicated that “[t]he mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula.” Benson, 409 U.S. at 71-72.

Similarly, with respect to fundamental practices that are long prevalent, in Alice, the Court found “a fundamental economic practice long prevalent in our system of commerce” to lie within its bright-line prohibition, and applied the test it had articulated in Mayo to find claims ineligible. Alice, 134 S.Ct. at 2350; see also Bilski v. Kappos, 561 U.S. 593 (2010). (The Supreme Court has only specifically indicated the ineligibility of fundamental economic practices that are long prevalent, but for purposes of this article, it is assumed arguendo that the broader, genericized formulation of “fundamental practices that are long prevalent” can be utilized. Arguably, there is no real need to employ an eligibility exception for fundamental practices that are long prevalent, as it seems like a claim directed to such a concept (absent an additional inventive concept), would clearly be unpatentable under 35 U.S.C. § 102 as lacking novelty or under 35 U.S.C. § 103 as obvious.)

None of this is intended to suggest that there is any sort of “talismanic significance,” see Alice, 134 S.Ct. at 2356-57, to mathematical formulas and fundamental practices that are long prevalent.  Instead, this is only intended to point out that while it is clear that the Court intends these to be within the ambit of the Court’s bright-line prohibition so as to warrant application of the Mayo/Alice framework, it is not clear how to determine whether other concepts that don’t fall within either of these groups is intended to be within such ambit of the bright-line prohibition.

That is, with respect to an abstract ideas eligibility exception, the only things that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit”, Phillips, 324 U.S. at 493, of this bright-line prohibition are mathematical formulas and fundamental practices that are long prevalent.

 

The bright-line eligibility prohibition should be narrowly construed, and the Mayo/Alice test implementing it only applied for concepts plainly and unmistakably within its terms and spirit.

As outlined in part one, given that the Alice/Mayo two-step framework is only designed to determine whether a claim is directed to a patent-ineligible concept barred by a bright-line prohibition, it would be reasonable to only apply the Alice/Mayo two-step test for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition.

As noted above, with respect to an abstract ideas eligibility exception, mathematical formulas and fundamental practices that are long prevalent are arguably the only things that the Supreme Court has indicated to be “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition.

Accordingly, given that the abstract ideas eligibility exception must be narrowly construed, it would be reasonable to only apply the bright-line prohibition to mathematical formulas and fundamental practices that are long prevalent, because “[t]o extend [such a bright-line prohibition] to other than those [concepts] plainly and unmistakably within its terms and spirit is to abuse the interpretative process and to frustrate the announced will of the people.” Id.

Consequently, given that the Alice/Mayo two-step framework is only designed to determine whether a claim is directed to a patent-ineligible concept barred by this bright-line prohibition, it would be reasonable to only apply the Alice/Mayo two-step test for concepts that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit,” Id., of the bright-line prohibition, e.g. mathematical formulas and fundamental practices that are long prevalent.

Notably though, nothing in this article is intended to suggest that it is not possible to still apply the abstract ideas eligibility exception to other concepts which are not a mathematical formula or fundamental practice that is long prevalent.  For example, even if the Alice/Mayo test is not applied because a claim isn’t directed to a concept that the Supreme Court has “plainly and unmistakably [indicated to be] within [the] terms and spirit”, Id., of the bright-line prohibition, a claim could still be found ineligible under § 101.

Part three of this article elaborates on this, and suggests that even if the bright-line eligibility prohibition is construed narrowly, this would not foreclose the ability of the judiciary and the U.S. Patent and Trademark Office to address issues raised by claiming at a level of abstraction that results in overbroad claiming, either under 35 U.S.C. § 101 or under 35 U.S.C. § 112.

The Author

Jeremy Doerre

Jeremy Doerre is an associate at Tillman Wright, PLLC. Mr. Doerre focuses primarily on representing clients in patent matters related to software and computer technology. Mr. Doerre has ten years of experience preparing and prosecuting patent applications, but of late spends an increasing amount of his time working on post-grant proceedings before the Patent Trial and Appeal Board, and appeals to the Court of Appeals for the Federal Circuit.

For more information or to contact Mr. Doerre, please visit his Firm Profile Page.

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 44 Comments comments. Join the discussion.

  1. Ternary August 14, 2018 12:32 pm

    JCD-Is there an (legal) articulated distinction between a concept that is a “mathematical formula” and a device that is characterized by a mathematical formula. Or is it all the same to the courts?

    As you dig deep into “judicial exceptions”, can you explain where this aversion against mathematical formulas in claims comes from and when it first appears in decisions?

  2. Anon August 14, 2018 1:26 pm

    Substantially more

    Just another undefined term for the “morass.”

  3. Anon August 14, 2018 1:42 pm

    Mr. Doerre,

    I recommend that you do not treat the Supreme Court as if it were a static (and singularly minded) body.

    I also recommend that you seek to understand how – without leaving the confines of the Supreme Court decisions themselves (that is, not using any “as applied by lower courts” as a scapegoat), that the decisions are not recognizable with themselves.

    I notice your inexperience in viewing Benson and Flook as if those decisions still carried their full weight. If you take the above advice, you may appreciate that both Benson and Flook were cabined by Diehr per Bilski. You may also appreciate that Mayo directly conflicts Diehr.

    While advice to “minimize the damage” is welcomed in some corners, the views expressed as the basis for attempts to minimize simply do not survive scrutiny- even if your “Ends” are laudable, the “Means” to those “Ends” do not get a free pass.

    I do have to wonder if you realize that the recent concurrence was a slap at the Supreme Court. While some phrases used in this article may merely be “carried over” from your part one, the adulation reflected in those phrases remains woefully misplaced.

  4. Concerned August 14, 2018 2:57 pm

    Concur that the SCOTUS wrote their decisions to allow patent eligibility for concrete steps that solve real problems and that slapping a generic computer on solutions long prevalent in commerce is not patentable.

    The working reality is just the opposite, software patents are destroyed no matter what level of evidence or what problem has been solved, or what official USPTO policy memo is referenced in the supporting argument.

    I would like to think it is merely ignorance or mis-application of intent. However, everything I have personally experienced tells me it is a hidden agenda and the efficient infringers must be having a field day.

    I am sure the efficient infringers are slapping those robe wearers on the back and telling them they are doing a fine job.

    What was a provision of law that enabled parents (101), is now a provision that destroys parents. Right there, that observation, should speaks volumes.

  5. Anon August 14, 2018 7:09 pm

    Not quite a tangent – but definitely along a different thrust – the CAFC itself has defined the application of what the Supreme Court has provided as an exercise in common law Law Writing.

    Even beyond the alarm that this should cause for the violation of Separation of Powers along the (should be well noticed) lines of the judicial/legislative branches – as has been thoroughly well noted by at least yours truly; it is pertinent to note that this “gift” from the Supreme Court also has the executive branch engaged in the “defined” action of writing law through Common Law development for every single application under examination that does not have an EXACT fact pattern with a case adjudicated by the Supreme Court.

    And this all built on the “foundation” of undefined terms.

    I seriously have to wonder how any attorney finds this acceptable (much less laudable).

  6. BP August 14, 2018 8:22 pm

    @4, “everything I have personally experienced tells me it is a hidden agenda and the efficient infringers must be having a field day” – the US has no functional counterpart to the EU’s Margrethe Vestager. And, how much longer can she withstand the onslaught?

  7. JCD August 15, 2018 1:33 am

    Ternary,

    With respect to your first query, the Supreme Court has repeatedly emphasized that ” ‘ ‘a process is not unpatentable simply because it contains … a mathematical algorithm.’ ‘ ” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 187 (1981) (quoting Parker v. Flook, 437 U.S. 584, 590 (1978))). The Court has made clear that “an application of a … mathematical formula to a known structure or process may well be deserving of patent protection.” Mayo, 566 U.S. at 71 (quoting Diehr, 450 U.S. at 187)).

    One very interesting question is whether it is necessary for an application of a mathematical formula (or law of nature) to be inventive in order for it to be deserving of patent protection. You may want to check out this excellent article: Jeffrey A. Lefstin, Inventive Application: A History, 67 Fla. L. Rev. 565 (2016)) (Available at: https://scholarship.law.ufl.edu/flr/vol67/iss2/3)

    With respect to your second query, you may be interested in reading Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86 (1939). My apologies, as this isn’t really a complete answer to your query, but it’s a case you may find interesting.

  8. Lost In Norway August 15, 2018 2:25 am

    Thank you for the article. I found it to be an interesting read. Unless I misunderstand the thrust of your argument, it is: this current 101 nightmare could be solved by the lower courts narrowly interpreting the Supreme Court’s decisions in the way that they were intended.

    I just can’t quite get on board with that. When the “highest court in the land” decides to introduce confusion into a statute that has never been there before, it is their DUTY to fix the mistake. Their poorly worded (and poorly reasoned in my opinion) decisions are the root cause. They have had several chances to introduce clarity into the discussion and each time they refused to do so. These people know that a lack of clarity in the wording of a landmark decision is going to cause problems. It was their job to set out precise bounds and they refused to do so.

    SCOTUS get no free pass from me. In many of these cases, I can agree with the patentable/unpatentable invention portion of the decision. However, 101 should not have been a consideration in most of them. 102, 103, and 112 would have done the job just fine.

    @5 Anon:
    I hadn’t thought about the common law portion from that point of view before. I am not sure if to thank you or not, though.

  9. concerned August 15, 2018 4:36 am

    Mr. Quinn, contributing authors, and all posters to this blog: Thank you for all you do! This website, its people and your minds are one “IP” that 101 has not destroyed to date.

    It is insane to try to logically address the patent situation in this country. The courts were going to kill that patent troll boogeyman at all costs and those that profited by it and stealing legitimate inventions are applauding the effort all the way to their bank.

    For me, can I hold on long enough for the madness to stop? And it will stop, just like those phony sub-prime mortgages. Over 40% of the sub-prime mortgage originations in 2006-07 did not even make one payment on a 360-month note. Of course, everyone knew the score. Capitalize on the perversion until it stops then run around pointing fingers as if nobody saw the collapse coming.

    Unfortunately, I will not be able to unring the “hidden agenda” bell. If I cannot hold on, and when the madness stops, I am sure I will be barred from re-attempting to patent my same idea as surely it will be called public domain. I guess it would be asking too much to use “hidden agenda” as an affirmative defense.

    Others have to play nice with this situation as you are professionally employed in the field. I just happened to catch lightning in a bottle with my invention, I can go back to my other world. So my consolation is the pain and frustration of getting bent over may not last as long as yours.

    Another consolation for me is the federal government is getting it right up the rear also, they would be the biggest financial winners of my invention. One federal sister agency putting it to another. Priceless.

    The best-laid plans of mice and men.

  10. Anon August 15, 2018 8:55 am

    LiN,

    Do you take a band-aid off quickly or do you peel it off slowly?

  11. Gene Quinn August 15, 2018 9:22 am

    Concerned-

    “Can I hold on long enough for the madness to stop?” would make for a great op-ed title. If you are interested let me know. What you are feeling is a frustration shared by many inventors, and a story that those in Congress tell us they need to hear. There are allies on the Hill who want to help, but the only stories they hear are the stories from the “patents are evil” crowd. People like you really need to get involved and tell your stories. That is what is going to ultimately turn the tide.

    -Gene

  12. Anon August 15, 2018 10:04 am

    My apologies, as this isn’t really a complete answer to your query,

    It’s not an answer at all – not even close to a partial answer.

    Mentioning that the Supreme Court has repeatedly said something – without also mentioning that THAT point being said has been tied into a Gordian Knot (with only the writings of the Supreme Court) is worse than a partial answer.

    While I do appreciate the link to the Lefstin article, I would prefer if you had drawn in the material from that link into your series here. Same goes with the Mackay Radio case – it is unclear as to what in that case you may find interesting (or pertinent) without more.

  13. B August 15, 2018 10:09 am

    “The bright-line eligibility prohibition should be narrowly construed, and the Mayo/Alice test implementing it only applied for concepts plainly and unmistakably within its terms and spirit.”

    IMHO, the only bright-line rules re patent eligibility should be that which do not qualify as patent-eligible in the first place. For example, in In re Nuitigen (sp?), it was determined that an EM carrier per se was not a process, machine, manufacture etc., and so did not qualify under s101

  14. B August 15, 2018 10:16 am

    @ Ternary “JCD-Is there an (legal) articulated distinction between a concept that is a “mathematical formula” and a device that is characterized by a mathematical formula. Or is it all the same to the courts?”

    EXCELLENT QUESTION. The answer – it depends on the judge. See Benson, Flook, Investpic, McRO, American Axle.

    Benson stated that law of physics, or mathematical formulas that embody said laws, were patent ineligible.

    Flook said that all math doomed a claim.

    Investpic holds that a claim with nothing but math dooms a claim

    McRo holds the opposite

    American Axle holds that a mechanical thing designed according to math dooms a thing

  15. Anon August 15, 2018 10:35 am

    B,

    For example, in In re Nuitigen (sp?), it was determined that an EM carrier per se was not a process, machine, manufacture etc., and so did not qualify under s101

    Yes, that is controlling law.

    However, the law as rendered from that case is hopelessly incorrect from a reality standpoint.

    The EM carrier – as modified by the hand of man – was clearly a manufacture as that term is understood under the law.

    Read the decision again. If your eyesight is strong enough, you may even be able to read it under the “transient” (albeit natural) light of the clear night sky, in which the transience reflects a condition that has existed far longer than anything ever created by the hand of man.

  16. Wayne Borean August 15, 2018 1:54 pm

    Reminds me of the Medieval discussions about how many angels can dance on a pin head.

    The Supreme Court did not rule on all exclusions for a very simple reason. The cases in front of them didn’t include arguments on those possible exclusions, so the court couldn’t rule on them.

    That means that those exclusions will have to be argued before the courts as conflicts arise.

    We are however left with clear evidence on what way the Supreme Court will rule going forward. If a patent is for an invention which 100% abstract, then the court will rule against it. If a patent includes non-abstract elements which aren’t otherwise invalid, the patent will stand.

    We don’t however know at what point non-abstract elements will make something patentable. I suspect that the answer is 50% or more, but that is a guess.

  17. Wayne Borean August 15, 2018 1:58 pm

    Gene and Concerned,

    So the two of you are saying that the concerns of potential monopoly holders should override the will of the people, as expressed by their representatives in Congress? That’s an interesting concept.

  18. Concerned August 15, 2018 2:50 pm

    Mr.Quinn @11:

    I would be very happy to share my story as an inventor that just happen to get lucky and discover a long sought after process.

    Never thought it would be this much of a fight to save the government a lot of money while helping people with disabilities.

    What would be the next step? Thank you.

  19. Gene Quinn August 15, 2018 3:31 pm

    Wayne:

    You ask: “So the two of you are saying that the concerns of potential monopoly holders should override the will of the people, as expressed by their representatives in Congress? That’s an interesting concept.”

    So much wrong with what you say… where to start.

    First, let’s remember that a patent does not create a monopoly.

    Second, it would be WONDERFUL if the Courts acquiesced to the will of the Congress (and thereby the people). The Supreme Court applies an extra-statutory test by its own admission. The statute — 35 U.S.C. 101 — is very simple and straight forward. That is what was enacted by Congress. The Supreme Court has completely made up the Alice/Mayo test. According to Congress claims are patent eligible if the claims are to a process, machine, compound or article of manufacture. According to the Supreme Court that is just the beginning.

    So if you want to accurately identify who is overriding who, the answer is clear. The Supreme Court is overriding Congress, and using your analogy… thereby the will of the people.

  20. Gene Quinn August 15, 2018 3:32 pm

    Concerned at 18-

    Best would be to reach out using this contact form:

    http://www.ipwatchdog.com/about/contact/

    And in the message mention this thread and that we are trying to connect. Unfortunately, I can’t give me e-mail out directly here. My inbox is already an abyss.

  21. PTO-Indentured August 15, 2018 3:40 pm

    SCOTUS as a body has proven itself incapable of delineating between jurisprudence clearly conducive, to a growing kleptocracy on the one hand, and on the other, to a substantially failing patent system, rendering untold patents essentially worthless. So absent is an awareness of and appreciation for that which fosters true innovation and a substantial economic growth that comes of it, that not even — a PTO-nosedive as clear as a rapid drop from 1st world ranked to 12th, and a killing off of the American independent inventor from nearly 1 out of 3 (pre-AIA) to about 1 out of 25 now — suffices to raise an eyebrow, to an unprecedented, if not incalculable damage done, let alone a reversing of it.

    In any other court of law, a mere hint of such un-evenhandedness would likely render a swift sword of justice sufficing to right the wrong, expediently — but alas, not here, not now, not yet — not… when? Not even a hint of a standard or ethic equating to The Hippocratic Oath is demonstrated.

    Regarding jurisprudence — philosophize >b>this: Good/just law, conduces to good/just results (apparent, not fiction). Bad/unjust law, produces harmful/unjust results (apparent, not fiction). If you know (rub elbows with) big-tech kleptocrats who just keep on grinning around you, so long as an entire breed of American innovators is systematically (and swiftly) eliminated, and such that all IP derived from that intended die-off is free — then surely a judging-capacity to fairly compare and contrast such glaringly opposite and conflicted outcomes, and the jurisprudence enabling those outcomes, has been amiss.

    If ignorance of the law has been deemed ‘no excuse’, then ignorance embedded into patent law (over years) should likewise be deemed inexcusable. For a sure way to make U.S. patents all the more weaker (intentionally?) is to make/allow/perpetuate law almost no one can decipher, effectively rely on.

    Perhaps, where patent law and its impact on economic growth are concerned, the fair and balanced thing to do now would be hold up the standard of the Dunning-Kruger effect, such that competence vital to a thriving PTO is no longer merely assumed (or worse, is absent and success-annihilating) and avoids each jurist contributing to patent law mistakenly assessing their own cognitive ability (of an inventions=innovation=vibrant economic growth equation) as greater than it is.

    The proof, as they say, shall be in their pudding.

  22. Anon August 15, 2018 3:44 pm

    B,

    ANY law that “depends on the judge” (in the manner that you implicate) runs afoul of the Void for Vagueness Doctrine.

    That THIS particular law is not being one actually written by Congress (but instead one being written by the Judicial Branch), does NOT save the law from falling under the Void for Vagueness Doctrine (even if in reality the fact that the authors of the law that fails is the Court itself may – due to a lack of humility [fanned no doubt and in no small part by a lack of push back from attorneys who have a duty to push back] – such fact obscuring the Justices from applying the necessary prescriptive to its own writing).

  23. Ternary August 15, 2018 4:19 pm

    Thanks very much for the response JCD. I am familiar with Mackay Radio, which is another source of confusion. Rather than consistently using the term “mathematical formula” the Court introduces the term “empirical formula” (never to be heard from again) implying that there is a distinction between these two.

    The most basic definition of a “mathematical formula” is something like: an expression of one or more symbolic operations upon one or more symbolic variables. By itself there is no reason why such an expression cannot be used in a claim. Even the Court realizes that and bends over backwards to try to explain why sometimes a “mathematical formula” is allowed in a claim and other times not.

    As with “abstract idea” the Court fails to provide a clear definition of “mathematical formula” and seems to look favorably or at least not “unfavorably” upon some mathematical formulas in claims. But it is never clear as to what it is exactly that bothers them. To secure the hammer of destruction, the Court always maintains that there is a “bright-line prohibition against patenting laws of nature, mathematical formulas and the like” so that they always have some wiggle room to bridge contradictions with prior decisions. Nowadays it is the computer evaluating a “mathematical expression” that upsets them. Heaven knows why. That is why I am curious to know where this not trusting of mathematics in patents comes from. I understand the layman’s conviction that all mathematics and thus its application is abstract. But we should be able to trust the Court to be better informed and having a better grip on this serious matter.

    The Lefstin article summarizes somewhat the confusion around a “mathematical formula.” (thanks for the link).

    There is (of course) absolutely no bright-line narrow interpretation possible of the term “mathematical formula” if one relies on Supreme Court Decisions. I don’t blame you for not providing one. However, it makes your suggestion to apply a narrow interpretation somewhat shaky. If I apply one narrow interpretation of “mathematical formula”, then there are at least two different interpretations that an Examiner or an attacker of claim validity can point to. The easiest fallback position for a court is then to decide it to be not patent eligible. Chaos!

    Benson does not claim a “mathematical formula” at all (as one of ordinary skill would understand it) despite what the court alleges. Claim 8 in Benson describes a series of steps performed with a shift register. Though in exegesis one has to conclude that a “mathematical formula” is anything that the Court says it is.

    Suppose Benson had designed a semi-analog system: a single voltage generated by an D/A converter from a BCD interpreted signal and then transform the generated voltage by a purely binary A/D converter into a binary signal. In that case the invention most likely would have been patent eligible. But if that is patent eligible, why would a system applying a shift register and being easier to realize, not be patent eligible? It is a rhetorical question, but feel free to try to answer it if you think that there is some “narrow bright-line interpretation” that resolves this.

  24. Anon August 15, 2018 7:48 pm

    Wayne,

    We are however left with clear evidence on what way the Supreme Court will rule going forward. If a patent is for an invention which 100% abstract, then the court will rule against it. If a patent includes non-abstract elements which aren’t otherwise invalid, the patent will stand.

    I recommend that you re-read the Alice case. Claims clearly NOT abstract (and averred to by BOTH parties as passing the statutory category part of 101) were nonetheless RULED abstract (by way of the “Gist/Abstract” sword).

  25. concerned August 15, 2018 8:43 pm

    Mr. Borean @17:

    People tried to rationalize their actions when attempting to steal my idea. In their mind, it was perfectly acceptable to try to cash in on my idea while excluding me completely. I doubt the preceding is the will of the people, perhaps the will of those thieving people, but not THE people, or our representatives. God has it as #8 in his book…thou shall not steal…. a top 10 in the “thou shall not” category.

    Regarding a monopoly. Even if patents were a monopoly for 20 years, there is no foul. Nobody had my process before it was invented. If a person does not want to use my process because they have to pay a price for it, that person is not harmed. They were not using it before it was invented…their life continues as if the process was never invented.

    Many people can make plenty of money off my idea. Just not all the money. In fact, we will license the idea and the licensee would make the majority of the money. I find the preceding statement to be the interesting concept.

  26. Curious August 15, 2018 9:19 pm

    I’ve said this before, but it is worth repeating, both the Federal Circuit and SCOTUS share blame for this mess. SCOTUS gets blame for: (i) ignoring the plain language of 35 USC 101 to create exceptions that have no basis in statutory law, (ii) relying upon ambiguous language (e.g., “abstract idea” and “substantially more”) that have no definitions. The Federal Circuit gets blame because if one were to strictly following the language of Alice, then the law of Alice is essentially the same as the law of Bilski (i.e., fundamental economic practices long known are abstract ideas) with the added caveat that merely adding a computer to a fundamental economic practice long known make an invention directed to an abstract idea not directed to an abstract idea. If the Federal Circuit were to merely treat this as the holding, then we wouldn’t be in the mess we are today because the state of the law after Bilski was nowhere near as bad as it is today. However, the Federal Circuit ignored the Supreme Court’s cautioning about “we tread carefully in construing this exclusionary principle lest it swallow all of patent law” and focused straight on SCOTUS declining to define an abstract idea as being carte blanche to identify anything as an abstract idea.

    Unless SCOTUS has a mea culpa moment and decides to undo the mess they made (HIGHLY UNLIKELY), then the only solution is Congress. The Federal Circuit isn’t going to reign itself in. There are far too many judges in that Court who are looking for any way possible to gut the US Patent system, and Alice was literally mana for heaven for this group of anti-patent judges. Unless SCOTUS or Congress tells them not to, they’ll continue to expand the breadth of what constitutes an “abstract idea” to no end.

  27. step back August 15, 2018 9:41 pm

    They must have been watching some of those Gieco insurance commercials on TV where every time a character says “get more”, some icon on his body grows bigger and bigger. For the SCOTeti it must be their egos, hubris and arrogance that grow bigger every time they say “significantly more”. For puppet Pinocchio it was something else that grew. To each their own self-aggrandizement growth spurt in accordance with need.

  28. Wayne Borean August 16, 2018 1:26 am

    Gene Quinn

    Ah, but you have to take 35 U.S.C. 101, 102, and 103 into account. That’s where things get interesting. Those sections were enacted by Congress too.

    I am a skeptic where the USPTO is concerned. The office is understaffed, undertrained, and nearly totally incapable of doing its job. I remember telling you 4-5 years back about the issues I had as CTO with idiots showing up, waving brand new patents on which the ink hadn’t dried yet, with the aim of charging us fees on inventions that we’d had in production and on sale for ten-fifteen years.

    Then there were the idiots who had gained patents on technologies which were Scientifically impossible, in effect claiming that when Galileo Galilee dropped his balls off the Leaning Tower of Pisa they fell up.

    The shear amount of bovine fecal matter I had to put up with was unbelievable.

    So yes, I’m damned skeptical about your patent office. Ours is no better. Both should be burned to the ground, and new organizations should be founded from the ground up, which can do their jobs properly.

  29. Wayne Borean August 16, 2018 1:27 am

    ANON

    35 U.S.C. Sections 101, 102, and 103.

  30. Wayne Borean August 16, 2018 1:40 am

    Concerned

    The question is a legal and legislative one. Should a potential copyright holder be able to override the will of the people as expressed by Congress in U.S.C. 100 through 105?

    It has nothing to do with your particular invention, other than your invention has to be compliant with those sections of legislation. If it is, it is patentable. If it isn’t, it can’t be patented.

    That is the law. No ifs, ands, or buts.

    That the patent office is incapable of following the law, well, that’s an indication of the sad state of affairs in both Canada and the United States, where the offices are underfunded, undertrained, and in general incompetent.

    Other countries may be as bad. I can’t comment on them, because my concerns while I was still capable of working were North American only.

  31. concerned August 16, 2018 4:38 am

    Mr. Borean @30:

    That the patent office is incapable of following the law, well, that’s an indication of the sad state of affairs in both Canada and the United States, where the offices are underfunded, undertrained, and in general incompetent.

    Is the matter one of “incapable of not following the law (or authority)” or “not willing to follow the law (or authority?)”

    When my boss puts out a detailed memo and it says to do it this way, it should be game over. The USPTO puts out memos with instructions consistent with Curious @26, then the examiner tosses it without fear of being insubordinate as if the memo is the “official” position, but unofficially here is the real deal.

    When a court must remind folks that evidence matters in a legal setting, and then the USPTO puts out another “official” memo that seconds that “evidence matters” notion, us common folks have to ask what is going on? We common folks just assumed everyone knew facts and evidence matters in a legal setting. My patent examiner will not even acknowledge or address my independent, third-party evidence.

    I am not a trained day to day patent professional and I am even capable of following memos and facts/evidence. There is more than meets the eye with this 101 deal and it is not good.

  32. Wayne Borean August 16, 2018 4:49 am

    Concerned,

    Which is my point. For a variety of reasons, the patent agencies in Canada and the USA are not doing their lawfully mandated jobs. They haven’t been doing their jobs since I first started dealing with them seriously in 2002.

    That’s a huge problem for inventors, and the lawyers representing them.

    I suspect any fix will be surface only – fancy new paint job, same rusted out old clunker underneath. But then I’m a horrible cynic. What’s worse is I’ve proven not cynical enough too many times.

  33. Anon August 16, 2018 7:42 am

    Mr. Borean,

    Your reply is a non-sequitor to my pointing out the error in your initial statement.

    Yes, there are other sections of law.

    How does that fix the error of your statement that I have pointed out?

  34. Wayne Borean August 16, 2018 1:01 pm

    ANON,

    I see no error. And yes, I’ve read Alice before.

    I’m unsure what point you are trying to make.

  35. Anon August 16, 2018 2:55 pm

    Mr. Borean,

    The point is that your reply asking to consider other sections of law is inapposite to the error in the section of law that you addressed with your first comment, and to which my reply was directed to.

    In other words, your reply to my reply was a non-sequitur. It simply does no touch on the merits of the subject to which I took issue with in your original post. The use of non-sequiturs as if those items resolve (much less address) the point raised is not a discussion on the merits, and in fact often serves to obfuscate rather than to illuminate and resolve the point contested.

    The fact that you see no error does not change the fact that your reply does not address the counter point I presented to you. That counter point remains – and remains unaddressed by you.

    Long story short: your initial post to which I replied is simply not correct.

  36. Wayne Borean August 16, 2018 3:17 pm

    ANON,

    Ah. Now I see what you are saying. Your logic is however defective. If both parties had attested to that, there would not have been a court case. Judge Thomas’ ruling clearly spells out that there was a case, one important enough to both parties that if got appealed to the U.S. Supreme Court.

    Ruling by Justice Thomas – PDF warning

    So there was no error in my statement. As someone who has written a lot of computer code, I agree with Thomas. There is nothing here but a computer added to a human thought process. That is totally unlike the WiLAN patent which Apple was found deliberately infringing, which was also effectively a software patent.

  37. Anon August 16, 2018 5:34 pm

    Oddly enough, Mr. Borean’s post at 35 is visible on my mobile device, even though it is not yet showing up on my laptop.

    I will throw this back at you, Mr. Borean – my logic is perfectly fine – and perfectly accurate.

    One would expect that an item to which both sides aver to would remove such from the reaches of the Supreme Court (if but for anything else, being that on that topic there is a lack of case or controversy REMOVING the authority of the Supreme Court).

    But your thinking – as correct as it might be, if along those lines – is NOT what has happened here.

    It is an indisputable fact that the Court reached beyond the contested claims and rules that claims that were not contested (as to safely being past the statutory category portion of 101) were nonetheless “Abstract.”

    Perhaps a third, and more careful reading of the decision by you is in order.

    Further, it is yet another non sequitur for you to pose – on its own – that Justice Thomas indicates that the case was important enough to both parties that it got appealed to the U.S. Supreme Court. That statement does not reach the merits of the discussion.

    If even after being put on notice that you are continue to engage in non sequiturs as if that was meaningful (and continue to claim that you are correct and see no errors in your views), I can see why you might get bent out of shape as a CTO.

    Your statement of “We are however left with clear evidence on what way the Supreme Court will rule going forward. If a patent is for an invention which 100% abstract, then the court will rule against it. If a patent includes non-abstract elements which aren’t otherwise invalid, the patent will stand.”

    Simply fails to abide by the 101 eligibility of something that meets the (true) two requirements of 101: 1) fitting into at least one statutory category and 2) having utility within the Useful Arts.

    Thomas simply disregards this (AND the averment of both parties) when he stated: “The specification further explains that the “invention relates to methods and apparatus, including electrical computers and data processing systemsapplied to financial matters and risk management.”” (page 2) coupled with “All of the claims are implemented using a computer; the system and media claims expressly recite a computer, and the parties have stipulated that the method claims require a computer as well.” (page 3) when he turns around, and at page 13″The fact that a computer “necessarily exist[s] in the physical, rather than purely conceptual, realm is beside the point” ending with “Petitioner’s claims to a computer system and a computer readable medium fail for substantially the same reasons.” page 16 and at the same page: the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] . . . against” interpreting §101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’”

    Here we see the (unreasonable) fear of the “draftsman” that turns the ability to use piece parts (real live hardware even) to configure something that clearly passes the words of Congress, – just because “computer.” No other art unit carries with it the same (unreasonable) limitation as to being able to configure piece parts that themselves are real and physical and no matter what the real and physical configuration, subject the end result to being deemed “Abstract.”

  38. Ternary August 16, 2018 5:49 pm

    “There is nothing here but a computer added to a human thought process.” Computer code is of course nothing but human thought distilled into computer instructions which, when executed by a computer, generates signals. So what? That is what inventions are about: reducing thoughts and insights to machines and processes.

    Claim 1 in WiLAN 8,457,145 (asserted against Apple) requires:
    “… periodically, on expiration of the value in the timer, transmitting a bandwidth request indicating an amount of bandwidth required for transmitting the data from the queue.” This is based on the human thought/insight that for transmission of data a certain channel bandwidth is required to get it out of a queue. You could assign a phone operator to do this manually. But it is (and should be) a patent eligible invention. What is your point?

    Compare all to the Strowger switch (a telephone exchange device of yore) which is an electro-mechanical switch added to a human thought to connect telephone devices (previously done by above said operator.) The Strowger was developed in a time when electro-mechanical devices where popular in many applications. Nobody at that time was inclined to call such an invention directed to an abstract idea.

  39. Anon August 16, 2018 6:27 pm

    Correct Ternary, and yet again your post reminds of an adage to remember:

    Software is patent equivalent to firmware is patent equivalent to hardware.

    Each is merely a ware for the computing arts.

  40. concerned August 17, 2018 4:35 am

    Mr. Borean@36:

    There is nothing here but a computer added to a human thought process…..that the SCOTUS used hard evidence to decide it was a process long-standing and prevalent to commence. A generic computer slapped on a process long-standing and prevalent to commence.

    The part of the decision you stated is the same part of the statement shoved down my throat by the patent examiner. The qualifying part of the statement (hard evidence to decide it was a process long-standing and prevalent to commence) is the double standard. My patent examiner will not acknowledge or address the hard evidence that proves the process is not long-standing or prevalent in commence.

    IMO, how people quote Alice is a “poker tell” as to their true feelings regarding software patents no matter what the invention accomplishes. Would “THE” people of the world really care about agendas if someone put a generic computer on a shoebox and the same magically cured cancer?

    The unabridged carnage that is allowed to continue speaks to the real agenda that will not stop until the country is put at a greater risk, like the sub-prime mortgage crisis. Addressing right from wrong is only secondary.

  41. Jianqing Wu August 17, 2018 9:56 am

    If I look at the whole enforcement model, the U.S. patent system has reached the end of life. If the messy cases are fixed, it will extend its life for a few more years. Even if a new statute is enacted, it will work for only a few years. Nothing can change the reality that there are a massive number of conflicts, a massive amount of litigation spending, and a great deal of uncertainties. Those three problems plus worldwide invention standard, plus the passive hurdles created by the PTO determines that the originally intended patent system will not survive. The patent system is only a system for dividing product markets for corporations.

    When inventors can enforce their patents, another anti-patent movement will come. I predict that next movement will be much worse than the AIA and those 101 decisions. The next one would be close to abolishing granted patents and shutting the PTO.

    I hope lawmakers and justices will study the enforcement model as they should have done a long time ago. The common law concepts were taken as wholesale presumptions. They need to study scientific bases for legal process, doctrine-creating framework, litigation approach, accuracy-propagation model, system optimization, etc. in light of all failures in national health problem, expected dollar role, election problems, criminal law, family law, immigration law….. Fixes, patches, and repairs will not work for a very long. They are only emergence measures.

  42. step back August 17, 2018 11:43 am

    They [ lawmakers and justices] need to study scientific bases for legal process, doctrine-creating framework, litigation approach, accuracy-propagation model, system optimization, etc. in light of all failures in national health problem, expected dollar role, election problems, criminal law, family law, immigration law….. Fixes, patches, and repairs will not work for a very long.

    Jianqing Wu @41

    That’s not going to happen.
    “They” will not study and learn any science.

    If you pay attention to reality, not only is the planet finite, the human brain is finite. And it stops most of its learning process by age 40 (give or take some neural plasticity).

    Essentially all the lawmakers and justices are past the age of repair. Your protests are aimed at them who are not only hard of hearing but also have their hearing aids turned off.

  43. Mark Martens (@MarkMartens42) August 17, 2018 1:55 pm

    Ever since I heard about the suggested ‘unpatentability of an abstract idea’, I’ve been sitting with this idea in my head. Everything in the universe, every washing machine, fridge mobile phone, every invention you or I can imagine was at first, ‘just an abstract idea. In fact it gets worse that this; every living creature, all of its organs, every kind of cell, single or multi-, every kind of protein, every kind of catalyst, every element, every particle, and every process, before it becomes reified by some evolutionary process, is ‘just’ an abstract idea.

    As the article correctly points out, before it becomes embodied in some way, there is nothing in the universe that isn’t ‘just an abstract idea’. No exceptions will survive this criteria, and so it cannot be used as a discriminator for inventing.

  44. step back August 17, 2018 8:41 pm

    MM @43

    The Alice/Mayo 101 “abstract idea” rejections are not as simple as that.

    What they (the SCOTeti and their minion Fed. Cir cohorts) are saying is that you, the inventor came up with an abstract idea in your head. That alone (and per se) is not an “invention”. Then you and your evil scrivener agent/attorney added nothing more than generic/conventional computer stuff on top of that. But you did not invent the generic/conventional computer stuff.

    Adding just the generic/conventional computer stuff is not a “significantly more” event that transforms the non-invention into an invention. The burden of proof is on you to prove otherwise (to prove you and your despicable scrivener are not witches).

    Not that I am a true believer in all that horse manicure, I just wanted you to better understand the “delicate” test they’ve conjured up for detecting the witchcraft. 🙂

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